Coping with the New Reality of Vulgar Trademarks

The last ban against vulgar trademarks fell recently. The U.S. Supreme Court struck down the ban on trademarking immoral and scandalous material on the ground that it was a form of discrimination against a viewpoint, which violates the First Amendment. The U.S. Supreme Court previously held that the ban on trademarking disparaging material also violated the First Amendment.

With respect to immoral and scandalous material, there are currently about 202 pending trademark and service mark applications that are for or contain the F’Word. With respect to disparaging material, there are 10 pending applications for the N’Word, and 4 pending applications for the C’Word. Not surprising that a majority of these applications identify clothing as the applied for goods.

As consumers we hold the trump card to these vulgar trademarks; namely, we don’t need to support them by purchasing the goods or services associated with the vulgar mark. But this option gives little solace to those groups of individuals that are subject to slurs and stereotypes. It does not help me when I am walking with my young daughter and have to explain to her why someone has the F’Word on their t-shirt. Unfortunately, there is no perfect solution for everyone, but there is for certain groups and that solution is to own the word.

For example, the National Organization for Women should apply for the C’Word in connection with as many goods and services for which it can support use. The National Action Network should apply for the N’Word in connection with as many goods and services for which it can support use. An Evangelical church should apply for the F’Word, although that ship has probably sailed given the large number of pending applications for the F’Word. By owning these words as trademarks, these organizations and others can enforce those rights against others that may use the words in a trademark sense. After all, someone now is entitled to own these vulgar words and have the exclusive right to use them in commerce.

In fact, the Supreme Court’s decision could have just paved the way for a new organization bent on controlling vulgar speech applying for and ultimately owning a large portfolio of vulgar trademarks. This possibility exists because the organization does not have to engage in large scale production of a good or service in order to maintain rights in a trademark or service mark. The legal requirement is that consumers associate the mark with the goods or services, but there is no required number of consumers. The Courts have said the number needs to be more than insubstantial and more than negligible.

The Supreme Court could have created a situation where one party controls vulgar trademarks whereas before no one could exclusively own a vulgar trademark.

Three Tips for Reviewing Search Results with Broad Descriptions

The USPTO’s Acceptable Identifications Manual has been a blessing and a curse. It is a blessing because trademark applicants can find pre-approved goods or services description that accurately covers their actual goods or services, which eliminates one potential Office Action (i.e., registration refusal) the Trademark Office could issue against a pending trademark application. However, the Trademark Office has pre-approved some very broad descriptions.

In the software context, two of the broad descriptions are “computer software consultancy” and “downloadable software development kits (SDK).” These descriptions cover many fields for and functionality of the actual software. In the advertising context, there is a description of “advertising services.” This too covers a lot of ground. Nevertheless, trademark applicants routinely use these descriptions. In fact, a majority of trademark attorneys start with a pre-approved description and resort to crafting a manual description only if no legitimate option from the Acceptable Identifications Manual exists.

As trademark searchers, we know that the Trademark Office’s likelihood of confusion analysis is limited to the goods and services descriptions used in the application. And we also know that we need to use broad descriptions when we search even though this strategy may return a significant number of results to review. Here are three tips for reviewing results that include broad descriptions like “advertising services”:

  1. Look at the marks first. If the marks are similar, then look at the goods or services descriptions.
  2. If the goods or services descriptions are broad, then search the Internet to determine what goods or services the trademark owner is actually offering.
  3. If the goods or services the trademark owner is actually offering are similar to what you or your client is offering, put that mark in the “no” column. However, if the actual goods or services are different than what you or your client is offering, then put that mark in the “yes” column with an asterisk. The caveat is that the broad description used by the prior trademark owner may illicit an Office Action from the Trademark Office, but it may be overcome with a petition for partial cancellation to narrow the broad description to the marketplace reality.

Improper Strength Analysis Sinks Another Trademark Applicant

The strength analysis trend of a 10 third-party registration minimum to establish the conceptual weakness of a trademark rolls on. In the most recent Trademark Trial and Appeal Board case, seven third-party registrations were insufficient, and so were the statements of one trademark owner.

Shin-Kyu Choi applied to register the mark PRINCE KONG (in standard characters) for a variety of toys, games, sporting goods, and sporting good equipment. The Trademark Office refused registration of the PRINCE KONG mark on the ground that it was likely to cause confusion with two prior registered marks for KING KONG (stylized) in connection with toys, games, sporting goods, and sporting good equipment. Because Shin-Kyu Choi did not attempt to narrow the descriptions in the PRINCE KONG application or the KING KONG registrations, the Board concluded that the goods at issue were legally related.

With the goods at issue legally related, Applicant’s primary argument to focus on the strength analysis; namely, that the KING KONG registrations were conceptually weak and entitled to a narrow scope of rights. To support this argument Shin-Kyu Choi offered seven third-party registrations for KING KONG or contained the KONG term. There were issues with the relevance of the third-party registrations offered by Shin-Kyu Choi but the Board found that even giving the Applicant the benefit of the doubt, seven third-party registrations were too few to establish conceptual weakness.

Shin-Kyu Choi also offered the prior statements of one KING KONG trademark owner where during the prosecution of the application the trademark owner made the statement that KING KONG was a weak mark. The Board stated that a trademark owner’s contrary position during the prosecution of the application cannot substitute for the Board’s reaching its own conclusion on the record before it. The Board went on to say that such prior statements may be received in evidence “as merely illuminative of shade and tone in the total picture confronting the decision maker.”

This is an interesting position taken by the Board that prior statements are not given more weight. The second rule in the Trademark Trial and Appeal Board Manual of Procedure says that the rules of evidence for proceedings before the Board are the Federal Rules of Evidence. Federal Rule of Evidence 804 governs statements against interest, which is a statement statement made by a person which places them in a less advantageous position than if they had not made the statement and is as a consequence deemed credible as evidence. Finally, the Board’s precedent is clear that the Trademark Office’s opinion for what theoretically is happening in the marketplace should not displace the opinion of those in the marketplace.

Trademark attorneys are generally very careful about the positions are taken during the prosecution of an application for this very reason. And we should want trademark applicants to have consistent positions. Facts and circumstances change all the time when it comes to analyzing a trademark, but the burden should be on the party to demonstrate the change in circumstances, not that the Board simply gives prior statements little weight even in an ex parte situation.

Will the Trailblazer Benefit from Residual Goodwill in the U.S.?

The Chevy Trailblazer is making its comeback to the United States after a ten-year hiatus. Chevy stopped production of the SUV in the U.S. in 2009, but did that effectively stop its trademark rights in the TRAILBLAZER mark as well? Likely not if Chevy can benefit from the concept of residual goodwill (also known as lingering goodwill).

The United States Patent and Trademark Office has a policy that absent an extraordinary situation, everything filed with the Trademark Office will remain public. This includes any pending applications or registrations that subsequently are abandoned. When an application or registration is abandoned, the record is marked “dead” in the Trademark Office’s database.

The legal precedent is legion that “dead” registrations cannot prevent the registration of a subsequent mark. Nevertheless, some trademark searchers argue that reviewing “dead” records is time well spent because abandoning a registration is not tantamount to abandoning all trademark rights and because of the concept of residual goodwill.

Residual goodwill occurs after a trademark owner has permanently discontinued use of a trademark or service mark (i.e., abandoned the mark), but there remains some minimal use of the mark in connection with selling off inventory, for example, or in connection with related goods or services. This argument generally only succeeds when additional factors favor a finding of non-abandonment, for example, where there has been a continued presence of branded products in the marketplace or the manufacture and sale of replacement parts.

It seems pretty clear that General Motors permanently discontinued use of the TRAILBLAZER mark for vehicles when it decided to end production. However, General Motors was smart when it prepared its trademark application for the TRAILBLAZER mark back in 1997. The description of goods in the TRAILBLAZER application read “motor vehicles, namely, sport utility vehicles, engines thereof and structural parts therefor.” According to the General Motors Parts Store website, parts for the Trailblazer continued to be available after production of the SUV stopped. General Motors next renewal deadline is July 1, 2019, so we will see what General Motors renews.

Advertising Copy and the Value a TM Attorney Can Provide

The obvious service a trademark attorney provides is to evaluate the availability of prospective names and taglines as trademarks or service marks. After the prospective name is searched and the trademark attorney has delivered the opinion on its availability, then the focus turns to filing and prosecuting the trademark application. Leaving the trademark attorney to focus only on the prosecution of the trademark application could lead to a costly mistake.

Trademark owners should involve their trademark attorneys in reviewing advertising copy especially when that copy includes a reference to the trademark. This is a lesson that one trademark owner learned too late.

Talyoni, LLC applied to register the mark EL PATRON (in standard characters) for “perfumes and colognes.” The Trademark Office refused registration of Talyoni’s mark on the ground that it was likely to cause confusion with a prior registered mark BOSS (in stylized form) for, among other goods, “perfumery for personal use, namely, perfumes, eau de parfum.”

The Trademark Office offered numerous translations of the wording comprising EL PATRON, which translates in Spanish to “the boss.” However, the most damning evidence was Talyoni’s advertising copy. On its website, Tayloni wrote:

The boss knows that looking his best starts with the best. From a lush, verdant shampoo enriched with eucalyptus and aloe to an intensely hydrating conditioner with algae, sea minerals, and Moroccan oil, El Patron delivers luxury and refinement to your regimen.

El Patron

Be the boss. This is the spirit of El Patron. Born out of the desire to bring out the best in a man’s personal style.

These statements in Talyoni’s advertising copy left no room for arguing that El Patron conveyed a meaning to consumers other than “the boss.” This limitation was completely avoidable if Talyoni’s trademark attorney reviewed the advertising copy. But this is not an isolated incident and happens more frequently than it should. Therefore, have a trademark attorney briefly review advertising copy before using it.