Disparaging and Vulgar?

On January 5, 2017, Work Release Records, Inc. (WRR) filed an application to register CERTIFIED STREET NIGGAZ for baseball caps and T-shirts.

On January 18, the United States Supreme Court heard oral argument in Matal v. Tam, a case that would decide whether it’s unconstitutional to prohibit registration of trademarks that include a disparaging word.

Meanwhile, back at the Trademark Office, on June 8, the examiner assigned to WRR’s application suspended the application because “a substantial composite of black people would find the use of the term NIGGA . . . to be disparaging . . ..”

On June 19, the Supreme Court ruled that it’s unconstitutional to refuse to register a trademark because of it includes a disparaging term.

So, WRR’s application can move forward, right?

Not so fast.

On September 13, the examiner issued another suspension because NIGGAZ isn’t just disparaging, apparently, it’s also vulgar: “In fact, the term NIGGA is akin to profanity because newspapers will not print the term and people cannot say it on TV, like other vulgar terms.”

Aaarrrggghhhhhh!!!!!!!

So, is WRR fucked out of luck? Not yet.

Way back in November 2015, a federal appeals court heard oral argument on whether it’s unconstitutional to prohibit registration of trademarks that include a vulgar word. The appeals court had been waiting for the ruling in Tam before making its decision.

WRR is now waiting for yet another court to decide the fate of its application. I’m eagerly waiting with them with fingers crossed. I’ll let you know as soon as I do.

 

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Nope. You Can’t Do That Either.

What if you wanted to sell a T-shirt that has the NASA® meatball but with the word NASA replaced with NERD. Would that be OK? If you searched the Trademark Office database, you wouldn’t find a trademark registration for the meatball, so does that mean you can use it?

We’ve already seen that people and companies can have trademark rights without having a registration. But you have a bigger problem than common law rights when it comes to NASA and its meatball.

First, you for sure can’t get a registration because the Trademark Office will refuse registration for any trademark that “falsely suggests a connection with . . . [a] national symbol . . ..”* So, unless you actually are NASA, just forget about getting a registration.

But that’s just the beginning of your problems. You just flat out can’t use this as a trademark, even without a registration. There are lots of statutes out there that specifically prohibit the use of certain words and symbols as trademarks, for example:**

  • Red Cross and the red cross symbol
  • FBI
  • Smokey Bear
  • 4-H Club
  • Boy Scouts and Girl Scouts
  • Olympics
  • the copyright symbol ©.

In short, you really need to stay away from this stuff. The T-shirt in the picture was for sale at the American Museum of Natural History in New York. Maybe the company that made the T-shirt had a license from NASA. I sure hope it did.

 

*15 U.S.C. §1052(a)

**This website has a more complete list.

Weed Words

Can you register a trademark for a product or service that’s illegal?

Let’s say you have cannabis shops called Giggles in Colorado and Massachusetts and you want to make sure you can open a Giggles in New Hampshire when they legalize.  Or, let’s say you’ve created an amazing new product called Whoa Dude and you want the best protection you can get. Can you do it?

Here’s what the statute says: “No trademark . . .  shall be refused registration . . . unless it . . . [c]onsists of or comprises immoral, deceptive, or scandalous matter . . .”[1]

There are lots of things that are illegal that are neither immoral, deceptive, nor scandalous and anyway the statute prohibits words that are immoral, deceptive, or scandalous. It’s not referring to the products at all.

So you can get a registration if you’re willing to create a public record affirming, under penalty of perjury, that you’re making or selling a product in violation of federal law.[2]

Would anyone do that?

They would.

Among the many applications and registration that include the word “cannabis,”[3] I found only one that flat out says it’s selling a controlled substance: Can-D Rollers LLC of Vancouver, Washington registered THAT TAFFY for: “Dietary and nutritional supplements containing cannabis oil featuring THC or CBD.”

So, the answer is” “Yes. You can get a registration for providing illegal products and services.” But you’re still not going to be able to register Murders R Us without hearing from the giraffe.

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[1] 15 USC Section 1052

[2] When you sign the application you affirm that:

  • The mark is in use in commerce on or in connection with the goods/services in the application; and
  • The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

[3] There are 1173 live applications and registration is that include the word “marijuana” or “cannabis” in the description of goods and services. The majority of them refer only to providing information and education about marijuana, but 90 of them include goods in International Class 005, which includes pharmaceuticals.

