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US Supreme Court Decision Opens the Floodgate for Racially Offensive Trademarks

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By: Paul Hirsch Since the Lanham act was passed in 1946, the United States Patent and Trademark Office had rejected trademark applications that include racially offensive language and symbols, because they “disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”. In June, the US Supreme Court… Read More

By: Paul Hirsch

Since the Lanham act was passed in 1946, the United States Patent and Trademark Office had rejected trademark applications that include racially offensive language and symbols, because they “disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”. In June, the US Supreme Court ruled that racially offensive trademarks are now protected under the First Amendment.

The Supreme Court decision emerged from the case Matal v. Tam, where an Asian-American rock band attempted to trademark their band’s name as “The Slants”, language considered to be a racial slur. The band had their trademark dismissed by the USPTO  for being “disparaging” under Section 2(a) of the Lanham Act. In June, the Supreme Court unanimously agreed that Section 2(a) of the Lanham Act “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” This decision cleared the way for offensive language, such as “The Slants”, to be trademarked.

Since the Supreme Court’s ruling in Matal v. Tam, the USPTO has seen a large influx of applications to trademark racially offensive language and symbols.

For example, an African-American man named Curtis Bordenave filed a trademark application for the “N-word” the same day the Matal v. Tam decision was made. Bordenave filed to use the language in association with retail store services, namely the sale of general merchandise.His goal is keeping the “N-word” out of visible circulation because he can enforce his trademark rights against its use.

Another example is Steven Maynard, an attorney, who has filed a trademark for the swastika symbol. Maynard plans on commercializing the offensive symbol on clothing and then charging an abnormally high price for the clothing, which effectively minimizes the symbol’s visible circulation in commerce.

Federal trademark registration protects parties against the unapproved use of their trademarked brands. In these cases, that includes the use of, or profit from, privately owned racially offensive language and symbols such as the n-word and swastika. However, there are conditions to attaining and keeping a registered trademark.

Prior to registering the trademark, applicants must show that there is a relationship between the brand, the product that is branded, and the consumer connection to both. If a design or word is universal or generally used by others the US Patent and Trademark Office may dismiss the trademark registration. Thus, it will difficult for applicants like Maynard to trademark the swastika, a universally known symbol.

After a trademark is registered, the trademark must be continuously used or it will be considered to have been abandoned. A party may not register trademarks for racially offensive language and simply hide it away forever. Thus, trademark owners who intend to control the censorship of the racially offensive language in commerce must simultaneously enter the trademark into commerce at a continuous rate. This could prove difficult.

Parties who intend to trademark racially offensive language to control the message will undoubtedly face difficulties along the way. Although the US Supreme Court’s decision in Matal v. Tam has opened the floodgate for racially offensive language to be trademarked, it is still unclear how these trademarks will be handled by the US Patent and Trademark Office. We may not have an answer anytime soon, as trademarks are normally not decided upon immediately, and may take years to approve or deny.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article

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To License or Not to License: Guidance for Documentary Filmmakers

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By: Brandon Shelton If you remember the early aughts and the Napster era of file sharing, then you are well aware of the widespread legal battles filmmakers and music producers have waged to protect their right to profit off of their works. However, if you’re a filmmaker just starting out in the documentary genre, it… Read More

By: Brandon Shelton

If you remember the early aughts and the Napster era of file sharing, then you are well aware of the widespread legal battles filmmakers and music producers have waged to protect their right to profit off of their works. However, if you’re a filmmaker just starting out in the documentary genre, it might occur to you to use footage, sound, or music produced by someone else. In such a case, you could be staring down a long list of needed licenses to copy and use such footage. By now you are probably wondering: “What about my First Amendment!?” To a degree, you’d be right—the First Amendment is the basis behind allowing some copying for critical works, a category to which documentary films clearly apply. However, the macro approach of assuming that the work overall absolves you of any licensing requirements is somewhat misguided.

