Trademark filings are public records. The United States Patent and Trademark Office database contains names and addresses of owners of trademark applications and registrations. A disturbing trend that has reached epidemic proportion is the use of that data by third parties trying to scam trademark owners. If you own a trademark registration and receive any
Trademark protection is available to any individual or entity who uses a trademark in the United States. Since 2015, an average of 400,000 trademark applications have been filed with the United States Patent and Trademark Office (USPTO) each year. According to USPTO data, about 25% of those are filed by non-United States entities and individuals. Effective August 3, 2019 a new Rule will go into effect at the USPTO that changes how those parties must interact with the USPTO.
Who does this impact?
The Rule applies to non-United States parties, including all businesses that have a principal place of businesses (i.e. headquarters) outside the United States, as well as all individuals with non-US permanent addresses. Foreign nationals with residence in the United States or businesses with significant enough contact and business in United States are not impacted.
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
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
It is almost that time of year — football season is approaching and with the anticipation of tailgating and touchdowns comes, of course, talk of trademarks. For years, the Washington Redskins have been fighting battles regarding their REDSKINS trademark. The issues have created much controversy due to the purported negative connotation the REDSKINS term gives…
While we have written on this topic in the past, because the NCAA Basketball Tournament is an annual event and the NCAA gets more aggressive each year, this information bears repeating. Because businesses sometimes tie promotions to the Tournament and use it as a marketing activity, they should be careful how they do so.
(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?
By 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.
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.
President Obama’s historic visit to Cuba is yet another step on the “new course” for US/Cuba relations. Since late 2014 the US and Cuba have been working toward normalizing relations. In January 2015, a number of changes to US sanction and trade policies toward Cuba were implemented which are beginning to open up new business opportunities for US companies in Cuba. While change may be incremental and slow, companies that prepare now for business in Cuba will be ready. One area that US companies should begin to consider regarding conducting business in Cuba is protection of their intellectual property in that country.
Cuban Trademark System
Trademarks are vitally important to business. The names of a business, product or service are the first things the public encounters. US trademark law protects the rights of the first party to use a mark against use of the same or similar mark by others for the same or similar goods and services. Among the rights a first user of a trademark has against others is the ability to seek injunctive relief, requesting a second user to stop all use of a trademark. This could stop a product launch dead in its tracks or result in significant re-branding costs if a product or service is already in the market. Because of this, businesses should carefully consider trademarks before adopting or using them. A very recent lawsuit highlights the importance making sure a trademark is available for use.
HOUSE OF CARDS
HOUSE OF CARDS is a wildly popular series on Netflix that is all the more poignant in this election year. The popularity of HOUSE OF CARDS has spilled over into collateral branding, with the name appearing on, among other things, shirts, coffee mugs and slot machines. A Massachusetts company called D2 Holdings (D2) registered the mark HOUSE OF CARDS in 2009 for various entertainment services, including “comedy action and adventure” programs distributed by various platforms. In 2012, MRC II Distribution Company (MRC II), the producers of the Netflix HOUSE OF CARDS series, tried to register HOUSE OF CARDS for its own television entertainment. That trademark application was rejected because D2 had first registered HOUSE OF CARDS for similar services. The refusal to register the HOUSE OF CARDS trademark did not deter MRC II and it has proceeded to use the name, to great success. Indeed, to such success that the name has been licensed to a producer of gaming machines who now uses that mark on slot machines.
Fall has arrived, which means professional football is in full swing on and off the field. While on-field activities are geared toward physical dominance, victory and relentless pursuit of the Lombardi Trophy, an equally competitive set of battles wages off field in the world of trademarks.
The National Football League (NFL) constitutes 30 teams and one of the strongest brands in the world. Not only do teams protect their names — BEARS, BUCCANEERS, PACKERS — but also their slogans – WE ARE ALL PATRIOTS, AMERICA’S TEAM, and of course logos. The 2015 football season, full of on-field excitement and drama, also brings two trademark cases that deserve mention.
SUPERB OWL confusing with SUPER BOWL?