Don’t Mess with the Giraffe

There are 231[1] dead applications that include R US. That’s pretty much every application for [FILL-IN-THE-BLANK] R US that’s been filed by someone other than Geoffrey, LLC.[2]

Almost all of the dead applications were expressly abandoned by their owners, which means they didn’t put up much of a fight. They probably got a letter from Geoffrey, LLC that politely but firmly suggested they pick a new trademark.

The dead applications include goods and services in just about every field: restaurants, dentistry, junk removal, bamboo processing, accounting (a lot of accountants), legal (an embarrassingly large number of attorneys including one who filed to register TRADEMARKS R US). My personal favorites: GLORYHOLES R US and HEMOROIDS[3] R US.

Some people look at this record and think TOYS R US is a bully, going after some little guy who’s just trying to process some bamboo. After all, who could think that TOYS R US would go into selling hemorrhoid medication? No one’s getting confused or misled, so what’s the harm?

But trademarks are a “protect it or lose it” kind of asset. Once someone gets a registration for BAMBOO R US, it will be harder to stop HEMOROID R US. Then a few more slip through and now everyone has an argument that Geoffrey’s rights stop at retail toy sales and the brand is tarnished and diluted. The giraffe is wisely protecting his turf.

 

[1] As of February 4, 2016.

[2] Five applications are still alive: 1 is being opposed and the other 6 haven’t reached the stage where they can be opposed yet. Only one application made it through: Books R Us was registered in 1982. The registration is dead. The owner didn’t renew.

[3] Yeah, that’s how they spelled it.

The Deepest Cut of All

A few weeks ago, Mr. Douglas Alan Lehocky received a final refusal to his application to register:

DOUGLAS ALAN LEHOCKY

I’ve written about Mr. Lehocky twice before, here and here. Mr. Lehocky filed over 150 applications during Thanksgiving week of 2014. That amounted to over $50,000 in application fees, all of which Mr. Lehocky has lost or soon will.

It’s not that hard to understand why the Trademark Office refused to give Mr. Lehocky a registration for DISNEY.COM, but why couldn’t Mr. Lehocky get a registration for his own name?

In order to get a trademark registration, you have to be using what you want to register as a trademark and you have to provide the Trademark Office with a specimen showing that use. Mr. Lehocky didn’t provide any evidence of use as a trademark. Instead, Mr. Lehocky provided a picture of a piece of paper with the words DOUGLAS ALAN LEHOCKY printed on it in really big letters.

When that didn’t work, he submitted the same picture 2 more times.

It still didn’t work and it never will.

One hundred fifteen of the original 150+ applications are now dead. The rest continue their slow but inevitable trip to “final refusal.” It would be funny if it weren’t so sad.

 

The Redskins and the Slants

A court recently ruled that the law used to deregister the Redskins’ trademarks is unconstitutional.

So how’d that happen?

The Trademark Office refused to grant Simon Tam[1] a registration for THE SLANTS because it’s disparaging to a substantial number of Asian Americans.

Mr. Tam appealed and after some procedural wrangling[2], he ended up in front of a bunch of federal appellate judges[3] who decided to consider whether refusing to register a trademark that’s disparaging is unconstitutional.[4] The Court held that the disparagement bits in the law are unconstitutional, pointing out that the government registers copyrights for disparaging books all the time. If the government tried to reject those copyrights, it would clearly be unconstitutional, so how is this any different?

Not all the judges agreed. One judge argued that the Trademark Office should only apply the disparagement bits of the law when the trademark is just for business (like the Redskins) but not when a trademark is trying to make a free-speechy kind of point (like Mr. Tam). That seems like a lot of deep analysis to ask of an examiner.

So, waddaya think? Should the government register offensive trademarks and let society shame the “bad” owners into changing their ways or should we rely on the Trademark Office to protect our sensibilities? Put another way, do we let the Redskins go on being offensive so that Mr. Tam can reclaim the word SLANT for Asians?

[1] An Asian-America musician (not the Firefly surgeon).

[2] Which is super interesting, but only to lawyers.

[3] At least one of whom might actually be a Redskins fan.

[4] The court considered the Section 2(a) disparagement provision only. The court didn’t rule on the part about immoral or scandalous marks that was at issue in Left Nut Brewing, which they leave to future decisions. Hint hint.