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Category: Trademark

Supreme Court okays “FUCT” immoral trademark

Happy Fourth of July!!!

In Iancu v. Brunetti, the Supreme Court confirmed that trademarks will no longer be refused registration because they constitute “immoral or scandalous” matter.  Writing the 6-3 majority opinion, Justice Kagan stated that the bar against federal registration of an “immoral or scandalous” mark is unconstitutional because it violates the First Amendment. 

As we celebrate Independence Day and our declaration “that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness,” the United States Supreme Court recently reaffirmed another hallowed pillar of our country: the First Amendment and Freedom of Speech.

According to the Patent & Trademark Office:Since it was enacted in 1946, Section 2(a) of the Lanham Act prohibited the federal registration of a trademark that “[c]onsists of or comprises immoral … or scandalous matter.”  The case originated from a trademark application filed in 2011 for the mark “FUCT”, covering various clothing goods. Although the Respondent, Erik Brunetti, declares the mark is pronounced as four letters, one after the other: F-U-C-T, anyone and everyone else reading the words would probably argue differently.  But now, it appears anyone can register marks that some would find “immoral or scandalous matter” because refusing registration based on a viewpoint of whether a mark is “immoral or scandalous” necessarily favors one perspective over another and would violate the First Amendment.

Immoral Trademark


Only time will tell whether this decision results in a rise in applications for marks that may previously have been refused based on the “immoral or scandalous” bar of immoral trademarks.  And Congress may possible heed the words from the concurring Justices that they should amend Section 2(a) of the Lanham Act to include a narrower basis for refusal than the substantially overbroad “immoral or scandalous.”  If Congress decided to amend the Lanham Act to refuse marks that were “obscene, vulgar, or profane”, some new trademark applicants might find themselves… fuct.

Please contact a US trademark attorney at Grell & Watson

(919)-825-3309  Email

We would be happy to discuss your potential trademark application and answer any trademark questions.

Can I Register a Dead or Abandoned Trademark?

Abandoned Trademark – Brainstorming brand names, logos, and other trademarks are always difficult tasks when you start a business.  Protecting them can be even harder when you’ve discovered that someone else has already attempted registration of your ideal trademark, but the mark is now listed as either “dead” or “abandoned” by the USPTO.

Abandoned Trademarks

According to the Patent & Trademark Office:The USPTO states that “a dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing.”  Trademarks registrations can be abandoned for any number of reasons, such as, failing to respond to a USPTO Office Action or failing to file a statement of use.  So while you could theoretically register a dead mark, there are other potential pitfalls. 

For example, just because the USPTO lists a mark’s particular status as “dead” does not mean it is available to register or even available for use without registration or consequences.  The registrant very well may have abandoned the federal trademark registration, but is still using the mark, thereby still establishing their common law trademark rights.  In other cases, a trademark may have acquired so much goodwill and recognition from consumers that reviving the dead mark (by anyone other than the original registrant) can be difficult and expensive. 

Other factors to consider include how long the mark has been abandoned.  If the mark hasn’t been used for 3 years, it’s presumed to be abandoned unless the owner can prove to the contrary.  But, the original owner can still stipulate that they have been using the trademark and had an acceptable reason for not maintaining the mark in the federal registry.

It’s important to determine how much a dead or abandoned mark is worth to you and your business.  How essential is it to use that specific mark?  Ultimately, the benefits of pursing such a mark must outweigh the potential liabilities.  Give us a call today to discuss your options in obtaining registration for a dead or abandoned mark and how Grell & Watson can help protect your most valuable assets. 

Please contact a US trademark attorney at Grell & Watson 678-373-4747

Principal and Supplemental Register

What’s the difference between the Principal and Supplemental Register?

Principal and Supplemental Register

The Principal and Supplemental Register are the two Registers a trademark applicant can end up on after filing a trademark application.  What’s the difference?  Which one is better?  Which one do I want to end up on?  You guessed it: The Principal Register. 

