There are many nuances and specific factors that the U.S. Patent and Trademark Office (USPTO) considers when deciding if a trademark (which indicates the source of the goods or services) is a candidate for registration. Before you invest the time and money into your application, read the following:
Trademark applications can be refused for registration on various grounds, establishing that the mark does not function as a trademark. These grounds include trade names, functionality, ornamentation, informational matter, descriptiveness, color marks and goods in trade, amongst others.
A trade name is often the name of a business or a company. The term, trade name means any name used by a person to identify his/her business or location. Whether a mark serves solely as a trade name rather than a trademark requires consideration of the way the mark is used, which is established upon review of the specimen (such as a label) submitted with the application by the USPTO.
Trade dress means the appearance or design of a product or its packaging. Trade dress can include features such as the size, shape, color or combinations of color, texture and graphics. Additionally, in some instances, trade dress can even include color, flavor, sound and odor. When a trademark application is filed, the examining attorney at the USPTO separately considers two substantive issues, namely (1) functionality and (2) distinctiveness.
Any trade dress which is functional cannot serve as a trademark. That is, if the trade dress is essential to the use or purpose of the article, or if it affects the cost or quality of the article, it is considered to be functional and is non-registerable. For example, the color yellow to denote a specific source of lawn equipment may function as trade dress and therefore be registerable. On the other hand, the color yellow for traffic signals or signage is essential to the functionality of the goods (e.g. alerts traffic to yield) and therefore will most likely not be registerable.
Functional trademarks cannot be registered due to the distinction between patent law and trademark law. Utilitarian products can be protected through utility patents that have a designated life, rather than through trademark registrations which could be unlimited in their life. Upon expiration of a utility patent, the invention enters the public domain.
andnbsp; The examining attorney at the USPTO must review not only the content of the application but must also conduct independent research to determine if the mark is functional. The applicant then has the opportunity to rebut the examiner’s findings.
To determine whether a trademark is functional, the following factors are examined:
andnbsp;andnbsp;andnbsp; (1) The existence of a utility patent on the product
andnbsp;andnbsp;andnbsp; (2) Advertising showing utilitarian advantages of the trademark if it is a design
andnbsp;andnbsp;andnbsp; (3) Facts relating to alternative designs
andnbsp;andnbsp;andnbsp; (4) Facts indicating whether the design results from a relatively simple or inexpensive method of manufacture
While utility patents for the product are strong evidence that a trademark is functional, design patents indicate that the trademark is not functional. Aesthetic functionality relates not only to product performance, but rather to competitive advantages. For example, a black outboard motor was not registrable because it could be coordinated with a variety of boat colors.
On December 15, 2017, the U.S. Court of Appeals for the Federal Circuit (CAFC) struck down the portion of the Lanham Act (aka the Trademark Act) which prevented immoral or scandalous trademarks from being registered with the United States Patent and Trademark Office (USPTO). The CAFC’s decision involved the term FUCT (In re Brunetti) which pertained to various types of apparel, including clothing for children and infants. However, the move did not come as a tremendous surprise. About seven months prior, the U.S. Supreme Court struck down the portion of the Lanham Act in a case (Matal v. Tam) which involved the mark, “The Slants.” The Slants decision, which was made on the basis of violating the First Amendment, received widespread attention for its seemingly groundbreaking nature. However, it was generally expected that the rationale of the Supreme Court in Matal v. Tam would be adopted by the CAFC and other lower courts in later decisions – which is precisely what has now occurred in this recent decision by the CAFC.
As noted, the issue in the Brunetti case was that the USPTO denied trademark registration to the mark FUCT. Its reasoning was that the term was considered to be scandalous and immoral in its nature, and therefore could not be protected as a federally registered trademark. The decision was appealed to the CAFC. The CAFC then essentially adopted the reasoning of the Supreme Court from its own earlier decision concerning The Slants and disparaging trademarks. In short, the CAFC determined that the restriction on registering trademarks for being “immoral or scandalous” is unconstitutional.