The U.S. Copyright Act explicitly provides a “fair use” exception, which allows you to use prior works for the purpose of “criticism, comment, news reporting, teaching…, scholarship, or research.” 17 U.S.C. § 107. This exception is what allows you to do some license-free copying necessary to produce a documentary. However, not every aspect of your documentary will necessarily fit within this exception. Compare, for example, footage of Elvis Presley dancing while singing his music with added commentary explaining how his dance moves created controversy, versus a scene showing B-roll in a jailhouse during a documentary about Al Capone’s stay in Alcatraz while playing Jailhouse Rock in the background. In the first example, you are providing some instruction or critique of the music and the video. In the second, the relationship between your informative position and the work itself becomes much more tenuous. One clearly has a better fair use argument than the other. That being said, the line isn’t always clear, and the fair use protection provided by courts can differ from state to state.

As you create any film, you should always be aware of the works you are using and the licensing requirements that come along with them. In fact, if you ever plan to show a film anywhere, you will likely need Errors and Omissions (E&O) insurance, and the E&O providers are going to require either proof of a license, or a solid fair use analysis. In other words, the need for licensing and fair use analyses is a bridge you will have to cross to show your filmmaking genius to the world. That being said, don’t be afraid to try to seek out a license. If you believe in your work, stand by it, push through, and eventually, you will have created something to be proud of.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Thinking Like an Examining Attorney

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By: Vivek Vaidya When you apply to register a trademark with the United States Patent and Trademark Office (USPTO), an examining attorney is assigned to your application and decides whether or not to allow the registration.  They will consider if the registration should be barred because of a host of trademark law issues, the most… Read More

By: Vivek Vaidya

When you apply to register a trademark with the United States Patent and Trademark Office (USPTO), an examining attorney is assigned to your application and decides whether or not to allow the registration.  They will consider if the registration should be barred because of a host of trademark law issues, the most basic being if another mark is registered that looks or sounds similar and/or is involved with a similar stream of commerce.

That is why it is important to think like an examining officer.  Instead of using and applying for a mark that cannot be registered, it is best to be proactive when deciding what mark to use when starting a business and when going through the registration process.  Before filing a trademark application, you should perform as rigorous a search for conflicting marks as the USPTO examining attorney. Consulting with a trained attorney during this search process, and working with an attorney to analyze the viability of the mark based on trademark law, can often end trademark disputes before they arise and ensure a seamless registration rather than applying to register a mark that will only cause headaches later.

Once a mark is chosen, you must file an application with the USPTO.  The application contains many questions about the business, including making a determination of what class(es) to register in and an appropriate description of the goods or services that the mark is associated with.

After an application is filed, an examining attorney will analyze the application. The examining attorney relies on the Trademark Manual of Examining Procedure (TMEP) for guidance and decides whether or not to allow the registration.  If the examiner rejects an application for any reason, the examining attorney will issue an office action letter laying out their objections.

Responding to office actions requires a deep understanding of trademark law and USPTO process. Typically applicants hire experienced attorneys to handle office action responses.

If the examining officer decides that either the trademark should be registered straight out of the gate or the objections in an office action are remedied, the mark is published under a federal publication called the Official Gazette for a period of time.  This publication provides notice to others that the mark is to be registered, and it gives them an opportunity to oppose the registration. If there are no oppositions, the USPTO will register the mark, and mail you a certificate of registration. At this point, you will officially own a federally registered trademark, and all the benefits that come along with it.

Need some help thinking like an examining attorney?  Contact Bend Law Group, PC for all your trademark needs at (415) 633-6841 or info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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The Silver Lining of the GDPR for Ad-Tech Companies

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By: Vivek Vaidya The General Data Protection Regulation (GDPR) went into effect in May of 2018 and has caused internet businesses with European Union users to shift their data collection, storage, and usage practices.  The spirit of the GDPR is to give individuals greater control of their data in a world in which practically all… Read More

By: Vivek Vaidya

The General Data Protection Regulation (GDPR) went into effect in May of 2018 and has caused internet businesses with European Union users to shift their data collection, storage, and usage practices.  The spirit of the GDPR is to give individuals greater control of their data in a world in which practically all computer devices are connected and some estimate the internet of things to be a $9 billion industry by 2020.  The EU has recognized that it is important that users be able to control the valuable information they provide on the internet, especially in light of how often regular internet users input personal information.