The Principal Register is reserved for those trademarks that are the most unique and provides the owner of a mark registered on the Principal Register with a presumption of ownership in all 50 states.  That means when you walk into court, someone else has the duty of rebutting that you are the owner of that registered mark. 

So what is unique and how do I get on the Principal Register?  Uniqueness can be a made up  word, like Kodak® or Kleenex®.  Or it can be a word commonly used in English, but not related to the product, good, or service.  Think of Target® for shopping or Apple® for computers.  So what happens when your mark isn’t “unique” and your mark is rejected from the Principal Register?  Is the Supplemental Register a worthwhile option?  What’s the difference?

Well the Supplemental Register is a Register for those marks that haven’t acquired distinctiveness yet.  A distinctive mark is one that is unique and should be registered on the Principal Register.  A mark that is not unique must be distinctive to the business in a consumer’s mind such that the consumer associates the mark with the good or service.  But a mark that is not unique and not yet distinctive can benefit with registration on the Supplemental Register.

Supplemental Register still provides someone with a federally registered trademark.  You can use the federally registered trademark symbol (i.e., ®) to provide notice of your federally registered mark.  In other words, the public would and should understand that your mark is registered, you value your intellectual property and branding, and that you’re serious about protecting your rights.  A mark registered on the Supplemental Register may act as a strong deterrent to others attempting to register and/or use a similar mark to yours.

Registration on the Supplemental Register still provides protection against other confusingly similar marks that others try to register in the future.  So if someone else attempts to register a mark that consumers would confuse with your mark registered on the Supplemental Register, that person’s mark should be denied registration by the US Patent & Trademark Office.

Additionally, being on the Supplemental Register still allows you to sue infringers in federal court and having federal law control the key issues of validity, ownership, infringement, defenses, and damages rather than state law.  However, an owner of a mark on the Supplemental Register will have to prove that the mark is distinctive in the consumer’s mind in the geographical area in which you are suing the infringer.  Customers in that area have to recognize your brand, good, or service based on the mark.

So while it’s preferable to be on the Principal Register, having a mark on the Supplemental Register can still provide important benefits and protection for your brand. 

Principal and the Supplemental Register

By Albert Minn Patent & Trademark Attorney.

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Email : Albert Minn

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Can You Trademark a Hashtag?

Is a Hashtag something you can Trademark?

Please contact a US trademark attorney at Grell & Watson 919-825-3309

We would be happy to discuss your potential trademark application and answer any trademark questions.

Hashtag

Law: According to the Trademark Manual of Examining Procedure, a “hashtag” is a form of metadata consisting of a word or phrase prefixed with the symbol “#” (e.g., #chicago, #sewing, and #supremecourtdecisions). Hashtags are often used on social-networking sites to identify or facilitate a search for a keyword or topic of interest. See Dictionary.com, search of “hashtag,” http://dictionary.reference.com/browse/hashtag (June 19, 2013) (citing Random House Dictionary).

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media (i.e., social-media participants are directed to search a particular subject. 

Background: Originally developed on Twitter, a hashtag is a word or a phrase following the pound sign “#phrase” used to categorize messages on social media relating to a specific topic the phrase. Hashtags have become an important aspect of social media.  Their presence can be seen on social media platforms such as Facebook, Instagram, YouTube, Pinterest and more.

Hashtags function like a search key word and when searched will produce all messages and photos tagged with the #hashtag.  Hashtags are used by individuals, celebrities, politicians, companies, television shows, radio shows, podcasts, YouTube channels and more to gather messages together under a specific topic the phrase. Consumers can use them to rate products or services and even to promote a product, service, or business.

Conclusion: Therefore, general Trademark rules apply. If a mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic. Also trademark must functions as an identifier of the source of the applicant’s goods or services, if not then not trademarkable. A place to search other Hashtags to see if anyone is using your proposed Hashtag is http://twubs.com/

USPTO Satellite Offices

USPTO Satellite Offices – Coming Soon To a Time Zone Near You

 

December 2014

Patent Case Summaries