What does this now mean for trademark owners moving forward? Assuming that the CAFC decision in Brunetti is not appealed to the Supreme Court, it potentially opens the door for any number of terms that previously might have been considered immoral or scandalous to be registered as trademarks with the USPTO. That does not mean that all such marks will be registered since other aspects of trademark law still apply, such as the refusal to register marks that are merely descriptive or confusingly similar to a third party’s prior-registered mark. Perhaps too, the relevant portion of the Trademark Act might be rewritten in a manner that is deemed to be constitutional. Yet another possibility is that the USPTO might start taking a closer look as to whether these types of marks truly function as a trademark. And if not, then it could refuse registration for being merely informational matter. Of course, if this decision is appealed, then it would effectively continue to place any such marks on hold until the issue is finally resolved by the U.S. Supreme Court.
In the near future, we do anticipate an increase in new USPTO filings for trademarks that are potentially immoral or scandalous, as well as trademarks that are disparaging in nature. If you, as the reader, are the owner of such a trademark or have an intent to use such a mark as a trademark, then it would be prudent to file an application to register with the USPTO as soon as possible. That’s to avoid an owner of a potentially conflicting mark from filing first and obtaining an earlier filing date.
Court decision clears registration path for “questionably offensive” trademarks;
could possibly negate challenges to use of Chief Wahoo logo
“Questionably Offensive Trademarks Cleared for U.S. Registration,” also appeared online in Crain’s Cleveland Business on July 12, 2017.
On June 19, 2017, the U.S. Supreme Court ruled that the disparagement clause violates the Free Speech Clause of the First Amendment. This decision emanates from the case involving the lead singer of the rock group called “The Slants” who sought federal registration of the mark “THE SLANTS”. The registration was originally denied by the United States Patent and Trademark Office (USPTO) because the name was determined to be offensive to particular ethnic groups that have been described as having slant-eyes.
At issue in this case is a provision that prohibits the registration of a trademark “which may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Since the disparagement clause applies to marks that disparage the members of a racial or ethnic group, the U.S. Supreme Court had to decide whether the clause violates the Free Speech Clause of the First Amendment. As a result, the U.S. Supreme Court had to consider three arguments that would either eliminate any First Amendment protection or result in highly permissive rational-basis review.
The Government’s arguments were: (1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new “government-program” doctrine.
In short, the U.S. Supreme Court stated that: (1) Trademarks are private, not government, speech; (2) that just about every government service requires the expenditure of government funds; and (3) that the disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted.
The U.S. Supreme Court stated that it is unmistakable the Government has an interest in preventing speech expressing ideas that offend, but that this idea strikes at the heart of the First Amendment. The U.S. Supreme Court further stated that speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.”
Therefore, the U.S. Supreme Court held that the disparagement clause violates the Free Speech Clause of the First Amendment.
Only time will tell how much of an effect this ruling will have on U.S. trademark registrations moving forward. Perhaps this ruling will offer plausible protection to sports teams that use logos which could be viewed as disparaging?
For example, the Cleveland Indians’ Chief Wahoo logo, which remains popular among fans, has been viewed, by some, as a disparaging depiction. The Chief Wahoo logo remains a registered trademark; and the registration was recently renewed in March 2016. Will this ruling encourage the continued registration of the Chief Wahoo logo? Will others continue to petition for Chief Wahoo’s removal from the sport of baseball? Nonetheless, what remains clear is that the USPTO is not permitted to prevent certain disparaging speech expressing ideas with regard to trademark registrations.
In an article published by Crain’s Cleveland Business on February 18, 2017 and titled, “Protect your creative assets – here and abroad,” D. Peter Hochberg maintained that, unless a company’s creative assets are protected with registered trademarks, it could be ripped off by it competitors or it may lose its marketing edge.
If your business has a trademark but hasn’t registered it, one of your most valuable assets could be at risk. A key challenge is that many businesses that use trademarks are not even aware that they can and should be registered.
