The Slants. USPTO. “Disparaging”

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Trademark. Rejection.

USPTO. Trademark.

Imagine that you find that ideal name that suits your business and brand quite perfectly. You rush to quickly file all of the appropriate paperwork with the US Patent and Trademark Office so that you can start to use your trademark. Then your attorney reaches out to you to inform you that you’ve received a rejection letter from the USPTO stating that your trademark was not approved because it was found to be “disparaging.” What would you do?

Well this is exactly what occurred to the Asian-American rock band, The Slants. The band’s trademark was rejected in 2010 on the grounds that it is disparaging to people of Asian descent. The band leader, Mr. Tam, was surprised about the rejection notice and cited that the band had received not one formal complaint by any Asian-American. At that time the band had been touring for over several years.

In an edited excerpt from the conversation that the NY Times conducted with Mr. Tam, he says the following about where the name originally came from:

It came from me asking around friends when I was trying to think of a band name. I said, “What’s something you think all Asians have in common?” and they told me slanted eyes. That’s interesting because, No. 1, it’s not true — not all Asians have slanted eyes and Asians aren’t the only people that have a slant to our eyes. But No. 2, it worked [as a name] because we could talk about our perspective — our slant on life, as people of color navigating the entertainment industry — and at the same time, pay homage to the Asian-American activists who had been using the term in a reappropriated, self-empowering way for about 30 years. We know that irony and wit can neutralize racial slurs, because it shifts the dynamics of power. It makes people check in and think, “Is this actually appropriate to use or not?” Prior to that, people just make assumptions. Read more here.

The Slants.

The Slants, not wanting to give up on their band name, took their case all the way to the Supreme Court. And after 5 years of battle, the Supreme Court recently ruled the USPTO is not able to determine what kind of speech is socially acceptable and what is not.

Justice Samuel Alito wrote, “The disparagement clause violates the First Amendment’s Free Speech Clause.” The court went on to say that “the federal government does not dream up these marks,” and that registration should be “viewpoint neutral.”

Attorney Lee Rowland of the American Civil Liberties Union agreed with the decision that the Supreme Court made and said:

“The government’s misguided effort to protect minorities from disparagement instead hurt members of that very community by hindering their right to compete in the marketplace of ideas. Fortunately, today’s opinion prevents the kind of absurd outcome that results when the government plays speech police.”

As this moment, the government has appealed the decision to the U.S. Supreme Court. So, we will need to continue to follow this case. What do you think of the Supreme Court’s decision? Feel free to comment below.

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Feel free to join my conversation on my Facebook Fan Page, on my Twitter page, in one of my LinkedIn Groups.

Is a Trademark Required? TM?

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trademark sign padlockTrademark? Branding?

While trademark registration is not required for the protection of your valuable logos, designs, words, phrases, and other source identifiers, it is a smart business judgment decision to protect them in that way. Taking that extra step to protect what’s yours will aid in enhancing the value of your company and your brand. When you work hard to create an identifiable, recognizable, and memorable brand, a trademark attorney can help you protect that asset. Or, if you are clear on the actions to take, you can do it yourself. The U.S. Patent & Trademark Office is a wonderful resource.

But having a competent trademark registration attorney on your team can be a great benefit. They can appropriately advise you on every aspect of the trademark prosecution process. For example, an attorney can counsel you on how to select a mark that can be protected, how to perform a trademark search, the use of the appropriate trademark symbol, which trademark registration form to use if you choose to register (and how to file a trademark application), how to respond to USPTO Office Actions, and how to protect your trademark after it’s registered. Regardless of the benefits of having a competent professional who understands trademark law and how to apply it, you can always do it yourself on the www.uspto.gov website.

Post-registration Formalities

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Trademark. Trademarks.

Okay, so you have a trademark and you think that’s all you need ever do to keep that mark. Right? Wrong?