Amongst the requirements of the GDRP is that data is collected in accordance with one of the following justifications: (1) with the consent of the user; (2) in performance of a contract with the user; (3) in order to comply with law; (4) for the purpose of health and safety; (5) to perform an official governmental function; or (6) based on the legitimate interests of an organization or third party.  For ad-tech companies who do not have a prior business relationship with the user, consent is the primary justification for processing personal information. Another requirement of note is that websites, apps, and online platforms be able to provide users with their data upon their request, and also delete data upon request.

The GDPR particularly affects ad-tech businesses that base their marketing practices on third-party data used to target consumers.  The inability of websites to share data is causing them to rethink their customer service, communication, and business strategies. Online marketers are no longer able to chase users around the internet with a bombardment of the same advertisements.

There have been different approaches by ad-tech companies for shifting their behavior while remaining relevant and complaint.  One is a hands-off approach, where companies have stopped collecting and handling personally identifiable information for users located in the European Union, which obviously hurts a company’s bottom line. A second approach has been to rely on the GDPR’s exemption of collecting data for a “legitimate business purpose,” which includes requested marketing, fraud prevention, and sometimes market research.  A third approach is the passive approach of hoping that the EU only goes after big players in the tech industry, and will have to make concessions and changes to the GDPR before going after the smaller fish.

Companies can still collect cookie-less data like keywords and search data and be GDPR compliant, which highlights the importance of creating a trustworthy relationship with users.  This type of first-party data, or data that the consumers have directly provided through a company’s website, should be prioritized in marketing efforts.

The GDPR is persuading many businesses to provide the same rights to all users, including those outside the EU, because of the momentum towards similar data privacy regulations in other jurisdictions.  However, it is important to realize that the GDPR does not consist of static regulations. Over the next months and years, there will be challenges and changes to the regulations, so it will be interesting to see how the EU changes the regulations and  publishes clarifications to vague and ambiguous portions of the law.

Overall, the GDPR requires businesses to move away from third party data collection and marketing campaigns based on this data, a practice that regularly annoys customers.  While this may seem like a hindrance on marketing efforts, the silver lining is that the regulations present an opportunity to create a unique value exchange with consumers that leads to more consumer trust and better bottom line results.  Companies that send too many irrelevant marketing materials and create bad customer service interactions are more likely to be contacted by consumers with burdensome GDPR information requests, so it is important to create relationships with users that make them feel comfortable providing first-party data and consent to receiving marketing materials.

The post-GDPR world means that ad-tech companies need to be more open and stop sales tactics that irritate consumers.  One positive effect of the GDPR is that companies are being forced to be more open, deliver more value, and enhance their relationship with consumers.  It should cause a constructive impetus for improvements across the tech industry, and companies that bear this in mind will do well to grow their bottom line.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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International Trademark Registrations and The Madrid Protocol

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By: Vivek Vaidya While federal trademark registration with the United States Patent and Trademark Office provides protection for business activities in the United States, companies that offer products and services internationally should look to register in each of the countries they perform commerce.  Filing applications in multiple countries would be extremely tedious, but luckily an… Read More

By: Vivek Vaidya

While federal trademark registration with the United States Patent and Trademark Office provides protection for business activities in the United States, companies that offer products and services internationally should look to register in each of the countries they perform commerce.  Filing applications in multiple countries would be extremely tedious, but luckily an easier way exists: The Madrid Protocol for International Registration of Trademarks. The Madrid Protocol provides an efficient way for federal trademark owners to protect their trademarks in multiple countries though a single application that is processed by their home country’s trademark office.

