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.
August 4, 2016
The 2016 Olympic Games® in Rio are set to officially open this Friday, August 5, 2016. Every four years, for a glorious 16 days, the world gathers in unison to watch athletes compete for the gold medal in a multitude of games in varying degrees of popularity. The world also gathers to sell you things. Lots and lots of goods and services will be offered through fancy advertising. Many of these ads will exploit the famous Olympic rings and pictures of the Games in association with certain products. “Official sponsor of the Olympic Games” being a key phrase.
Why is this? It is because the Olympic Games are serious business. Not surprisingly, the use of Olympic-themed trademarks is equally serious business. Even in the United States, these trademark rights supersede U.S. trademark law in many areas and are granted a “privileged status.” The International Olympic Committee (IOC) owns most of these trademarks and it is hyper-vigilant in its enforcement of the uses of these marks.
What constitutes an Olympic trademark? Why are they given special privileges? Let’s explore!
June 29, 2016
On June 22, 2016, South Texas College of Law announced that it was changing the name of the school to “Houston College of Law.” The school also introduced a new color scheme on its website that is predominantly red and white, with shades of gray. As a bookend to the public announcement, it appears the school also filed a trademark application for the word and design mark HOUSTON COLLEGE OF LAW EST. 1923, with a filing date of May 12, 2016. The trademark application also asserts a date of first use of April 6, 2016.
Name changes can be a good thing. Typically. A rebranding can assist in drawing attention to a stale mark or product. It can attract new customers. It can introduce a product or service into a previously under-represented industry. In essence, this is what trademarks are for: to assist the consuming public in identifying the source of goods and services. The only problem is that “Houston College of Law” looks and sounds like “University of Houston Law Center,” which has been in existence in the same geographical area since approximately 1947. The University of Houston has also embraced a red-and-white color scheme since the late 1930s.
As you can imagine, this name change and color scheme did not sit well with the other local law school. On Monday, June 27, 2016, the Board of Regents of the University of Houston System filed a lawsuit in the Southern District of Texas, Houston Division against South Texas College of Law. The Complaint asserts causes of action for trademark infringement, unfair competition and false designation of origin, false advertising, dilution by blurring or tarnishment, and related state and common law claims.
Now that this matter is in the court system, what can be expected and how should this play out?
Can musicians and artists legally demand that politicians not use their works?
Recently, the Rolling Stones sent a notice to Donald Trump demanding that he cease using their songs at his campaign events across the country. This is not the first time an artist has objected to a politician using certain songs or related works in conjunction with a political campaign. It is practically a rite of passage for a high-profile politician to anger a musician with a particular choice of campaign theme song. This is an American trend that dates back at least to the early 1980s, when Bruce Springsteen upbraided President Ronald Reagan for using “Born in the U.S.A.” as part of his re-election efforts.
Of course, the Rolling Stones are not an American band. Plus, by now we all know that Donald Trump is not exactly the type of person to back down to what may be a toothless demand. Trump might all too willing to cite 250 years of American history by telling the Rolling Stones to take their demand and shove it. He thrives on this type of attention after all. But that is not the question. The real question is this:
Can Donald Trump (or most any politician) use any song they want for a campaign without obtaining the musician’s permission?