That Which We Call Weinstein By Any Other Name Would Smell As Foul

Assuming you aren’t named Tiffany or McDonald, is it a good idea to sell widgets using your name as a trademark?

If you do, enforcing your rights is going to be hard. Kicking people out of their own names is a game for the big guys, but even if you have the resources of McDonalds Corporation and the fame of Tiffany & Co., it’s risky to tie a brand to a person. Just ask the people at The Weinstein Company, who are now considering a branding change in the wake of allegations of sexual harassment and abuse by Harvey Weinstein. Ditto Mario Batali.

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Even using the name of a fictional character can be problematic due to changing social mores. For example, Quaker Oats® has had to update the image of Aunt Jemima® over the years. On the left is the Aunt Jemima trademark circa 1905. On the right, 1992.

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Even with the update, the mark (word or image) is problematic and likely to become more so.  Ditto Uncle Ben’s®.

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Names and images are more likely to become dated. When was the last time you met someone named Manny or Moe? And look at these guys? Is this who you want to trust with your new hybrid car? Ditto Mr. Clean.®

Every trademark has unforeseeable risks. No one could have predicted that sales of a diet product that had been on the market for 47 years would fall by 50% because its trademark sounds like a deadly disease, but names and images of people are more likely to cause problems. There are so many great ways to brand, why pick something with so much potential for problems?

 

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FUCT is Not

Last week you could not register the trademark FUCK. Today you can.  If that’s all you wanted to know, you can stop reading, but you’ll miss a pretty cool story.

Here’s how it went down.

There’s a statute that prohibits registration of a trademark that “Consists of . . . scandalous matter; or matter which may disparage” a group of people.*

Earlier this year, the U.S. Supreme Court heard a case brought by Simon Tam. Mr. Tam is the front man for an Asian-American rock band called The Slants. The Trademark Office refused to register THE SLANTS because it was disparaging to Asians. The Supreme Court ruled that it’s an impermissible restriction on speech for the government to refuse registration on that basis. Mr. Tam and The Slants were able to register and rock on.

Waiting in the wings was Mr. Erik Brunetti. Mr. Brunetti had been trying to register his clothing brand FUCT. He was refused registration because FUCT is a naughty word and therefore “scandalous.”

The Supreme Court’s ruling focused only on the “disparagement” part of the statute, so we have all been waiting to hear what the Court of Appeals for the Federal Circuit (CAFC) would say about FUCT which implicates the “scandalous” part of the statute.

On Friday, we found out. Along with Mr. Brunetti’s application, the following applications will now move forward:

  • NAMASTE AS FUCK
  • HIPSTER FUCK COFFEE
  • POLITE AS FUCK
  • FUCK RACISM
  • FUCK FEAR
  • FU CANCER

It also means that Work Release Records, Inc.’s application to register CERTIFIED STREET NIGGAZ, which the Trademark Office said was both disparaging and scandalous, will move ahead.

That’s all you need to know, but here is the most hilarious bit from the decision: The government argued at one point that the statute is constitutional because the government has an interest in “whether or not its examiners are forced to decide whether one drawing of genitalia is confusingly similar to another drawing of genitalia.” [Opinion at page 30]

 

And here is the majority’s inspiring conclusion:

“The trademark at issue is vulgar. And the government included an appendix in its briefing to the court which contains numerous highly offensive, even shocking, images and words for which individuals have sought trademark registration. Many of the marks rejected under § 2(a)’s bar on immoral or scandalous marks, including the marks discussed in this opinion, are lewd, crass, or even disturbing. We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive images and words that have secured copyright registration by the government. There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law. No doubt many works registered with the Copyright Office offend a substantial composite of the general public. There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public. The government has offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in this case. We hold that the bar in § 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment. We reverse the Board’s holding that Mr. Brunetti’s mark is unregistrable under § 2(a).” [Opinion at pages 41-42]

Yay trademarks! Yay freedom!

 

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*USC Section 1052(a)

**Matal v. Tam, 137 S. Ct. 1744 (2017).

What’s in a Corporate Name?

In October 2015, the company that owns GOOGLE® changed its name from Google Inc. to Alphabet Inc. Recently, Coach, Inc. announced it was changing its corporate name to Tapestry, Inc. I overheard some people chatting and it was clear they thought Coach was changing the brand instead of just the name of the corporation.

The name of a corporation is NOT a trademark.

I have bought and will continue to buy COACH® brand handbags. As a consumer, I neither know nor care what the name of the corporation is. I look for the brand because it means stylish, high quality, and functional.

I use GOOGLE® brand internet search services. I don’t care what the name of the corporation is. I use GOOGLE® brand search services for extraordinary search algorithms, an uncluttered user interface, and solid results.

It’s possible for a corporate name to include a trademark. NIKE® happens to be owned by Nike, Inc. That doesn’t make “Nike, Inc.” a trademark. If Nike, Inc. changed its name to Wangadoodle Inc. it wouldn’t affect the trademark NIKE®.

Trademarks are shorthand for how you like your stuff.

Think of it this way. A mom sends her kid to the store. “Max,” she says, “Run down to HOME DEPOT® and pick me up a BLACK + DECKER® drill.” She doesn’t have to describe the quality she wants or rely on little Max to be able to know a good drill from a bad one.

The mark is all she needs.

 

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