Trademark law is a nuanced discipline. Word choice matters greatly. The use of a particular word, a certain combination of words, the exact construction of a phrase, and/or the precise arrangement of particular terms – each of these can affect the validity and enforceability of a trademark. It is important.
Last week, I was in the middle of a trademark infringement trial in federal court. Opposing counsel colloquially referred to official certificates of registration as “trademarks” and the underlying applications as “trademark applications.” Each time I had to stand up and object. For one simple, yet legally necessary reason:
There is no such thing as a “trademark application.”
Last night, the Philadelphia Eagles defeated the New England Patriots to win Super Bowl LII®. By this point, the Super Bowl is more than just a football game. It is a literal spectacle, above and beyond the athletic competition itself. Not only do viewers get exposed to the glitz and glamour of the biggest game of the season, but there is also an extra-long halftime special. Not to mention the heavily-discussed commercials. Often, marketing firms will hire celebrities to appear in these commercials to add a little extra pizzazz. Of course, these celebrities usually agree to appear in these advertisements beforehand, with full knowledge that their likeness is being used for commercial gain. This year’s Super Bowl went a step further.
Prince, Martin Luther King, Jr., and Kurt Cobain are some of the most iconic individuals in American history and pop culture. They were also fiercely protective of how their names and images were used when they were alive. Today, their respective estates or other third-parties control how their “publicity rights” and how their likenesses are marketed. Yet somehow each of these three were all featured in different ways during the Super Bowl telecast, often in direct contrast to how they would have presented themselves during their lifetimes. How is this legal? I will try to address this interesting cross-section of trademark, copyright, and publicity right issues here.
On May 25, 1977, George Lucas unleashed Star Wars: A New Hope into the cinematic consciousness. A movie that cost $11 million to make generated nearly $800 million in worldwide box office receipts. Even at the time, it would have been hard to predict the scope of Star Wars in popular culture forty years later. In October 2012, Disney bought Lucasfilm – and the rights to all things Star Wars – for $4 billion.
Not even Peter Minuit got as good of a deal for his 60 guilders when he acquired Manhattan.
It may not be an understatement to claim that the Star Wars property is collectively the most valuable intellectual property asset in modern history. I am not the first to assert this. Consider the ever-expanding scope of characters, stories, movies, books, toys, multimedia, and all the related technology that can be associated with Star Wars. With Star Wars Episode VIII: The Last Jedi opening on December 15, 2017, a deeper dive into the scope of Star Wars and its intellectual property universe seems timely and appropriate.
As a practicing attorney, with a specialization in intellectual property law, I am often asked to assist clients and potential clients with their various trademark needs. Among the more common questions or requests that are posed to me are the following:
“I need to trademark XYZ!”
“My competition is using ABC, but they did not trademark it, so can I use it?”
(and more recently)
“I hear the Supreme Court says you can now trademark offensive terms, is that true?”
While well-intentioned, each of these questions is either grammatically or factually incorrect. Why? Because, quite simply, “trademark” is not a verb and should never be used as a verb in a legal context. “Trademark” is a noun that identifies a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. It is not a process or an action or a series of steps to be accomplished. The word is not a verb. Unfortunately, modern colloquial uses of the term have seeped into the common dialogue. This causes mistakes, unnecessary confusion, and potentially drastic mis-applications of the law by those who are otherwise acting in good faith.
Here’s how and why.
April 20, 2017
In a world of fake news, clickbait, and alternative facts, there is a bit of comfort in knowing at least one undeniable fact. Donald J. Trump is enthusiastic about stamping the TRUMP name on most any goods or services and reaping the benefits of the ancillary trademark rights. He first sought trademark registration for a Trump-branded product in 1985 and has since sought to register in excess of 300 other trademarks with the United States Patent and Trademark Office, including the now ubiquitous MAKE AMERICA GREAT AGAIN® mark, which was registered on August 16, 2016. While he often files applications through his various corporate entities, the fact remains: Donald Trump loves him some trademark rights.
This may elicit a few questions though. First, can a sitting POTUS own trademark rights? Also, what about other intellectual property rights: patents, copyrights, trade secrets? Can a U.S. President acquire, assert, enforce, or use with impunity certain types of intellectual property?
I shall do my best to answer these, though I will try to avoid addressing in detail the emoluments clause elephant in the room. For now.
On December 29, 2016, music group Run-DMC, an inductee of the Rock & Roll Hall of Fame™, filed a lawsuit against online retailer Amazon.com, big box store Wal-Mart, and a series of manufacturing entities and suppliers. Run-DMC claims to own a registered trademark, in addition to other intellectual property that the lawsuit asserts has generated over $100,000,000 since the 1980s. Run-DMC alleges that Amazon and Wal-Mart are liable for trademark infringement and trademark dilution. It seeks a permanent injunction and monetary damages of $50,000,000.
How did Amazon and Wal-Mart find themselves at the center of a high-profile trademark infringement action against one of the most iconic and influential musical groups of the modern era? Is this mere oversight or a concerted effort to trade on the goodwill of the RUN-DMC brand? Similarly, how is Amazon liable if it merely allowed a third-party entity to offer a product through its site?
Trademarks and trademark law are a tricky legal property. For one, trademarks are technically “owned” by the individual or entity that uses the mark in association with goods or services in commerce. Yet the underlying purpose of trademarks is to protect the relevant consumer. Trademarks are only valuable (and protectable) to the extent the consumer associates that mark with the source of particular goods and services.
How do you get a trademark? It is not difficult. The exact moment you select a word, logo, slogan, phrase, or design – and “use” it in association with particular goods and services in the stream of commerce, it becomes a legal trademark. While the definition of “use” can be nebulous and imprecise, essentially any sales or marketing efforts that target consumers or customers across interstate lines can be proper trademark “use” that breathes life into a mark. This provides what is known as “common law” trademark rights. These rights are enforceable in a court of law.
The obvious follow-up question then is: if getting a trademark is so easy, why should I bother going through the process of applying for a state or federal trademark registration? What do I get for my money? We have now stumbled across the purpose of this article.
September 30, 2016
On September 29, 2016, the United States Supreme Court granted certiorari in the matter of Lee v. Tam, regarding whether the disparagement provision of the Lanham Act is facially invalid under the First Amendment, particularly whether it restricts free speech. This is the appeal from the same case I wrote about last December. I am curious to see how the Supreme Court tackles this issue, and what I consider substantive errors in analysis made by the Federal Circuit last fall.
Nevertheless, while the legal issues are heavily nuanced and regard convoluted topics such as “chilling effects,” “government speech” versus “commercial speech,” “disparagement,” and what constitutes “use in commerce,” it appears the layperson is confused by the scope of the case. Particularly, after the news broke yesterday, the common theme was “why is a musical group not allowed to call itself the Slants?” – which is not only wholly irrelevant to the issue but is also a dangerous interpretation of what I consider to be an important trademark matter.
In short, you can name your rock band whatever you want. You can also name your professional football team whatever you want (looking at you, Washington Redskins). No one is going to stop you. The United States Patent and Trademark Office, however, may refuse to grant you a trademark registration for such a name. Not that the name cannot be a trademark – it can be – but “registration” confers additional benefits that may or may not extend to marks that the USPTO considers to be “disparaging” of people or groups. This is the entirety of what the Supreme Court is going to address.
Instead, here I will try to address the distinction between free speech, trademarks, and trademark registrations in general terms.