Of those 90, most cop out and refer to the product as: “Herbal supplements; Herbal supplements for treating health problems; Natural herbal supplements” or “None of the foregoing comprising or containing marijuana, hemp, cannabis, or derivatives, extracts, or synthetic iterations or marijuana, hemp or cannabis.”

 

But It’s My Name

In the 1980s, Ernest and Julio Gallo got a ruling that prevents their youngest brother from using his own name, JOSEPH GALLO, as a trademark to sell cheese.

In 2016, the estate of Frank Zappa sent a cease and desist letter to Frank’s son, Dweezil Zappa, to make him stop using ZAPPA PLAYS ZAPPA in connection with his band’s tour.

Teresa Earnhardt, the widow of  NASCAR® legend Dale Earnhardt,* has been involved in litigation against her stepson, Kerry Earnhardt, over Kerry’s attempt to register EARNHARDT COLLECTION for home building and furniture since 2012.

What do you do when you can’t even use your own name? How can that even happen?

In general, trademarks that are “primarily surnames” are quite weak and are difficult to register. But, sometimes, a trademark that’s primarily a surname becomes famous and through its fame gains strength and becomes both registrable and defensible.

We’ve seen this before with women named Tiffany wanting to use their name to sell jewelry. The most famous example is probably MCDONALD’S which was no longer owned by brothers Maurice and Richard McDonald.

What can you do if this happens to you? First, I strongly recommend that you have a non-famous name, but if your name happens to be APPLE, I suggest you just use something else as a trademark.

 

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* Teresa Earnhardt is the owner of 8 registered trademarks that include EARNHARDT for a variety of good and services, including key ring, pocket knives, license plate frames, entertainment services relating to racing, toys, decals, clothing, beverage containers, towels, pennants, charitable services, CDs, watches, among other products and services.

Other members of the Earnhardt extended family own other trademarks:

Jeffrey Earnhardt, Kerry’s son, uses JEFFREY EARNHARDT.

Kerry owns a registration for EARNHARDT OUTDOORS for entertainment services relating to outdoor activities.

Son of Hidden Meaning

We’ve already seen the hidden messages in the logos for Cisco®, FedEx®, and Amazon®, but that’s just the tip of the iceberg. Check out these cool messages embedded in logos.

BR 31.pngCan you find the hidden trademark reference in this registered trademark owned by Baskin Robbins Incorporated? I’ll give you a hint. It tells you how many flavors Baskin Robbins® famously offers.

F1.pngDo you see both the F and the 1 in this registered trademark owned by Formula One Licensing B.V. ? The F is in the positive space and the 1 is in the negative space. Vroooom.

Goodwill.png

 

And it’s totally cool how Goodwill Industries International Inc. makes us see the smiling face and the letter G both at the same time.

 

 

Tostitos.png

And just in case you weren’t sure what to do with a tortilla chip, Frito-Lay North America, Inc. shows you how to dip it into salsa right there in their registered trademark.

washington

 

This logo owned and registered by Lincoln Hockey LLC for the Washington Capitals® is pretty damn cool. The eagle is obvious but can you see the Capitol dome in the negative space?

 

 

Have you seen any cool logos with hidden messages lately?

 

 

All trademarks are owned by the companies named and are not affiliated with Beeline Legal in any way.

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Damn Bad Business Decision

A Fort Collins taco shop has made a wicked bad decision.

According to the AP, Dam Good Tacos [DGT] opened sometime in 2006. About the same time, Torchy’s Tacos [TT], a taco franchise in Austin, began using DAMN GOOD TACOS as part of its branding.

TT has three relevant trademark registrations.* TT wrote to DGT asking them to stop using DAM GOOD TACOS. TT offered to help DGT pay for the rebranding. DGT refused. TT is suing.

First, let’s be really clear that trademark law sees no difference between DAM and DAMN. Say them out loud. They sound exactly the same. End of discussion.

So whose rights will prevail?

DGT may have limited common law rights to DAM GOOD TACOS in Fort Collins that will allow it to go on using the name for its existing restaurant. If the court allows that, does it mean that DGT has won?

