The Slants Trademark, The Lanham Act, and What it Means

“One man’s vulgarity is another mans lyric” quoth the 1971 U.S. Supreme Court free-speech case.

That 1971 free speech ruling is what came to mind when the U.S. Supreme Court delivered their ruling in Matal v. Tam. This Supreme Court battle was an appeal to reverse the USPTO’s decision to deny the trademark application for the mark “The Slants”. Registration for the Slants trademark was refused by the USPTO for violating the Lanham Act’s disparagement clause. The Supreme Court ruled that ultimately the government may not refuse to register potentially offensive names.

According to Justice Samuel A. Alito Jr., “We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The Supreme Court unanimously declared that the Lanham Act’s disparagement clause was unconstitutional. The clause prohibited the registration of any mark that may “disparage  … or bring … into contemp[t] or disrepute” any person, institution, belief, or national symbol.

Now that the clause has been ruled unconstitutional, there are a lot of questions surrounding what it could mean for future and current trademark applications. In fact, prior to the ruling, a number of trademark applications were suspended by the USPTO pending resolution for this case.

What this ruling could mean

There are several ways this ruling could impact the IP world.

  1. The Redskins will probably be able to get their trademark registrations back.
  2. We might see an up-tick in applications to register rude and crude marks.
  3. The restrictions that have been placed on marijuana related trademarks may be called into question, but seem unlikely to change. Refusal still seems lawful for those marks, since marijuana is still illegal under federal law.

Here’s the bottom line: The Supreme Court is firm on the belief that the government should not decide what is moral, immoral or offensive when it comes to private speech. Restricting trademarks on the basis of government opinion would violate the First Amendment to the U.S. Constitution.

High Hopes Blunted for Marijuana Trademarks

It’s a better time than ever to sell weed.  The past few years have been exciting for marijuana entrepreneurs. Since medical marijuana-related-trademarkmarijuana is now legal in 28 states, cannabusiness has been booming. But being in the marijuana business is not exactly easy street. While it may be lawful in your state to own and run a marijuana business, federally registering marijuana trademarks is not. Pot is still on the federal DEA Schedule I of controlled substances, and the USPTO is governed by federal law.

Marijuana Under Federal Law

According to the Controlled Substances Act, “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under the CSA.” This is why the USPTO has consistently refused to register marijuana related trademarks.

For example, the USPTO denied the marijuana related trademark application of JUJU JOINTS. The denial was based on the “lack of lawful use of the mark in commerce under Sections 1 and 45 the Trademark Act, 15 U.S.C. §§ 1051, 1127.”

The attempt to trademark “Herbal Access” under goods for use with “retail store services featuring herbs” is another example. This marijuana related trademark was an attempt to use “Herbal” to describe marijuana. According to Law 360, “the Trademark Trial and Appeal Board agreed with trademark office that the services were ‘unlawful’ and refused the application.”

The USPTO is on (ahem) high alert.  Some non-marijuana trademarks have been denied because they appeared to be marijuana related. One example is the mark “THCTEA” for use with tea-based beverages. THC was meant to be an abbreviation for “Tea Honey Care” and did not contain any marijuana. The mark was denied because the initials suggest the abbreviation for tetrahydrocannabinol (the active chemical in marijuana). The USPTO cited Section 2(e)(1) of the Lanham Act, stating that the mark was “deceptively misdescriptive.”

Acceptable Marijuana Related Trademarks

So what does fly high with the USPTO? The USPTO has granted approval for some ancillary products and services. The USPTO approved these  because the products and services themselves do not contain or facilitate the use of marijuana.

Examples of these approved marijuana-related trademarks are:

  • Technology and tools for the industry
  • Marijuana based news like “High CBD Veda Chews” or “Medical Jane”
  • Cannabis consultancies like “Just Say Yes”
  • Medical marijuana medical referral services like “Dr. Ganja”
  • Marijuana related apparel like “The Marijuana Company”

And marijuana-related patents have been approved in the name of innovation and research. For example, the patent given to Biotech Institute in California for “specialty cannabis plants, compositions and methods for making and using said cannabis plants and compositions derived thereof.”

For those who deal directly in marijuana products, all hope is not lost. Common law trademark rights still protect business owners from others who may infringe, however only within the state.  There are also state registries that can provide some level of protection, though with much more limited geography.

Watch What You Tweet: Hashtag Trademarks are Soaring

The 2016 Summer Olympics was a wake-up call to marketers and business owners who thought they hashtag-trademarkscould get in on the Olympic buzz by using the popular Olympic hashtags on social media. They may have joined the conversation, but they probably also found a cease and desist letter or email for using trademarked hashtags on their business social media accounts. That’s right, hashtag trademarks are a thing.

2016 is not the first year that hashtags have been trademarked, but it seemed like the first major instance of a hashtag trademark owner cracking down. This piqued our curiosity, so we looked into the filing trends for terms starting with the pound sign (#). We found filings all the way back to 1963! No, they weren’t using hashtags in 1963, those filings were for terms like #1, and a few were for items like #$!? (cartoon cursing?).

The first online use of the pound sign was in the 1990s by IRC (Internet Relay Chat) users. It was used to categorize items into groups. The hashtag as we know it now was invented in 2007 by Chris Messina, who suggested that the symbol be used to organize groups on Twitter. The tweet looked like this:

?how do you feel about using # (pound) for groups. As in #barcamp [msg]??

The purpose was to organize and gather discussions going on at a technology event called Barcamp.

The hashtag has since been used by most of the social media platforms out there and is an important part of every business’ marketing strategy – hence the reason people started trademarking hashtags.