Did you know that in order for you to keep and protect your valuable trademark, there are certain things you absolutely must do? In the world of trademarks, we call them post-registration formalities. Among the actions you must take after you receive your trademark registration are:

  1. Use it. Use your trademark the way you said you were using it, when you filed Statement of Use
  2. Use it correctly. Make sure your trademark stands out.
  3. Use the appropriate trademark symbol correctly.
  4. Monitor your trademark. Make sure no one else is using your trademark without your permission.
  5. File Declaration Continued of Use. Between years 5-6, make sure you file this document. If you miss this deadline, your registration will automatically cancel, and no one will tell you.
  6. Renew your trademark. A trademark lasts forever, so long as you File Declaration Continued of Use. Between years 5-6, make sure you file this document. If you miss this deadline, your registration will automatically cancel, and no one will tell you.

“I didn’t know that! No one ever told me,” some of you may be saying. Well maybe that’s true, and maybe not. Sometimes clients don’t pay attention, and sometimes they don’t understand the importance of these steps. I know for myself, every time I register a trademark for a client I discuss how they should use the mark. Not only do I discuss the steps they should take, but give them a cheat sheet with explicit instructions.

Until next time, I’m attorney Francine Ward sharing useful legal information. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles.

Comprehensive Trademark Search

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Trademark. Proof.

When trademarking your brand, it is vital to conduct a comprehensive trademark search to determine if the mark can be registered. Yet, as important as this step is, many folks avoid doing it. Why? One reason may be cost. The cost of investing in a trademark search is not cheap. It can range anywhere from $300-750, plus the cost of analysis (having a lawyer tell you what the voluminous search report actually means). But avoiding those costs on the front end can create greater costs on the backend.

If you don’t do a search and someone else is already using the same trademark, your application will likely be denied by the United States Patent & Trademark Office (USPTO). Their reason: your mark is likely to be confused with an existing registration or a pending application trademark.

When should you do a search?

When you are about to do any of the following, among other things:

  1. Start a business
  2. Build a brand
  3. Acquire a business
  4. Purchase Assets
  5. Purchase a Franchise
  6. License a trademark
  7. Collaborate with someone on a project involving content or brand creation.

Until next time, I’m attorney Francine Ward sharing useful legal information. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles.

10 Was To Establish Your Brand

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Construction site crane building a blue 3D text. Part of a series.

When you think of great trademarks, the ones known throughout the world, they will likely include the apple with the bite taken out of it and the golden arches. There are also older trademarks that have withstood the test of time, like the classic Pepsi trademark or even the red tongue, which has come to represent the Rolling Stones for several decades now.

Big successful companies strategically use something called trademark placement or product placement, the conspicuous placement of the trademark where a large number of people will see it. Think of the giant television screen in New York’s Time Square. Other trademarks appear in popular movies and television shows.

The website brandsandfilms.com compiled a list of the top 40 product placements of all time. The top five are:

  1. Wilson in Cast Away
  2. Kodak Carousel in Mad Men
  3. Ford Mustang in Bullitt
  4. Manolo Blahnik in Sex and the City
  5. FedEx in Cast Away

To see the complete list, visit here.

Obviously, most businesses don’t have the power and resources to get their brand on television or the movies, but there is much a small business can do to promote its brand. And while your small business may not have its brand recognized around the world, you can become recognized as a top brand locally to the customers you want to specifically target.

According to Inc. Magazine, there are 10 ways to establish your brand.

  1. Publish Plenty of Free Content
  2. Make It Dead Simple to Access
  3. Provide Value on Social Media
  4. Guest Post on the Right Sites
  5. Tell Your Story
  6. Take Advantage of Google Authorship
  7. Write a Book
  8. Be Controversial
  9. Speak at Every Opportunity
  10. Be Constant

To see further details on these steps, read here.

Of course, a big part of establishing your brand involves the trademark of your logo and name. Why let someone else steal your brand and all the hard work you put into it? A solid trademark is a great way to protect not only your brand, but also your reputation with your customers.

Feel free to join my conversation on FacebookFacebook Esteemableacts Fan Page, or my Facebook Law Page, you can also interact with me on my Twitter Esteemable Acts pageTwitter Law Page, or on LinkedIn.