No. They still lose:

  • DGT will be out tens of thousands of dollars in legal fees. Imagine how else they could have used that money to promote and grow their business.
  • This proud independent taco shop will not be happy when it’s confused with TT some day. And that will happen.
  • DGT won’t be allowed to open a second restaurant using the same name outside its current area.
  • Potential buyers of the restaurant won’t pay as much for the goodwill because of the limitation and the confusion.

It sounds unfair. It may even sound mean. But DGT needs to make a business decision, not an emotional one. Rebrand.

 

*Here are TT’s relevant registrations:

Filed Use started Registered Disclaims
TORCHY’S DAMN GOOD TACOS July 2008 Nov 2006 March 2009 TACOS
DAMN GOOD TACOS Feb 2015 2006 Oct 2015 GOOD TACOS
DAMN GOOD Feb 2015 2006 Oct 2015

 

Photo of tacos by James Willamor used under Creative Commons Attribution-ShareAlike 2.0 Generic license.

 

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The Wasp Still Stings

A little earlier this year, a court in Turin, Italy ruled in favor of Piaggio & C.  S.P.A., the company that makes the iconic Vespa® scooter. A company in China had copied the design for the scooter and was selling its product in Italy.

Vespa 1.png

The ruling was based on both Piaggio’s copyright and five “3-D” trademark registrations in Italy for their scooter design. It’s a big deal that the trademarks were part of the ruling because the copyright will expire but the trademark registrations, as we’ve learned, can live forever.

Piaggio presented evidence of how well-recognized the Vespa is. They conducted a survey and were able to show that 85% of the people in the survey could recognize the contours and design of a Vespa. The percent grew to 95% when the pool was limited to people who regularly ride scooters.

In other words, just by looking at a drawing of a scooter, 85% of Italians could tell which scooters were made by Piaggio. That’s one hell of a strong brand.

Vespa 2.png

So, does that mean no one else can make scooters? You already know the answer to that question is no.

But it does mean you can’t make a scooter that incorporates the iconic elements of the Vespa design.

What’s the lesson here: Figure out why customers want your stuff and then make sure you protect the hell out of whatever it is that distinguishes you from your competition.

 

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Protecting a Perfume

The intellectual property of a perfume is hard to protect: The composition is usually a trade secret, but it isn’t that hard for a competitor to compose a compound that’s very close to an existing scent.

So, as with so many other goods and services, protection of the market for the product comes largely by protection of the trademark. That includes a registration of the trademark for the house (Chanel®) and the scent (No. 5®).

The power of a perfume trademark was recently expanded by a court in the Netherlands.

Here’s what happened: Bargello® created smell-alike scents for popular perfumes and gave each of their smell-alike scents a number. So far, Bargello was not infringing anyone’s rights.

Then Bargello create a list, like this, that allowed customers to find the smell-alike for their favorite perfumes:

  • 404    Little Black Dress by Avon
  • 114    London by Burberry
  • 280    Omnia by Bulgari
  • 705    Euphoria by Calvin Klein
  • 674    Chic by Carolina Herrera
  • 135    No. 5 by Chanel

That’s where the District Court of The Hague drew the line. The court held that this wasn’t permissible “comparative advertising.” Rather, this was using a protected trademark owned by a competitor to promote Bargello’s smell-alike products.

It’ll be interesting to see whether similar lawsuits are brought in other jurisdictions and how those courts decide.

What do you think? Should a company be allowed to use a competitor’s trademark like this? How do we balance the interest of consumers in knowing how goods compare to the interests of companies in maintaining the value of an asset they created?

 

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Rock on or Not So Much?

Gene Simmons of the rock band Kiss® has applied to register a hand gesture as a trademark for entertainment services. His application says he’s been using the hand gesture since 1974. November 14, 1974, to be exact. Here’s the drawing of the gesture.

87482739

There are plenty of registrations for stylized versions of hand gestures, like these:

87467028 copy.png                  87206566 copy.png                      85231924 copy.png

But this is different. This is a hand gesture itself. Is that ok?

There’s nothing wrong with having a hand gesture as a trademark. Anything can function as a trademark if it identifies a particular source of goods or services. Carol Burnett is extremely well-known for pulling her earlobe at the end of a performance. I would definitely describe her iconic ear-pull as a trademark.

