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.

Misleading Advertising

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Misleading Advertising. Online Advertising.

Misleading Advertising. Online Advertising.

The United States Patent & Trademark Office (USPTO) is finally taking notice of the plethora of private companies (not affiliated with the USPTO) who solicit trademark applicants, with deceptive and misleading communications that look official.

BEWARE! These companies gather trademark applicant information from the USPTO database (which is public record), and solicit those applicants for money.  The offer a service, (usually one you’ve already paid for if you have a lawyer) in exchange for a fee, e.g., legal services, trademark monitoring services, US Customs and Border Protection recordation services, to name a few.

These companies will use names that look like the USPTO name, and some are so unscrupulous that they even make their communication look like an official government document.  And, if you don’t know any better, it is easy to be defrauded.  Unfortunately we live in an era when we must always be on the alert, because there are many enterprising souls just waiting to take advantage of you.

What can you do?

  1. Do NOT pay them anything;
  2. If you have a lawyer, contact them immediately;
  3. File an online consumer complaint with the Federal Trade Commission (FTC);
  4. Contact the USPTO by email (TMFeedback@uspto.gov) and include:
    • A copy of the misleading and deceptive communication with the envelope,
    • Let the USPTO know if you thought the communication was an official US government document (or if you had to ask an attorney to clarify it for you),
    • Indicate to the USPTO if you paid a fee in response to the misleading communication and for what purpose.

Protect Yourself, Protect Your Assets, Protect Your Family!

Until next time, I’m Attorney Francine Ward looking out for you.

What are your thoughts? Join the conversation on Twitter, Facebook, LinkedIn, and my website.

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.

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.