The recent U.S. Supreme Court decision in Iancu v. Brunetti will likely not be the last word on the subject of scandalous trademarks being granted registration. That certainly suggests there is room for further interpretation in the future, especially if Congress elects to amend the Lanham Act. Further, four Justices voiced some degree of concern about scandalous marks being granted registration.
This post is for those who gain pleasure from tidying up. It’s springtime here in DC, so let’s roll up our sleeves and declutter! Your trademark portfolio, that is. You’ll gain a sense of accomplishment AND you can humble-brag about your magical money-saving skills.
As the proud owner of a trademark, you will encounter a number of situations that may prompt you or your company to consider granting a trademark license. Navigating the process of selecting a mark, conducting a trademark search and securing a trademark registration is no small feat. Now that you have accomplished these goals, it is important to make sure you are getting the most out of your investment of time, energy and money. A trademark license may be the most effective way to ensure that your trademark rights primarily benefit you and not a third party.
Businesses operating in the European Union may be familiar with the concept of “seniority.” By claiming seniority, an owner of an EU trademark registration may be able to claim prior rights based on existing national trademark registrations in EU member countries. To illustrate when a business might claim seniority, take the following example:
What? A trademark lawyer suggesting that you needn’t always conduct a full-scale trademark search before you file a new trademark application? Isn’t that tantamount to driving without a seat belt? Hear us out.
Our followers know that we get a little giddy at the prospect of registering trademarks. It’s almost as much fun as deep-fried Twinkies! (Um, make that “Twinkies® brand sponge cakes.”) So why are we posting about reasons NOT to register your mark? Well, although we love global brands, you may sometimes be better off skipping or delaying those new applications. Consider, for example, the following:
- How long will you continue to use the brand? If you will only use the mark for a short time, or in a limited geographical area, maybe it’s not worth spending the money on registration. You might even stop using the brand before the application matures to registration!
- Is your industry brand-focused? In some industries, brands can be (gasp!) a little less important. If your competitors don’t tend to copy your brand names, consider applying to register only your most important brand names.
- Might the Trademark Office consider the mark descriptive? If you’re at risk of a refusal to register the mark on descriptiveness grounds, you might refrain from applying, or wait until after you have used the mark for five years.
- Is there a crowded field of similar marks? If you’re not keen on trying to persuade the Trademark Office to withdraw a refusal to register your mark on the ground of confusion with five prior third-party registrations (ugh), maybe your resources would be better spent on something other than a new application…like finding a new brand?
- Is there a compelling reason to register the mark now? In some cases, if you’ve been using an unregistered brand for a while, maybe there’s no need to disrupt the status quo, particularly if the brand isn’t especially valuable or distinctive, you’re facing serious registrability hurdles, and there’s no infringement you need to stamp out. Why call attention to yourself and invite oppositions when no confusion has arisen in the real-world marketplace?
Of course, the above considerations may not apply in every case. If a brand’s importance is increasing, you’re entering new territories, or you have infringement concerns, it’s often a good idea to conduct searches and file applications. Just wanted to share some (fat-free) food for thought before you rush into filing globally!
As we mentioned last month in our kickoff post on this topic, we are excited to dive deeper into the world of sweepstakes and promotions law. This post explores several key elements to keep in mind when formulating the official rules and abbreviated rules for a promotion.
The main goal of the official rules in any promotion is two-fold: (a) to inform participants and the public regarding the details of the promotion, and (b) to comply with a series of federal and state laws and regulations. Both of these goals are critical – no company wants to face either disgruntled participants or angry regulators.
The rules must be in place and finalized before the promotion begins. If you are running a U.S.-based sweepstakes with a total prize value of over $5,000, you may also be required to register and bond the promotion with various state agencies up to thirty days before the promotion begins. Registration will require you to submit a copy of the promotion rules, so keep in mind that in those cases, the rules must be finalized at least thirty days before the beginning of the promotion. That means the clock is ticking! Depending on the type of promotion, other state laws and regulations may also be implicated, so be sure to check well before the beginning of the promotion. Continue reading
US trademark aficionados know that US registrations depicting logos in black and white allow the trademark owner to display the registered mark in any color. Filing in black and white is often a good way to achieve broader protection in the States, and it helps avoid your having to file a new application if you change the color of your logo in the future. The next time you want to protect your logo outside the USA, however, pause before you send that email to local counsel or submit your Madrid Protocol application depicting the logo in black and white. It’s not safe to assume that a black-and-white registration outside the USA confers “universal” protection for a mark displayed in any color.
To elaborate: counsel in a number of jurisdictions have informed us that black-and-white registrations may not protect marks displayed in any color. We’ve heard this from the EU, Kazakhstan, and Thailand, among other places – though you will of course want to check this with your own local counsel, since this is a fact-specific issue. Worse yet, black-and-white registrations outside the USA may be subject to attack on non-use grounds if the trademark isn’t used in black and white. (How often does that happen?!)
We haven’t run across a treatise or other resource that drills down to this level of trademark nerddom, so this might be a good topic to add to the next edition of the Country Guides (accessible to members of the International Trademark Association). In the meantime – now you’re equipped to ask some more pre-filing questions, to help ensure that your future logo applications will achieve maximum protection.
As we proudly admit on this blog’s “About Us” page, we’re passionate about all things brand related – and what better way to promote your brand than by running a sweepstakes or contest? At a time when we are seeing the “gamification” of every part of our lives, it should come as no surprise to see that many brands now include prizes and rewards as a significant component of their consumer outreach. Where once upon a time this was a niche explored by only a handful of large companies or fly-by-night operators, today, prize promotions are seen by many of our clients as among their most effective forms of advertising.
The concept is wonderfully simple: in a prize promotion, someone enters the promotion, and someone wins a prize. Yet this basic formulation encompasses a nearly endless number of variations, including sweepstakes, contests, games, trade promotions, sales incentives and viral engagement. Some of these variants are legal; some are not. And because we have been so passionate about sweepstakes and contests for so long, we’ve decided to explain the basics in a helpful, multi-post series on the topic. There’s a lot of nuance, and it would be impossible to cover it all in one place, but we think that once we’re done you’ll be as excited about this area of the law as we are. Continue reading
On January 18, the Supreme Court will conduct oral argument in Lee v. Tam, a much-discussed case presenting a First Amendment challenge to the disparagement provision of Section 2(a) of the Lanham Act. The Supreme Court is reviewing a Federal Circuit en banc decision that the disparagement provision is unconstitutional. Later that day, the American University College of Law Program on Information Justice and Intellectual Property (PIJIP) will be hosting and webcasting a live panel discussion of the Supreme Court argument.
Drinker Biddle partner Jesse Witten will participate in the panel, along with other attorneys for the parties and amici. Mr. Witten filed an amicus brief on behalf of Amanda Blackhorse and other Native American individuals who have sought cancellation of the trademark registrations of the Washington NFL team.
You are invited to attend the panel discussion or to watch the event live by webinar. The discussion will occur from 4:15 to 5:15 p.m., Eastern, on January 18 at 4300 Nebraska Ave., NW, Washington, D.C., followed by a reception. For more information, please visit the PIJIP website: http://www.pijip.org/tam/