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.”
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?
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.