HOW TO APPLY

An individual or entity seeking international trademark registration through the Madrid Protocol is required to register their trademark with a country’s trademark office that has agreed to be part of the Protocol.  Generally, one may register in a country’s trademark office if its entity was formed there, or if an individual is a citizen/domiciled in the country. The next step is to submit an international application through this same trademark office, which will certify and forward the application to the World Intellectual Property Organization (“WIPO”).  An international registration application can be filed in English, French or Spanish, and includes filings fees amounting to one a basic fee, a fee for each class of goods/services if filing in excess of three classes, and an additional fee for each country in which registration is sought.

APPLICATION EXAMINATION

Once the International Bureau of WIPO receives your international application, WIPO will conduct a formal examination of your international application. If WIPO approves the application, then the mark will be recorded in the International register and it will be published in the WIPO Gazette of International Marks.

Next, the individual trademark offices of the applied for countries will conduct a substantive examination to determine the scope of protection according to their domestic legislation. WIPO has no control over the national trademark offices’ decisions regarding the scope of the protection, therefore the national offices decide the scope of your trademark protection in their country. Once the national trademark office makes their decision, WIPO will record the decisions of these offices and record them in the International Register.  An international trademark registration is effective for 10 years and it can be renewed for 10-year periods. The effects of an international registration start from the date of the international registration in each country that protection was sought.

I WANT TO REGISTER MY TRADEMARKS INTERNATIONALLY. WHAT NOW?

If you have questions or would like to learn more, please give us a call at (415) 633-6841, or email us at info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Intellectual Property Basics for Cannabis

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By: Vivek Vaidya There is no denying that the cannabis industry is growing rapidly, with many states allowing medicinal and/or recreational use. Interesting and innovative brands have emerged as a result of this decriminalizing of cannabis. Like other brands, cannabis brands are looking for ways to protect their intellectual property (“IP”). However, unlike other brands,… Read More

By: Vivek Vaidya

There is no denying that the cannabis industry is growing rapidly, with many states allowing medicinal and/or recreational use. Interesting and innovative brands have emerged as a result of this decriminalizing of cannabis. Like other brands, cannabis brands are looking for ways to protect their intellectual property (“IP”). However, unlike other brands, cannabis is not legal on the federal level, and not every state has enacted laws permitting medicinal or recreational use. Even if a particular state has enacted legislation permitting medicinal and/or recreational use, those laws differ from other states’ laws on the subject. This creates a very confusing legal environment to navigate for cannabis brands trying to protect their IP. This article offers a brief survey of the available IP protections for cannabis brands.

Trademark/Trade Dress

It is possible for cannabis brands to obtain trademark/trade dress protection for marks that relate to cannabis, but not for products that contain cannabis. For example, in Trans-High Corporation Inc. v. Sharik Kerawala et al., No. 4:14-cv-00752 (E.D. Texas 2014), High Times magazine, a popular marijuana lifestyle magazine, sued a Texas business for trademark infringement stop its use of “High Times Lifestyle” and “High Times Smokeshop” in association with marijuana-themed retail and online stores. The court issued an injunction and damages in favor of High Times in 2015.

However, the United States Patent and Trademark Office (“USPTO”) does not permit registration of products that contain cannabis. While cannabis strains and other cannabis products have custom effects that may identify their source in the eyes of the consumer, the Lanham Act Section 1052 (a) bars registration of immoral or scandalous materials. This includes cannabis, which is still a Schedule I drug under the Controlled Substances Act. Even though marijuana trademarks cannot be registered with the USPTO, it is advisable for cannabis brands to perform due diligence to ensure that their mark does is not similar to another mark in the cannabis industry because of state trademark registrations and common law trademark rights as discussed below.

