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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When Can I Use the Mouse?

So: When can I use an image of Mickey Mouse® in my advertising?

Never: You’ll never be able to use an image of Mickey Mouse in your advertising.

Really?: Never is a very long time.

Okay: You’ll be able to use Mickey Mouse when Disney® stops using Mickey Mouse and then all the kids who were alive when Disney was using Mickey Mouse have grown old and died. And their kids, too. And maybe their grandkids.

But why?: At some point the copyright will run out, won’t it?

Hahaha: Yeah, someday the copyright will run out on Steamboat Willie, but that has nothing to do with what you asked.

But: Why not?

Because: Copyrights run out but trademarks never die, unless the trademark owner stops using the trademark and it fades from the public’s memory as a trademark. Hence, my comment about grandkids.

Hmmm: My ad is very funny. Maybe it will pass as parody.

Fat chance: Parody’s allowed only when the interests of free speech outweigh the interests of the trademark owner. That’s almost never true with advertising, which traditionally has very low free-speech interests.

But: That doesn’t seem fair to me.

OK: Think about it this way. Disney has spent decades and millions of dollars promoting its goods and services using the mouse. Why shouldn’t they get the full benefit of their investment? Why should you be allowed to piggy-back on their brand recognition to sell your stuff?

Well: When you put it that way . . .

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Trademark Graveyard

Trademark rights are born when someone starts using a trademark to sell stuff: The minute you offer CRYPT brand breath mints for sale, you start to have “common law” trademark rights in CRYPT for breath mints.

You can expand and strengthen your rights by registering the trademark.

Unlike patents and copyrights, trademark rights have the ability to live forever, but they can die.

What happens to common law rights?

What happens to rights from the registration?

Genericide DEAD DEAD
Owner stops using the trademark to sell stuff Die eventually when the trademark fades from consumers’ memory. Die when owner is unable to renew the registration. (In order to renew, you still have to be using the trademark.)
Registration expires. Live on and can be used to get another registration. DEAD

 

1024px-Standardgasstation.jpgWhen companies change their names, they often try to keep the rights to the old name alive just as a precaution against someone else’s using it.

Chevron® continues to operate a few stations under the STANDARD OIL® trademark.

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In 1991 Kentucky Fried Chicken® changed its name to KFC®, but they still use the full name sometimes.

International Harvester switched to Navistar® in 1985, but it defended the old mark in an opposition as recently as 2007.

Dunkin’ Donuts® is experimenting with Dunkin’®. If that works for them, I wonder if they’ll let the rights to the full name die.

 

 

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Photo of tombstone © 2009 Jo Naylor modified by Michele Berdinis under Attribution 2.0 Generic.

Photo of Standard Oil®/Chevron® station © 2009 Coolceasar. Used with permission under GNU Free Documentation License.

Photo of Kentucky Fried Chicken® door handle is © 2014 Mike Mozart. Used with permission under Creative Commons Attribution License 2.0.

Can I Register a Word in Klingon?

We’ve already seen that you can’t get a registration for words that just describe what you’re selling:

  •             No SMARTPHONE brand cell phones
  •             No H2O brand water

But what if your trademark describes what you’re selling in a language other than English? Can that work as a trademark? Can you get a registration?

Generally, if the English translation can’t work as a trademark, then the non-English word can’t work as a trademark (and can’t be registered) either.

The Doctrine of Foreign Equivalents[i] says that a “foreign equivalent of a merely descriptive English word is no more registrable than the English word itself.”

  •             No EAU brand bottled water

There are limits to the application of the doctrine: It’s applied only when “the ordinary American purchaser would stop and translate” into English.[ii]

That means we don’t have to worry about the translation of words from obscure or dead languages or less common words from common languages because the “ordinary American purchaser” is unlikely to be familiar with those words.

How does this play out in the real world? It actually creates some pretty arbitrary results. Which of these words did the Trademark Office examiner have problems with? Answers are below:

VODA for water bottles[iii]

VESTITA for women’s clothing[iv]

BÄREN-SCHUHE for footwear[v]

AGUA CRISTAL for spring water[vi]

HUSET for retail store services featuring housewares[vii]

KLINGON WARNOG for beer[viii]

TEMPUS for clocks[ix]

Like I said, pretty arbitrary.

 

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[i] The Doctrine of Foreign Equivalents is used in a bunch of situations: To determine whether a trademark is primarily a surname; to determine whether a trademark is confusingly similar to another trademark; to determine whether a trademark is merely descriptive etc. In other words, translate the word and then ask all the usual trademark law questions about the English translation.

[ii] Here’s what the Trademark Manual of Examination Procedure has to say:

The foreign equivalent of a merely descriptive English word is no more registrable than the English word itself. “[A] word taken from a well-known foreign modern language, which is, itself, descriptive of a product, will be so considered when it is attempted to be registered as a trade-mark in the United States for the same product.”

Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule, but merely a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. Thus, an examining attorney will generally apply the doctrine when the relevant English translation is literal and direct, the term comes from a common, modern language, and there is no contradictory evidence of another relevant meaning. The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.”

The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.”

While foreign words are generally translated into English for purposes of determining descriptiveness, foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes. The determination of whether a language is “dead” must be made on a case-by-case basis, based upon the meaning that the term would have to the relevant purchasing public.

Example: Latin is generally considered a dead language. However, if evidence exists that the relevant purchasing public still uses a Latin term (e.g. , if the term appears in current dictionaries or news articles), then that Latin term is not considered dead. The same analysis should be applied to other uncommon languages.

TMEP Section 1209.03(g). All citations omitted.

[iii] VODA is Russian for “water” and that was a problem in this application.

[iv] VESTITA is Italian for “dress” and that was a problem in this application.

[v] BÄRON-SCHUHE is German for “bear shoe”. Remarkably the applicant included a disclaimer of the word SCHUHE but the Trademark Office examiner advised that the applicant withdraw the disclaimer. The word is pronounced just like “shoe”. This is a mind-blowing conclusion by the examiner.

[vi] AGUA is Spanish for “water” and that was a problem in this application. Bizarrely, an application for AQUACRISTAL for “bottled water” sailed right through.

[vii] HUSET is Swedish for “house”. This was not a problem for getting a registration.

[viii] WARNOG is Klingon for beer, apparently. This was not a problem for getting a registration.

[ix] TEMPUS is Latin for “time”. This was not a problem for getting a registration.

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 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.