In 1991, artist and designer Erik Brunetti launched a clothing line. In 2017, Brunetti filed an application with the United States Patent and Trademark Office (USPTO) to register the trademark representing this brand—FUCT (“Friends U Can’t Trust”). The USPTO refused registration of the mark because the Federal statute governing trademarks—the Lanham Act—prohibited registration of any trademark that

consists of or compromises immoral or scandalous matter.”

Too Scandalous to Trademark?

Reviewing the FUCT application, the USPTO applied its general test of for those marks that might be considered as comprised of immoral or scandalous matter. That is, whether a substantial composite of the general public would find a trademark shocking to the sense of truth, decency or propriety or whether the mark would give offense to conscious or moral feelings. Against this, the USPTO concluded the FUCT mark was totally vulgar, highly offensive and had “decidedly negative sexual connotations.” Therefore, the Lanham Act prohibited registration and Brunetti’s application was refused.

First Amendment Lawsuit


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5Pointz

The building once known as 5Pointz was a block-long warehouse structure in Queens, NY. During the ‘90s, the area was rundown and crime-riddled. As a way to discourage vandalism to the building, the owner allowed graffiti artists to paint on the walls, giving them a canvas to display their works. Ultimately, the 5Pointz building became well known among graffiti artists and tourists and artists traveling from all around the world to add their art to the structure. For almost 20 years the developer and the artists existed this way. However, wanting to take advantage of rising real estate prices, in 2010 the owner of the building decided to redevelop it as a residential complex. The owner ultimately obtained permits to demolish the buildings and redevelop the parcel.

The Litigation


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Eagles_in_concert_September_2014(To the tune of Hotel California)

Once in Northern Virginia, a trademark was filed
A Mexican company a long list compiled
Cosmetics and phone cases, purses, hair gel and shoes
The list went on for six classes, just what did they have to lose?

During examination, a disclaimer was sought
The applicant gladly complied, any fear of refusal was for naught.

Then the mark was published, but the Eagles they did see
Their lawyers got involved
Said you can’t use this for free

Registering HOTEL CALIFORNIA
Such a lovely try (such a lovely try) Such a lovely cry
Don’t even try to use HOTEL CALIFORNIA
For any goods (for any goods) in our neighborhoods….

What Can That “Song” Possibly Mean?


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BrexitBy a slim margin, the United Kingdom voted to leave the European Union (EU) last week. Via the European Union Trademark System and the European Patent Convention a trademark or patent owner had the ability to secure protection across all EU member states by a single, unified registration. Of course, EU protection extended only to EU member states. So, with the UK on the way out of the EU, questions arise as to what protection will the owner of an EU right have in the UK once the BREXIT is complete? For companies that do business in Europe, this could have an impact on European Intellectual Property rights. Smart companies should start considering European options now.

Short Term

It will take at least two years for the UK to officially and fully withdraw from the EU. Until that time, all EU treaties and laws will continue to apply. So, for the near term, there does not appear to be any significant impact.

Long Term


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trade secrets label on folderIn a rare example of getting something done, the Senate and House of Representatives have passed Defend Trade Secrets Act of 2016 (“DTSA”) and it is now headed to the White House for signature. President Obama has indicated he will likely sign the legislation. With this in mind, it is a good time to review just what proprietary information your business has and how thoroughly it is protected.

Current law

Until now, trade secrets have been protected by state law. While the law is relatively standard there are some slight variations state by state. Indeed, 48 states, Florida included, have adopted the Uniform Trade Secrets Act (“UTSA”) in order to provide businesses with uniformity. At the federal level, while providing protection for other forms of intellectual property like patents, trademarks and copyrights, trade secrets had no specific protection. The DTSA is changing this legal landscape.

DTSA


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7041862895_6192f3c764_zLast spring, we discussed Tesla’s problems securing trademark rights in its name in China. See our post here. The moral of the Tesla story was to seek trademark registration in China as early as possible. Now, Apple has lost a trademark battle in China that underscores the importance of the Tesla lesson and gives an additional twist.

Apple’s Battle

In 2002, Apple registered the IPHONE trademark in China for computer hardware and software and mobile telephones. In 2007, Xintong Tiandi, a leather goods maker, sought and obtained registration of the IPHONE trademark for leather goods, including phone cases. Apple, claiming that its IPHONE mark was famous and well known in China, challenged Xintong Tiandi’s IPHONE registration in the China Trade Mark Review and Adjudication Board, where it lost. Apple then took the fight to the courts in China and lost in the lower court. Apple appealed and The Beijing Municipal High People’s Court has ruled against Apple again, stating that Xintong Tiandi registered the IPHONE mark before Apple, thus giving it superior rights, and Apple’s IPHONE trademark was not sufficiently well known in China at the time Xintong Tiandi registered IPHONE for leather goods. As the first user of the mark, Xintong Tiandi had the greatest rights and Apple’s claims failed.


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NCAA flickr bp6316The NCAA Basketball Tournament is here which also means local pride is high and many businesses use the Tournament as a marketing opportunity. Many promotions will refer to terms like MARCH MADNESS or FINAL FOUR for impact. The NCAA, however, is always vigilant and aggressively protects against unauthorized uses of its trademarks, especially during the Tournament. The NCAA has a number of registered trademarks relating to the Tournament including MARCH MADNESS, FINAL FOUR, ELITE EIGHT, and THE BIG DANCE. Use of these trademarks in ways that connote come sort of connection or affiliation with the NCAA or the Tournament will likely draw an objection from the NCAA.

Dos and Don’ts


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Audit checklist, with tick against "audit satisfactory",Businesses routinely conduct inventory audits to account for goods on hand, stocks of parts or components, equipment audits to account for machinery and its condition, and financial audits to locate and account for cash and business valuation. Businesses that do not conduct audits invariably run into problems.

Intellectual Property (“IP”) represents an asset class that businesses should regularly audit for a variety of reasons, including:
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