A trademark is a word, phrase, symbol or design, or a combination of any of these that identifies and distinguishes the source of the goods of one party from those of others. Registration of trademarks offers multiple benefits, including the ability to use the registered mark (®) adjacent to the trademark to clearly indicate that it is valuable enough to be registered with and protected by the United States Patent and Trademark Office (USPTO). Registration also gives the trademark owner access to the federal courts throughout the U.S. and the ability to register the trademark with the U.S. Customs and Border Protection Bureau. Failure to register a trademark can enable third parties to use it or something that is confusingly similar to market their own products, thereby devaluing what could have been a significant asset for the business.
In some cases, businesses use trademarks without realizing that they are trademarks and that they could be registered. Trademarks can exist in many forms including, but not limited to: names of specific products or services; logos for the business or particular products or services; specific colors used with products; characters used in corporate ads, such as pictures of babies, novel creatures, borders, outlines, etc; or product trade dress, which refers to visual characteristics of a product
or its packaging. Without the protection of registration, these marketing assets could be used by another company–perhaps a direct competitor–without easy recourse.
Trademarks can be registered if they are not confusingly similar to other already registered trademarks and if they pass an opposition process which allows the public an opportunity to oppose any published mark believed to be damaging to the opposer. Owners of unregistered trademarks unfortunately would likely not even be aware of the publication of a competing mark for opposition.
An easy, inexpensive registration process
Registering a trademark with the USPTO is relatively easy and inexpensive. The first step is to contact an intellectual property (IP) attorney who practices trademark law to determine if the trademark can be registered. The attorney will conduct a search of trademarks filed and/or registered at the USPTO to determine if any are “confusingly similar” to the trademark under consideration. During this process, the attorney considers key features of the trademark, including its visual appearance and meaning, to determine if anything could be considered “confusingly similar.” The cost of a search is usually less than $1,000.
The attorney must also determine if the mark is “merely descriptive,” which means it is descriptive of the goods or services with which it is used. If the mark “fails” this test, the attorney may advise the client to select a different trademark. Otherwise, the attorney will proceed to prepare an application for filing. It’s important to note that the trademark must already be in use in interstate commerce or the owner must have a bona fide intent to use the trademark in commerce in order for an application to be successfully filed. As part of the application process, the attorney will designate the goods and/or services with which the trademark is to be used. Typically it’s better to use the goods and/or services that are designated in the classification manual of the USPTO, since this will reduce the government filing fee. Typical fees are approximately $275 per class. In most cases, especially when dealing with smaller businesses, the trademark is only filed in one class to minimize costs.
The application is filed electronically online with the USPTO for review by an examining attorney often for less than $1,500. Assuming the application passes the examination, the trademark is then published for opposition before the Trademark Trial and Appeal Board. In most cases, there is no opposition filed. In some cases, there may be an applicant using the same or similar trademark for different goods and services. In these cases, applicants could sign an agreement to not use the trademark on those goods or services of the opposer.
The total cost for registering a trademark (assuming little or no opposition) is typically less than $3,000, not including the government filing fee. This is a relatively small investment considering the long-term potential value of the trademark. The average approval process takes between one and two years.
Protecting trademarks abroad
It’s important to note that a U.S. trademark registration is only valid and enforceable in the U.S. Business owners who are concerned about possible trademark infringement by goods or services made, used or sold in other countries, possibly for import into the U.S., can apply for foreign trademark registrations which are also relatively simple and inexpensive. According to reciprocal trademark laws between the U.S. and most foreign countries, a U.S. trademark applicant can file a corresponding application in nearly any other country within six months of the U.S. filing date and still obtain the effective filing date of the U.S. application.
It is possible to file applications in groups of countries for a reduced filing fee. Most countries in Europe, for example, belong to the European United Intellectual Property Office (EUIPO), so an applicant can file a single application and obtain a registration that is enforceable in all member countries of the EUIPO. Considering that many products are made in China and sold in the U.S., it is very common for U.S. trademark owners to also file applications in China.
Considerations for licensing trademarks
Trademarks can be licensed to other businesses, especially in cases where the business of the trademark registrant cannot be marketed in a particular region or to different classes of goods. However, licensing agreements should always require the licensee to meet certain quality standards in order to maintain the value and integrity of the trademark. Licensors should regularly police the use of the trademark by licensees. A license without an accompanying quality and policing agreement is referred to as a naked license and could lead to an invalidation of the registration.
