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.

Trademark Scammers. USPTO SCAM.

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Non-USPTO Solicitations

USPTO Scam

USPTO Scam

Here is yet another way scammers are trying to part you from your hard-earned money.

The USPTO recently announced that trademark holders are receiving letters in the mail requesting payment on fees due for the trademarks.

The fraudulent solicitations include offers such as: for legal services; for trademark monitoring services; to record trademarks with U.S. Customs and Border Protection; and to “register” trademarks in the company’s own private registry.

Furthermore, these scammers are using letterhead that mimics the look of official government documents and are using names that resemble the USPTO, such as “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office,” or “Agency.”

Trademark Scam.

The Department of Justice reported that these scams resulted in the loss of approximately $1.66 million from copyright holders, and has only resulted in 5 convictions.

So, if you get a letter in the mail stating that it’s from the USPTO office read the letter carefully before making a decision about whether to respond.  According to the USPTO “All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.”

What do you do if you are a victim?

File an online consumer complaint with the Federal Trade Commission (FTC). See here.

The USPTO has offered several examples of just some of the non-USPTO solicitations that have been mailed out, which can be reviewed here.

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles. Feel free to subscribe to my newsletter.

Trademark. Branding. Why its important?

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Branding. Trademark.What is Branding?

Trademark protection is an essential part of your brand strategy. If you are focused on brand building, then having registered trademarks as part of your portfolio is important. Branding your business online takes thought, dedication, and most of all — time! You must come up with a color scheme, logo, design, image, and/or an image that unifies your business as a brand.  More importantly, your brand must be recognizable and must communicate to your audience what it stands for.

When you establish your business brand online, a great deal of time is invested in spreading the word across the Internet and getting your credibility established. By using online tools, such as social networking resources, video marketing, pay-per-click advertising, search engine marketing, mobile marketing, and other advertising mediums, people will eventually associate your brand with quality and value.

Without a brand name and/or a distinctive brand image, your business will not stand out in the marketplace from other vendors who provide a similar product or service. If you are going to invest time and money in establishing a presence in the marketplace, your next step should be protecting it. Protection of your brand starts with protecting your trademarks, e.g., your logos, designs, tag lines, slogans, in some cases trade names, or any other device used to market your products and/or services in the marketplace. To ensure it is done correctly — the first time — you should hire a competent trademark attorney to assist you in the process.

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.