We wanted to see the trademark trends for hashtags so we limited our search to # followed by a letter (to remove all of the non-hashtag “#1” type things), and cut the timeline to 2007. Here’s what we found.

hashtag-trademarks

There have been 452 hashtag terms filed through Day 251 out of 366 days in 2016. If we take that out to the full year, we are on pace for 659 in 2016. Here are some hashtags you might recognize:

  • #Girlboss
  • #HowDoYouKFC
  • #BeYou
  • #RunThisTown
  • #SupportLocal
  • #WalmartElves
  • AT&T Presents #BeTheFan
  • #SrirachaGouda
  • Playboy #Generation
  • #LikeAGirl
  • #IceBucketChallenge (also #ALSIceBucketChallenge)
  • #ThrowbackThursday
  • #CokeCanPics
  • #SmileWithACoke
  • #LifeonMars
  • #RioReady
  • #LoveIsLove
  • #BlackLivesMatter
  • #PaylessShoeSource

It’s clear that hashtag trademarks are becoming more prevalent so watch what you hashtag and make sure your clients start trademarking their own branded hashtags.

Soda Pop, Chocolate, and Product Configuration Trademarks

In our last post, we looked a colors of products or packaging as potential trademarks that can be protected for certain brands.  This time, let’s consider products themselves.  Not the packaging of the products or the colors used in advertising, but the things themselves.  When can the shape of the thing carry trademark rights for its sellers, […]

Washington Skins? Washington Pigskins? Redskins Trademark Contingencies or Trolling?

A lawyer listing no client applied for trademark registrations for “Washington Skins” and “Washington Pigskins” around 3:30 in the afternoon on June 18.  That was the same day the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board cancelled the team’s registration for the Redskins trademark registration, finding it disparaging.

The services claimed by the applications, for use under the trademarks “Washington Skins” or “Washington Pigskins” is “Entertainment in the nature of football games.”

A California lawyer who describes himself on his web site as a general practitioner and plaintiff’s injury attorney is the applicant for registration of these two variations on the Redskins trademark.

The applications do not claim any current use of the marks “Washington Skins” or “Washington Pigskins,” but the applicant lawyer professed “a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the identified goods and/or services.”

So the question is whether these “Washington Skins” or “Washington Pigskins” applications were done on behalf of the team, or were filed without the team’s involvement.  If the applicant attorney is filing not on behalf of the NFL franchise, it makes one wonder whether he is planning to hold the marks for monetary gain by inserting his applications ahead of any that the team might file for these variations on the Redskins trademark.

Here is the data from the applications:

___________________

For the WASHINGTON SKINS mark:

To the Commissioner for Trademarks:

MARK: Washington Skins (Standard Characters, see mark)
The literal element of the mark consists of Washington Skins.
The mark consists of standard characters, without claim to any particular font, style, size, or color.

The applicant, Ronald H. Blumberg, a citizen of United States, having an address of 
      137 N Acacia Abe
      Solana Beach, California 92075
      United States
requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following: 

For specific filing basis information for each item, you must view the display within the Input Table. 
       International Class 041:  Entertainment in the nature of football games
Intent to Use: The applicant has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

The applicant’s current Correspondence Information:
      Ronald H. Blumberg
      137 N Acacia Abe
      Solana Beach, California 92075
      858-509-0600(phone)
      rhb@blumberglawgroup.com (authorized)


A fee payment in the amount of $325 has been submitted with the application, representing payment for 1 class(es). 

Declaration

The signatory believes that: if the applicant is filing the application under 15 U.S.C. Section 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant’s related company or licensee is using the mark in commerce on or in connection with the goods/services in the application, and such use by the applicant’s related company or licensee inures to the benefit of the applicant; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed an application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the goods/services in the application. The signatory believes that to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

Declaration Signature 

Signature: /Ronald H Blumberg/   Date: 06/18/2014
Signatory’s Name: Ronald H. Blumberg
Signatory’s Position: Owner
RAM Sale Number: 86313384
RAM Accounting Date: 06/19/2014

________________________________________

For the WASHINGTON PIGSKINS mark:

To the Commissioner for Trademarks:

MARK: Washington Pigskins (Standard Characters, see mark)
The literal element of the mark consists of Washington Pigskins.
The mark consists of standard characters, without claim to any particular font, style, size, or color.

The applicant, Ronald H. Blumberg, a citizen of United States, having an address of
137 N Acacia Ave
Solana Beach, California 92075
United States
requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

For specific filing basis information for each item, you must view the display within the Input Table.
International Class 041: Entertainment in the nature of football games
Intent to Use: The applicant has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

The applicant’s current Correspondence Information:
Ronald H. Blumberg
137 N Acacia Ave
Solana Beach, California 92075
858-509-0600(phone)
rhb@blumberglawgroup.com (authorized)

A fee payment in the amount of $325 has been submitted with the application, representing payment for 1 class(es).

Declaration

The signatory believes that: if the applicant is filing the application under 15 U.S.C. Section 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant’s related company or licensee is using the mark in commerce on or in connection with the goods/services in the application, and such use by the applicant’s related company or licensee inures to the benefit of the applicant; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed an application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the goods/services in the application. The signatory believes that to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

Declaration Signature

Signature: /Ronald H Blumberg/ Date: 06/18/2014
Signatory’s Name: Ronald H. Blumberg
Signatory’s Position: Owner
RAM Sale Number: 86313435
RAM Accounting Date: 06/19/2014

 


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