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.

How to choose a trademark that can likely be protected?

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The best way is to make one up – be original and creative!

Trademark Image1My greatest challenge when it comes to trademarks is the marketing department. In most cases, marketers tell their clients, when choosing a trademark, to select a mark that “describes” what they do.

Trademark lawyers tell clients, do NOT choose a mark that describes what you do. Instead, select a mark that is unique and distinctive, not descriptive. When counseling my clients, the best way for them to accomplish that is to make up a word and then market it to the hilt.

According to the SBA, here are some other points to consider as you choose your trademark:

  • How will your trademark look? – On the web, as part of a logo, on social media.
  • What connotations does it evoke? – Is your name too corporate or not corporate enough? Does it reflect your business philosophy and culture? Does it appeal to your market?
  • Is it unique? – Pick a name that hasn’t been claimed by others, online or offline. A quick web search and domain name search will alert you to any existing use.
  • If you intend to incorporate your business, you’ll need to contact your state filing office to check whether your intended business name has already been claimed and is in use.
  • It is web-ready? – In order to claim a website address or URL, your business name needs to be unique and available. Next, check whether a domain name (or web address) is available.

You can read more tips on the SBA website here: https://www.sba.gov/content/how-name-business

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.

USPTO Fee Changes

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USPTO – United States Patent and Trademark Office

Trademark Search. Trademarks.

 Trademark Applications. USPTO

Many people are probably not aware that the United States Patent and Trademark Office is not funded by taxpayer money, rather, it is entirely funded by fees paid by patent and trademark holders. When more funds are needed for the vast array of services provided by the USPTO, fees must inevitably go up.  Therefore, it’s not surprising that the USPTO has increased service and processing fees on 42 specific trademark filings, starting January 14, 2017.

In effort to drive users towards electronic filing, the largest fee increases are on paper filings. For example:

The per-class fee for paper filing has increased to $600 from $375 for an initial filing, with increases ranging from $75 to $200 on other applicable per-class fees.

Other increases include fees for paper filings to the Trademark Trial and Appeal Board. This includes 6 fees for initiating proceedings, and 4 fees for requesting extensions for notice of opposition fillings.

In a statement posted on www.uspto.gov, the reason for the increases are as follows:

“We have made these changes to better align fees with full costs, to protect the integrity of the register by incentivizing more timely filing or examination and more efficient resolution of appeals and trials, and to promote the efficiency of the trademark process, in large part through lower-cost electronic filing options.”

In 2015, the latest available year for data, there were 709,453 total patent documents published by the USPTO. This was a new record. The number of trademark applications for the same year was 530,270, and the number of trademarks currently registered and maintained through the USPTO is more than 2.1 million. With these numbers perpetually growing, the need for streamlining and expediting the patent and trademark process is obvious.

As technology continues to progress at a breathtaking pace, the way we process and protect intellectual property must keep pace. And it is more important than ever to get the proper legal help with your patent and trademark applications. A mistake can cost you dearly and you may never get a second chance.

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.