The value of trademark registrations in an effort to protect valuable trademarks cannot be over-emphasized. As this article has documented, the process for registering trademarks in the U.S. and abroad is relatively easy and inexpensive, hopefully making trademark registration a consideration for even the smallest of businesses.
Why would someone, or some business, want to file for or ultimately obtain a patent? The short answer is that there are many different answers and reasonings, and inventors, entrepreneurs and businesses should make a balanced assessment on an ongoing basis.
What a patent provides is not a right to do something or have something. Rather, a patent is an exclusionary right that prohibits others from doing something. In other words, instead of giving someone a right to do something, a patent provides the patent owner the right to enforce (often through the threat of a lawsuit) the ability to keep (or prohibit) others from making, using, selling, importing or exporting something.
The processes behind how a patent is granted often appears mysterious and sometimes overwhelming to those outside of the patent world. In reality, it’s often more of an assessment of give and take between two parties, the inventor and the United States, represented by a federal employee, the patent examiner. Once an application for a patent is filed, it is assigned to a patent examiner to assess if a patent should, or should not, be granted. Essentially, the job of the examiner is to weigh the legal requirements of the patent system against the inventive (and claimed) material from the inventor. That’s to determine whether the person (or business behind the person) pursuing a patent has provided enough (and enough of the right stuff) inventive detail to be granted an exclusive right to the claimed technology.
One key to remember is that this examination step is only a first stage in a comprehensive patent strategy. Obtaining a granted patent may be all that one desires. Sometimes, inventors are only interested in having a patent, for example, to frame as wall art. In that case, the first stage will be sufficient. Alternatively, enforcing the rights that are granted with a patent may invoke additional stages. Enforcement, by way of Cease and Desist letters or litigation, can lead others to challenge the validity of the patent either in the Federal Court system or at the U.S. Patent Office (USPTO). These additional stages will undoubtedly bring about additional costs, and the patent strategy of a business plan should anticipate these costs. While costs associated with the first step of obtaining a patent is necessary, additional steps may also be necessary based on the answer to the question of why, and what one wants to do with a patent once obtained.
Focusing in on that first step of obtaining a patent should include a consideration of how much to pay for a patent. Unfortunately, there is often no easy answer to this question as every invention and strategy is different.
Having or even pursuing a patent can serve as a signal of perceived exclusivity. Oftentimes, doing enough to establish ‘patent pending’ is sufficient to alert the market that a business is serious about protecting their intellectual property. An issued patent provides tremendous value to its owner and serve as a symbol of exclusivity, accomplishment or capability. Patents may also be a signal to investors that the concept has value, and investors should consider investing with the patent holder (or sometimes the applicant). For businesses already engaged in a market sector, patents may serve as a symbolic shield in a market area, making it difficult for competitors to enforce other patents or technology in a particular area. Further, depending on strategy, patents may also serve as an offensive tool or symbolic weapon to stake out new market areas.
It is important to note that, while a patent strategy can be somewhat tailored to an applicant’s business intentions and goals, it nevertheless requires a significant monetary investment. However, in exchange for the exclusive monopoly granted to the patent holder by the U.S. government, obtaining a patent is oftentimes one of the best strategic decisions businesses or inventors make to obtain market share.
We’re here to help tailor a patent strategy that fits with your business, market and most of all, long-term intentions.
As a registered patent attorney, Dave has extensive experience preparing and prosecuting patent applications in software, electrical, and mechanical fields for Fortune 100® companies, startups, and individual inventors.
He is also routinely engaged in offensive and defensive forward patenting initiatives as well as portfolio development strategies, which include patent acquisition and licensing on a domestic and global scale.
“Dave’s skillset allows us to keenly position ourselves as an even stronger team with broader expertise,” said Jamie Pingor, chair of Walter | Haverfield’s Intellectual Property team. “We are honored to have him on our team.”