One option for cannabis brands and dispensaries is to register your mark with the state in which you conduct business (assuming your brand is sold in a state in which cannabis sales are legal and your state allows registration). This is less expensive than federal registration, but state registration only protects a trademark in the particular state in which you register. However, it is important to be aware that many states have similar morality clauses as the Lanham Act and therefore will not allow registration. Moreover, famous strains and other cannabis products could be so common that they are considered generic, which leaves them unprotected under trademark law.

Another way to protect your mark is to simply use the mark in commerce, which affords you what is called common law rights. These trademark rights are limited to the geographic area in which they are used in business. It is important to maintain detailed books and records of usage to negate or assert any claims for or against your common law trademark rights.

Copyright

Copyright registration is another option for cannabis brands to protect their IP. Unlike federal trademarks, the Copyright Act contains no prohibitions on the subject matter of the works subject to copyright protection. Creative works used by cannabis brands such a illustrations or photographs can be protected by copyright law. This adds an additional enforcement mechanism and could entitle you to statutory damages under the Copyright Act.

Patent

The future is unclear as to whether patents can protect cannabis strains, methods of growth and assembly. The USPTO has repeatedly rejected cannabis related filings for similar reasons as the Lanham Act, namely because they are scandalous or immoral. However, the USPTO has issued patents for smoking devices used for marijuana and the Patent Act, like the Copyright Act, does not contain a morality clause. Companies are already rushing to file patents in this cutting edge area, examples of which are renowned cannabis cultivator Ben Holmes’ Otto II strain. However, if history tells us anything, the USPTO will likely reject these cannabis related patents for the reasons they have in the past, namely that they are scandalous or immoral.

Trade Secret
Until the USPTO takes a clear stance on cannabis patents, the best way to protect cannabis products and methods of growth is trade secret law. Like state trademark registrations, state law governs trade secrets. Trade secret law protects information of economic value that is not generally known or readily ascertainable to the public, as long as you have taken sufficiently reasonable efforts to keep a secret. There are no formal applications; you just need to take reasonable efforts to keep the information a secret. Employee confidentiality agreements and NDAs are examples of ways trade secret law can protect cannabis brands.

If you are involved with the cannabis industry and would like to discuss protecting your IP, please give us a call at (415) 439-0153, or email us at info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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How to Identify My Trademarks

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By: Vivek Vaidya Building a strong reputation for the goods and services you provide does not happen overnight.  It takes dedication and hard work to develop your brand and customer base, and that is why identifying and protecting your trademark is vital to the growth of your business. A trademark is a set of words,… Read More

By: Vivek Vaidya

Building a strong reputation for the goods and services you provide does not happen overnight.  It takes dedication and hard work to develop your brand and customer base, and that is why identifying and protecting your trademark is vital to the growth of your business.

A trademark is a set of words, a logo, or a slogan that the consuming public comes to associate with your products or services.  When a customer sees your trademark, it conjures the entire experience they had when dealing with you or your company: the quality of the goods and services, the people they dealt with, the tone of the experience, and intangible gut feeling they have about the brand.  Even potential customers who have yet to use your products or services may have an impression about your brand through exposure to marketing or hearing others’ reviews. Trademarks are critical to any business because the goodwill they represent has tangible value. It allows consumers to make quicker decisions about where to direct their resources, which means a business with a strong trademark will have steady and growing revenue.  In short, everything your brand stands for is represented by a simple trademark.

There are various types of trademarks, but the most basic are the following:

Word Mark

A word or collection of words that are used in association with your products or services, often seen in advertisements or on products/product packaging.

Slogan

A phrase, often used in tandem with a word mark or a logo, that is displayed in conjunction with your products or services.

Logo

A distinctive design that is used in connection with your products or services.

Using marks in the three categories above allows you to grow the goodwill between consumers and your brand.  By establishing a trademark, you can prevent competitors from using the exact mark, or any confusingly similar marks.  Registering trademarks with the United States Patent and Trademark Office (USPTO) is the best way to protect your trademark, and is essential for any serious brand.  To learn more about protecting your trademarks, contact Bend Law Group, PC at (415) 633-6841 or info@bendlawoffice.com. 

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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