But what about Simmon’s hand gesture?

Imagine a picture of a rock singer, with all identifying features scrubbed out, but the hand gesture clearly visible. If I show that to people who listen to rock music, how many of them would say: “Oh, yeah, that’s Gene Simmons” and how many would say: “Not sure who that is, but he seems cool.”?

Devil's horns.png

In other words, is this something that Simmons does, or is it something rock stars do? The answer to that question is at the core of whether the hand gesture is a trademark.

If this hasn’t been trippy enough for you, what counts as infringement for hand gestures? Lots of rock stars use the devil’s horn gesture. Is that infringement? Can Gene Simmons make them stop?

Trademark law is soooooooo cool.

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Google Genericide

In 2012, Chris Gillespie registered 763 domain names that included the word “google.”[1]

A few months later, Google took ownership of all of them using a special rule called “UDRP,” which is available only to registered trademark owners.[2]

Gillespie then tried to deregister two Google trademark registrations, claiming that GOOGLE had become generic.[3]

As we’ve already seen, if your product name becomes the generic word for the product you’re selling, you can lose your rights and your registration: linoleum, yoyo, cellophane.

Gillespie submitted the results of a Thermos survey[4] to show that “a majority of the relevant public uses the word ‘google’ as a verb – i.e. by saying ‘I googled it.’”[5]

The Ninth Circuit looked at the evidence Gillespie provided and asked whether the GOOGLE trademarks had “taken the ‘fateful step’ along the path to genericness.” Was the “primary significance” of Google “the name for a particular type of good or service irrespective of its source.”[6]

The court made it clear that just because someone uses a trademark as a verb, she isn’t necessarily using it a generic word: We have to explore what’s her mind. What does she mean when she says: “I googled adorable cat pictures”?

  • I used Google to search for adorable cat pictures.[7]
  • I used a search engine to search for adorable cat pictures.[8]

If she means the first sentence, she’s not using GOOGLE in a generic way.

The court said that Gillespie’s suit “cannot survive . . . based on ‘sheer quantity’ of irrelevant evidence”[9] showing that people “verb” Google. The surveys needed to be worded in a way that reveals what’s in the speaker’s mind.

So, go ahead and Beeline that trademark. Just be sure and do it at beelinelegal.com.

 

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[1] For example: googledisney.com; googlebarackobama.net; googlenewtvs.com.

[2] The Uniform Domain Name Dispute Resolution Policy or URDP. You have to own a trademark registration that predates the offending domain name registration in order to use UDRP.

[3] Mr. Gillespie actually joined an existing lawsuit that had already been filed by David Elliot. Both the UDRP proceeding and the lawsuit involved registrations 2884502 and 2806075. Elliot v. Google, Opinion issued May 16, 2017, page 4.

[4] Gillespie’s Thermos survey asked 251 respondents: “’If you were going to ask a friend to search for something on the Internet, what word or phrase would you use to tell him/her what you want him/her to do?’ Over half of the 251 respondents answered this question by using the word ‘google’ as a verb.” Elliot v. Google, Opinion issued May 16, 2017, page 15.

Google used a Teflon survey: “A Teflon survey begins with a brief lesson explaining the difference between brand names and common names. It then asks respondents to classify a series of words, including the trademark at issue, as either brand names or common names. In response to Google’s Teflon survey, a little over 93% of respondents classified ‘Google’ as a brand name. Most respondents also classified ‘Coke,’ ‘Jello,’ ‘Amazon,’ and ‘Yahoo!’ as brand names, and classified ‘Refrigerator,’ ‘Margarine,’ ‘Browser,’ and ‘Website’ as common names. Unlike [the] Thermos survey, Google’s Teflon survey offers comparative evidence as to how consumers primarily understand the word ‘google’ irrespective of its grammatical function.” Elliot v. Google, Opinion issued May 16, 2017, page 16. Internal citations omitted.

[5] Elliot v. Google, Opinion issued May 16, 2017, page 5.

[6] Elliot v. Google, Opinion issued May 16, 2017, page 7. Emphasis added.

[7] This is called a “discriminate verb.”

[8] You guessed it: This is called an “indiscriminate verb.”

[9] Elliot v. Google, Opinion issued May 16, 2017, page 20.