Category Archives: Trademarks

Scandalous Material

On December 22, 2015, The United States Court of Appeals for the Federal Circuit weighed in on the question of politically correct speech in the context of trademark registrations. In In Re Tam, an applicant for a trademark challenged the U.S. Patent and Trademark Office’s rejection of his application on the grounds that the proposed mark was “scandalous” under Section 2(a) of the Lanham Act.

 

The mark in question,  THE SLANTS, is the name for a musical group based in the Pacific Northwest comprised of musicians of Asian-American background. The trademark application was submitted by Simon Tam, an Asian-American, who serves as lead singer for the band. Mr. Tam chose the name ironically and adopted it as an opportunity to take control of the term.

 

The Federal Circuit heard the dispute en banc and concluded that use of a trademark term is private commercial speech and therefore protected by the First Amendment. The government, the court writes, has no business trying to regulate it by denying the band a trademark.

 

In upholding Mr. Tam’s right to obtain Federal registration for his band name, the Federal Circuit determined unconstitutional that portion of Section 2(a) of the Lanham Act which bars the registration of “scandalous” words. In doing this, the Federal Circuit Court of Appeals overruled its own thirty year-old holding and struck down a portion of the Federal trademark law that has been unquestioned since adopted in 1946.

 

The Federal Circuit reasoned that First Amendment jurisprudence had matured in 2015 to the point where the Patent and Trademark Office should not be accepting or rejecting marks for registration based upon a subjective contextual determination of offensiveness. Suffice to say, without repeating them here, that the Trademark Office pattern in disapproving some trademark applications and approving others has been highly situational.  Indeed, there are countless trademark registrations incorporating the word “slant” which the Trademark Office has found to be not objectionable, applying their analysis subjectively.

 

The decision in In re Tam found that the Trademark Office’s application or Section 2(a) “does more than discriminate on the basis of topic. It also discriminates on the basis of message conveyed…” (Opinion at 19). In summary, the anti-disparagement provision of Section 2(a) was found to be “viewpoint discriminatory on its face” (Opinion at 21).

 

The Federal Circuit also rejected positions arguing that issuance of a Federal registration was somehow approval or certification by the U.S. Government for the views expressed in the trademark.

 

In re Tam may not be the final word on this matter, since the U.S. Supreme Court is unlikely to avoid taking a look at the issue, given the sixty years that the statute remained unchallenged and the implications for First Amendment law.

 

For more information about this or any trademark or IP issues, please contact Fred Frawley (afrawley@eatonpeabody.com)

Trademark Office Reduces Fees for Application

 

Whilst counterintuitive, the United States Patent and Trademark Office has issued a new fee schedule, effective Jauary7 17, 2015, which actually has the effect of–in most cases–reducing the fees to be paid for applying for trademark protection. The new fees can be found here.

This restructuring of fees is driven by the Trademark Office’s desire to encourage electronic filing applications and follow-on communication with Trademark Office personnel . The new fees are designed to incent paperless filing and simple, well thought out choices in trademark applications.

TEAS is the electronic filing system of the U.S. Trademark Office and the new fees encourage greater use of the TEAS system.

  • $50 fee reduction for filing a trademark application using the regular TEAS application form (dropping from $325 per class to $275 per class)
  • $50 fee reduction for a TEAS Plus application (dropping from $275 per class to $225 per class)
  • $100 fee reduction per class for a TEAS renewal application (dropping from $400 per class to $300 per class)
  • In addition, there is a new fee/application category, TEAS-RF, which allows for extension of protection to the United States for marks under the Madrid Protocol (for international marks) into a U.S. trademark application will be reduced to $275, which is $50 less than the regular TEAS application fee.

 

Paper applications are still accepted, but they are not favored.  Paper applications require submission of a fee of $375.

The Trademark Office relies greatly on telecommuting professional to handle its workflow. As reported in 2013:

Today the agency has almost 8,000 employees who work remotely from one to five days per week, including 4,100 who do so four to five days per week and more than 1,000 who work far outside the commuting range of USPTO’s Alexandria, Va., headquarters. And although there are undoubtedly still papers in some employees’ briefcases, the agency’s telecommute-friendly workflows are now entirely electronic.

So, the new fees not only save trademark owners money, they also encourage them to use the electronic system which works best for the Trademark Office’s workflow.

 

Trademark Usage: Tacking is A Jury Question

It has been a decade since the United States Supreme Court took and decided a case on substantive trademark law. So, it’s worth noting when it does. On January 21, 2015, the Court issued a unanimous decision in Hana Financial, Inc. vs. Hana Bank, et. al.The question presented, and answered was whether a judge or jury should determine if “tacking” is available to prove trademark priority in a given case.

Trademark rights generally arise from actual use of a mark in commerce in connection with particular goods or services. Trademark usage may change over time, but where each iteration of a trademark is the legal equivalent of its predecessor, then prior use may be “tack on” to determine who used the trademark first. Various circuits have determined that a trademark owner may claim priority in a mark based on the first use date of a similar but technically distinct mark, if the previously used mark is the “legal equivalent” of the current version of the trademark, such that consumers would consider both versions of the trademark to be indistinguishable. But, who (the presiding judge or the jury) decides whether different uses are legal equivalents?

Justice Sotomayor authored the Supreme Court’s opinion, which stated that “because the tacking inquiry operates from the perspective of the ordinary purchaser or consumer, we hold that a jury should make this determination.”

