Trademark law is quirky. Look no further than the attention
being given to recent filings to the USPTO by LeBron James and Ohio State
University. TACO TUESDAY and THE. These legal matters are receiving
But the subsequent news blurbs, articles, and media stories all seem to have
one important thing in common:
Nearly everyone is wrong about what is going on here.
At this point, I expect ESPN and Darren Rovell to fail
at describing the intricate
proceedings of trademark matters. That much is a given. It is everyone else
piling on these stories that is making me nervous. Accordingly, to address
these issues, and because the internet practically runs on top 10 lists, here
are 10 misconceptions about LeBron and Ohio State’s trademark filings.
Last night, the Los Angeles Rams and the New England
Patriots played Super Bowl LIII. It was one of the worst exhibitions of
professional football in a long time, and certainly the most boring Super Bowl
to date. Enough people will be writing about that game today, but I see it as
an opportunity to further discuss the NFL’s SUPER BOWL® trademark. And this is
The NFL is a known trademark bully. Someone should petition to cancel its SUPER BOWL® trademark registration. And I think I have found a way for this petition to be successful. The NFL fraudulently acquired the registration and it should be canceled.
Colin Kaepernick’s “Intent to Use” trademark filing explained
ESPN once again published another article about an athlete seeking to protect his trademark rights in the United States. I have written about this topic before. More than a few times – to be precise. I still maintain that these “athlete trademarks” are getting absurd. Colin Kaepernick, however, is a substantially different athlete in terms of branding and awareness and overall newsworthiness. Kaepernick’s company filed a series of new applications to register a particular mark on October 5, 2018 with the United States Patent and Trademark Office. This provides another good opportunity for an analysis of what trademarks are and how trademark registrations work.
More importantly, it allows for continued discussion on how “trademark” and “trademark registration” are entirely different things. Plus, another reminder of the fact that there is no such thing as a “trademark application.”
On June 9, 2017, Gene Simmons – the bass player and lead tongue of the classic rock band KISS – filed an application to register a trademark. This by itself is not newsworthy. Gene Simmons has previously sought to register hundreds of words, slogans, and logos he has identified as his personal trademarks. What caught everyone’s attention this time was the subject matter: Gene Simmons asserts that the “devil horns” hand gesture is a trademark that he owns. Yes. A hand gesture. A gesture seen at every single live music event today.
Without belaboring the point, Gene Simmons is not going to acquire a registration for this alleged trademark. This hand gesture is not a trademark. Nor would it belong to Gene Simmons even if it were a trademark.
At the risk of giving too much attention to a frivolous application, here are a few reasons why this application is going to fail.
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.
On December 8, 2016, ESPN’s website ran with the scandalous headline “Patent office denies Golden Knights trademark” regarding the new Las Vegas NHL franchise’s recently chosen moniker. The article subsequently provided a detailed analysis of all the supposed ways in which “Golden Knights” allegedly could not be a trademark that belonged to the NHL team. As you may have gathered, I am writing this article to clarify that misconception.
There are numerous statements and implications in that article that are dangerously misleading. Trademark law is quite nuanced. But ESPN continues to attack it with a sledge hammer. If nothing else, it provides me a good opening to discuss some of these nuances in trademarks and how they may apply to professional and college sports teams’ nicknames.
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?
Today is Good Friday, the legal and Christian religious holiday of sorts commemorating the crucifixion of Jesus Christ. Sunday is Easter, celebrating the resurrection, concluding Holy Week, and also culminating in the end of the religious period known as Lent. These events have been recognized throughout the Christian and secular world for over 2,000 years.
Easter is also big business. From “Easter eggs,” to chocolate bunnies, to special pastel-colored clothing for Sunday church services, the holiday has been commercialized. Not surprisingly, there are multiple registered trademarks that are Easter-themed. Here are just a few: