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.

Drone Trademark Filings: Droning On or Taking Flight?

In the past couple of years, drones and related legal issues surrounding drones have been hot topics. Major companies like Amazon and Google are coming up with innovative ways to use them, drone enthusiasts are forming groups and meetups, and this past holiday season, they were high on many lists. In fact, 1 in 5 people said they wanted a drone for Christmas this past holiday season, and it was estimated that 1.2 million Americans found them under the tree on Christmas morning. (How many of them were found stuck in some other tree later that day? We don’t have numbers on that.)

Meanwhile, the Federal Aviation Administration and local and state authorities have been struggling to figure out how to regulate, or how not to regulate, drone usage.

As the business world figures out how it will use drones to increase efficiencies, add a new marketing gimmick, or develop new and better content and data from overhead, drones will continue to grow in use, sales, and legal questions.  Here at Name Warden, we work with trademarks.  So we were interested in whether there had been a big uptick in drone trademark filings as new companies and new products got into the act.  We’ve pulled and parsed the USPTO data on drone trademark filings over the years, like we’ve done previously for the uptick in craft beer branding, and for vaping products.  Here’s what we found.

Drones flew into the scene earlier than you think

The first mention of “Drone” was in 1958! SN: 89000009 RADAR TRACKING AND CONTROL SYSTEM FOR COMBAT SURVEILLANCE DRONES 

Most of the filings we found from 1958 until about 1991 were for military purposes. That’s because the first drone was created for military purposes (more on that below).

Drones can do what?

We learned that the term “drone” does not necessarily refer to flying drones. Here are two examples:

  • SN: 78241320 “industrial drones for loading and unloading materials”
  • SN: 85078396 AQUA DRONE

Buzz off!

We also found filings for bee products in 1984.

SN: NATURAL BEE PRODUCT OBTAINED FROM DRONE LARVAE AND LARVAL FOODS, SOLD AS AN INTEGRAL COMPONENT OF COSMETIC PREPARATIONS, HAIR LOTIONS, AND MOUTH HYGIENE PREPARATIONS

The word drone in Old English is actually a term for the male honeybee. The first use of the term drone in aviation was in 1936. U.S. Navy Commander Delmer Fahrney was directed to develop target airplanes that were pilotless. The project was inspired by the Royal Navy’s target aircraft, “Queen Bee”. Target airplanes were used in World War II as practice targets for fighters and antiaircraft guns. In the bee world, drones have sort of a mindless existence. The naming of these Remotely Piloted Vehicles (RPVs) was a nod to that of drone honeybees, who seem to have no mind of their own.

Drones in Hollywood

Drone trademark filings for equipment used in movies started popping up in 2007. A typical product description read “Motion picture and television film production, namely, providing remote controlled drone helicopters equipped with specialized cameras for filming purposes; Aerial photography.”

Into the hands of the people

It’s not until 2010 you see marks for drone sales, in the sense that we now think of the word “drone,” in particular with filings for retail distributorship services. This is where the uptake in filings really begins. Here’s a chart showing number of filings per year from 1958 until now.

Drone-Filings

Here’s a closer look at filings starting in 2010 with the deal development of retail channels for remote-controlled “drone” aircraft.

Drone-filings

The big dip this year is because it’s early yet in 2017, with 34 filings so far in 2017 as of the date we collected our data. Combing through filings we see drones for photography, toys, education, surveillance, agricultural surveying, delivery, military use, medical purposes, accessories such as landing pads, drone camps, and catchy phrases like “Do not drink and drone.” The future of drones is wide open!

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.

A Timeline of the Epic Budweiser Trademark Dispute

Some trademark battles take years. Some decades. The trademark dispute between “The King of Beers”Budweiser trademark dispute and the “Beer of Kings”? Almost a century. The Budweiser trademark dispute has been going on for 77 years.

Budweiser Budvar Brewery was founded in 1895 by citizens of Budweis in the Czech Republic and is state-owned.

Anheuser-Busch, a brewery Americans all know very well, got its start in St. Louis in 1852. The Budweiser we all know and have likely sipped, however, was not a thing until after the 1870s when Adolphus Busch toured Europe to explore European brewing methods. He took exceptional notice of a Pilsener style beer that had become popular in Budweis, a city in the Czech Republic. In 1876, Anheuser-Busch introduced the United States to Budweiser. Because of the company’s early ability to refrigerate and transport bottled beer (something for they are known), the beer became a national beer brand. They registered Budweiser as an invented trademark with the U.S. Patent Office in 1878.

And thus began the dispute. In honor of the most recent ruling, here’s a timeline that shows just how long these two breweries have been fighting.

The Budweiser trademark dispute through the years

1896

Once Budweiser Budvar catches wind that a company in the U.S. has successfully registered Budweiser as a trademark, Budvar  argues that the Budweiser trademark should have never been allowed, because Budvar has been brewing their beer for 500 years.

During that hearing, Adolphus Busch states, “The Budweiser beer is brewed according to the Budweiser Bohemian process… The idea was simply to brew a beer similar in quality, color, flavor and taste to the beer then made at Budweis, or in Bohemia.” This statement is one that has been brought up by Budvar in the many subsequent battles.

1939: Both sides agree that Anheuser-Busch was the first to trademark the Budweiser name and Budvar concedes all territory north of Panama to the American brewer.

1989: Anheuser-Busch begins expanding internationally while Budvar decides to focus on exports. Talks begin on a trademark agreement to divide up the territory around the world.

1994: Budvar decides not to sign the trademark agreement.

1996: Anheuser-Busch registers the Budweiser name with the European Commission and Budvar challenges.

2004: The European Commission grants Budweiser Budvar N.C. with the right to use Protected Geographical Indications “Budějovické pivo” and “Českobudějovické pivo”.

2009: The European Court of First Instance upholds a ruling refusing AB InBev permission to register the Budweiser brand as its trademark. AB InBev keeps the Budweiser or Bud name in 23 of 27 European countries, including the U.K., where courts have ruled both companies can call their beer Budweiser. Budvar is granted exclusive control of the name in Germany.

2010: Anheuser-Busch InBev NV loses their appeal to register its Budweiser beer brand as a European Union-wide trademark.

2010-2011: Budvar wins 88 of 124 disputes and holds exclusive rights in 68 countries, mostly in Europe, preventing AB Inbev from selling its Budweiser brand in some key markets, including Germany.

2012: Budvar rejects an AB InBev proposal for a global settlement.

2013: The UK Supreme Court confirms that both breweries can use the mark simultaneously in the UK.

2014: Budvar loses a decision in Portugal to register its beer under the Budweiser name in the country after AB InBev purchases Budweiser trademarks in Europe from Budweiser Brewery Samson.

2016: Tribunal da Propriedade Intelectual, a Portuguese court in Lisbon, upholds the 2014 ruling prohibiting Anheuser-Busch InBev from selling beer under the Budweiser name in Portugal.

So there you have it. A trademark war that has been going on for 77 years!

What does this mean for pilsner drinkers?  If you want to drink the American version of Budweiser in Europe, you’ll have to order a “Bud” due to trademark agreements. If you want to drink a Budweiser Budvar in America, you’ll need to order a Czeckvar.  Cheers!

 

3 Things DIY Legal Sites Can Teach Trademark Lawyers

The internet is vast portal of information (and misinformation). On any given day you can pop into DIY-legal-sitesYouTube and teach yourself to garden, or knit, or fix your kitchen sink. Thanks to sites like Canva you can DIY design your own marketing materials. But what about DIY legal services?

Did you just shudder?

We all know they exist and that people use them. A lot of people, in fact. But are they a threat to the trademark lawyers of the world? The short answer: no.

DIY legal sites are not really competition for trademark lawyers because those people were probably never going to hire a trademark lawyer anyways. But there are lessons to be learned from the rise of these sites!

Lesson #1: Their pricing structure

Trademark lawyers would benefit from making their structures more simple and more transparent, so that potential clients aren’t overestimating the cost and going to a DIY legal site out of baseless price fears. Just take a look at popular DIY legal sites like LegalZoom. Their site tells visitors up front what the cost (or price range) is going to be, what the process entails, and what the deliverables are. 

Lesson #2: Their websites

DIY legal sites are sales machines. Take a cue from the genius marketing behind them. Their landing pages have pictures that allow small business owners to easily identify the fact that they are in the right place (and the right price range). Their copy is in plain language and speaks to the pain points they are experiencing (not having your brand protected). There is also a clear call to action for what to do next.

Lesson #3: Use Name Warden

The Name Warden Client Finder service was designed to help lawyers find unrepresented applicants who now have office actions, notices of allowance, or other work to do that they don’t understand because they didn’t use a lawyer for their initial filing. A great opportunity to swoop in and save the day!

They may not be direct competition, but pay attention and you may pick up some good ideas for  drawing potential DIYers over to your practice.

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.

When is it Just Not Worth the Trademark Fight?

Well intentioned trademark enforcement efforts can sometimes cause unintended collateral damage.  Even a victorious trademark fight can be accompanied by a PR nightmare. In some cases, the PR problems can cost more than a legal battle. Brand defense is a noble effort, but not if the PR damage is too great.

Take Vail Resorts’ trademark application for the words ‘Park City’, an iconic ski community.  The application resulted in outrage by the town and a costly trademark fight. After a rally of angry community members and a lot of bad press, Vail Resorts ended up withdrawing their application.

trademark-fightIn addition to bad PR, there could be significantly more financial costs to the client when it comes to a big trademark fight. For instance, bad PR could require the hiring of a PR firm to squash and spin the press. It could also end up being a long and expensive legal battle.

The Washington Redskins case was not a case of enforcement gone overboard, but it is still a prime example of how tangled and expensive a protracted trademark fight can be.  The team has been in trademark litigation since 2013 when they were asked to change their name due to its disparaging reference to Native Americans. Three years later, they’ve appealed their way to the Supreme Court and are still fighting the battle.

The Redskins have plenty of resources to continue a trademark fight of this magnitude, but does your client? There’s a fair amount to consider when it comes to defending a mark.

Here are some things to consider and discuss before starting or continuing a trademark battle.

  1. Is your trademark strategy too broad?  Remember that unless there is a real probability of consumer confusion, trademark law will not ultimately support your demand.
  2. Are you trying to capitalize on a colloquial or local term in a way that will upset the community in which your business resides?
  3. Are you trying to squash a little guy who may have made a mistake or is unaware of how their mark could be confusing?
  4. Is there a less aggressive means for your request of the other party? For example, a less formal email or a phone call.  Keep in mind that cease and desist letters are very often posted online by the recipients, inviting and inciting criticism from far and wide.

While it’s of utmost importance to ensure that your client’s trademarks are protected, it’s also important to know the risks involved in pursing a legal battle. If there’s cause to send a cease and desist, you should always assume your letter will become public and could create some backlash. Careful consideration should be made about your next steps, and strategies in place to prevent or manage collateral damage.

Vaping Trademarks : How Much Juice Remains?

If you’ve ever been walking across a parking lot and wondered “what the heck smells like marshmallows?” then you have noticed the rise of the e-cigarette or “vaping” trend. Like we did with craft beer a few months back, we decided to look into USPTO applications for vaping trademarks as an indicator of growth in the industry.

Using Name Warden’s USPTO data in goods and services, we searched applications for vaping trademarks containing any of the following key words or their plurals: vape, vaping, electronic cigarette, liquid nicotine, eliquid, and cartomizer.

Here’s what we found.

Vaping filings per year

In 1993 there were a mere two applications for vaping products. Compare that to the 3,404 in 2014. Just looking at the filing trends, it’s clear when the industry really took off. We went from 649 in 2012 to 2,404 in 2013. Business was clearly booming from 2013-2014 – with almost 4 times the filing applications for vaping products. You can also see that there has been a decline in the last couple years, suggesting slowing growth in the industry after the huge growth a few years ago.

With 2016 projected to have 2,376 filings, trends in vaping trademarks show that the vaping industry continues to add brands and products, but at a slower rate than a few years ago.