On the litigation side, Dave has represented clients before the U.S. Patent and Trademark Office (USPTO) Board of Appeals as well as in trademark cancelation proceedings.
“The strength, focus, and positive reputation of Walter | Haverfield’s Intellectual Property team is what first prompted me to consider this opportunity,” said Dave, who practiced solo in his own patent boutique firm. “Combine that with the strength of the firm overall, and I realized this would be a great move for me as well as my clients. I’m thrilled to be here.”
A graduate of Cleveland-Marshall College of Law at Cleveland State University, Dave is a member of the Ohio Bar Association. He is also a member of the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA). He earned his bachelor’s degree from the Ohio State University College of Engineering and currently resides in Strongsville with his family.
Since 1932, Walter | Haverfield attorneys have served as strategic counselors to private businesses, public entities and high-net-worth individuals, providing creative and customized solutions that deliver outstanding results at an exceptional value. Our track record has allowed us to sustain year-after-year growth. Walter | Haverfield has doubled its size in the past decade to become one of the top ten Cleveland-based law firms. Today, our team of nearly 80 attorneys is focused primarily in the areas of business services, real estate, intellectual property, labor and employment, education, tax and wealth management, hospitality and liquor control law, litigation and public entities.
Clothing your trademark license with certain contractual provisions can possibly cover an otherwise uncomfortably bare exposure.
An owner of a trademark has a duty to ensure the consistency of its trademarks, as well as the good(s) and/or service(s) under which its trademarks are used. If a trademark owner enters into a license agreement and fails to include adequate quality controls over a licensee’s use of its licensed trademark, this trademark owner could lose its trademark rights due to a legal doctrine referred to as the “Naked Licensing Doctrine.”
Naked licensing can lead to situations where the public is deceived or misled, due to a separation between the trademark and the expected quality of good(s) and/or service(s). In other words, once a trademark no longer functions as a source identifier (i.e., functioning as a symbol of a known quality of the good(s) and/or service(s)), the trademark effectively loses its significance as a source identifier. Even if the goods and/or services are of similar quality, the lack of provisions controlling such quality can lead to problems. Oftentimes in these situations, once this significance is lost, the trademark can be deemed to have been abandoned under trademark law.
One example of naked licensing involves Freecycle, an Arizona non-profit dedicated to facilitating the re-use of unwanted items of others. The Ninth Circuit Court, in this instance, considered whether the trademark owner (i.e., Freecycle) had adequately controlled its licensees’ use of marks so as to prevent naked licensing. In this case, Freecycle allowed its licensees to use its trademarks without written licenses. Freecycle argued, in part, that it exercised control over its licensees through guidelines and policies published online. The Court rejected Freecycle’s argument and not only found that Freecycle failed to retain contractual control over the quality control provisions, but that Freecycle did not have actual control over the quality control provisions. In turn, the Court concluded that Freecycle engaged in naked licensing.
To comply with the current state of trademark laws, there are a number of legal provisions for addressing and/or monitoring the quality of goods produced and/or services provided under a trademark that must be incorporated in a trademark license agreement to prevent naked licensing. An example of such a provision generally includes an agreement where the licensee will agree to use the licensed trademark in accordance with such quality standards as may be reasonably established by the licensor. Nevertheless, including these provisions in a trademark license does not by itself protect the trademark. Even if these provisions are encompassed in a trademark license agreement, the trademark owner should make sure to also monitor, and if necessary, enforce the quality control provisions throughout the term of the license in order to preserve the inherent value of the licensed trademark. Any failure to enforce could also be considered an abandonment of the trademark.
Naked licensing is also a risk that should be assessed prior to any potential merger or acquisition. Prospective buyers and sellers should be aware of the potential detriments that a naked trademark license arrangement can pose relative to the strength and viability of a licensed trademark.
Therefore, it is prudent to seek out meaningful counsel and contact an experienced trademark attorney to discuss such potential licensing issues. Walter | Haverfield’s trademark attorneys regularly counsel clients in such licensing matters.
*This article also appears in Crain’s Cleveland Business.