If you read the title and immediately thought world-famous soccer, er football player Lionel Messi and Massi who, then you’re part of the general audience the European Court of Justice imagined when faced with Lionel Messi’s journey to register his name as a trademark.
In a nine-year legal battle, the EU court dismissed an appeal from Spanish cycling company Massi and the EU’s intellectual property office, EUIPO.
Messi first applied to trademark his surname as a sportswear brand in 2011, but Massi has argued that the similarity between their logos would cause confusion. Like the United States, other jurisdictions will deny registrations of trademarks if a likelihood of confusion between the marks would occur.
Messi, 33, has been crowned world football player of the year a record six times and is one of the world’s highest-paid soccer players. Forbes has placed his total earnings for 2020 at $126m. And in August, he made world headlines by sending a fax to his club declaring his intention to leave. Although Messi ultimately stayed with Barcelona, the reverberations he made only further proves that his surname and logo has become distinct because of his skill and fame.
But perhaps your surname hasn’t reached that level of notoriety… yet. Can I get a trademark registered that includes my surname? Can I register a logo with my name in the logo? If you have questions like this or other questions about whether your trademark would be confusing, or if you are thinking about protecting a new possible trademark, give Grell & Watson a call at (919) 825-3309!
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.
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.
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.
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.
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
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.
What’s the difference between the Principal and Supplemental
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.
We would be happy to discuss your potential trademark application and answer any trademark questions.
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/