Therefore, because the applicable test is dependent upon an “ordinary consumer’s” impression of a trademark, the Supreme Court stated that the application of such a test “falls comfortably within the ken of a jury,” as is the case in other areas of law when the relevant question is how an ordinary person would make an assessment of a fact-intensive answer.

One outcome of this decision is that cases in which tacking is an issue also will likely be more expensive to litigate, since parties are more likely to rely on survey evidence.

The full case may be found here: http://www.supremecourt.gov/opinions/14pdf/13-1211_1bn2.pdf

More On Trademarkia

An earlier post alluded to the puff piece in the ABA Journal extolling alleged service known as Trademarkia. On the heels of that, one sees that it’s employees “(farm animals” according to one) are not very happy. http://www.glassdoor.com/Reviews/LegalForce-RAPC-Worldwide-Reviews-E266835.htm

Just, Desserts

@ThinkingIP is where I publish observations, one of which, yesterday, was that I had been “followed” by Trademarkia, the commodity trademark service. It is the nadir of my Twitter activity, to date. Then, today, unaccountably, the ABA Journal published a puff piece about Trademarkia.

 

Fortunately, comments are enabled:

here are the first 9:

Comments

1.John
Sep 24, 2013 12:40 PM CDT

He did it by sending out questionable advertising and updates via email and print to trademark lawyers AND their clients once a trademark is applied for.  This can cause confusion among the clients and is frankly annoying to the attorneys.  But hey, $8.5 million dollar book of business—what a legal rebel!  Lol.

2.Mike
Sep 25, 2013 3:23 PM CDT

I wonder how his employees feel about working for him? Are they happy?

3.Mike
Sep 25, 2013 3:25 PM CDT

Also, does he only have attorneys file his trademarks or does he use non-attorneys as well? Only reason I ask is that other companies have gotten in trouble with this so you always have to wonder.

4.TMthis
Sep 27, 2013 6:57 AM CDT

I agree with John, this guy has sent unsolicited emails and other junk mail to clients-including myself- and likely other trademark filers) that incentivize through confusion. If that’s how one builds a $8.5 million book of business, then I guess nobody cares.

5.Nate
Sep 27, 2013 7:56 AM CDT

Yeah the advertising is misleading and super questionable.  I stopped listing client’s email addresses on trademark apps just to avoid them calling me up every week confused by these emails.

6.Patrick Blake
Sep 27, 2013 8:38 AM CDT

We have had several clients come to us after using Trademarkia and the results has uniformly been substandard.  Similar to the poster above, I question whether intellectual property attorneys are handling the filings, which is a nice way to pump up profits if you don’t care about things being done correctly.  Also, the Trademarkia “employee” I spoke with most recently failed to file a Statement of Use for (now my) client.  When he contacted my client with a hefty bill to correct his error, I was forced to get involved to point out his mistake.  In the interest of full disclosure, a manager became involved in the case and the SOU was filed with no additional cost to my client, but I would steer clear of this service if possible.

7.Trademarks in Florida
Sep 27, 2013 8:58 AM CDT

I too have inherited several clients and needed to clean up the messes made by this firm. If an application does not go through on first examination, the fees the clients end up paying are usually more than my flat fee. I don’t even try to have a web presence because my flat fee is way more than their initial fee and I don’t feel that I should have to field all the calls from people asking me why I’m so expensive when I am actually appropriately priced. These people are never going to hire me anyway if they are looking for an attorney on the web.

I have also had to cancel a mark that they filed for a non-existent person! They do not even confirm the identity of their clients.

I actually believe that the success of this firm is a by product of the In re Bose decision. There is no reason to double check anything anymore since the standard for fraud is not met if you are blissfully ignorant of the facts. Don’t ask, don’t tell lives on at the PTO.

I could continue.

8.TM in Westchester
Sep 27, 2013 9:23 AM CDT

Every client I work with becomes a subject of Trademarkia’s relentless poaching efforts.

9.Paul
Sep 27, 2013 11:55 AM CDT

It is hard to argue with an $8.5 million book of business, but the sad truth is that clients get what they pay for.  I have been asked to pick up the pieces from their shop at least 5 times, and in each case the problems were preventable—and the solutions cost the clients far more than if they had used someone else in the first place.  In one case his firm filed trademark applications for identical marks for very similar services, and when the Examining Attorney objected to one application they tried to negotiate a co-existence deal with both of their clients.  My client was then told that she had to get new counsel—for a matter that they never should have taken in the first place (and they refused to refund her fees paid to them.)

Thinking Out Loud

A recent listserv discussion broke out about signing documents on behalf of clients at the USPTO. I guess I am of the old(er) school to the effect that clients make  representations, and I represent clients. My practice, which I think the majority of practitioners follow, is to have the client sign an application or maintenance filing. Here’s my reasoning:

As a litigator and somebody who also prosecutes trademark applications ( and also someone who is old enough to remember having to file paper applications), I think that if a case ends up in active litigation, having had the client execute the trademark application (or maintenance filings) is a good idea. Just my $.02. The act of signing something that is going to form the basis for a filing and a representation before the PTO is a salutary undertaking for clients. Your mileage, etc. This is not to say, that in exigent circumstances, with long-standing clients, the rule is always followed, but I think it is good practice if you can do it. On security recordations, I don’t see the same issue, since the document being filed with the Assignment Branch is an informational filing premised (one assumes) on an existing document that someone other than counsel has already executed. If there is disagreement, I am open to the argument.