By: Brittany Kent
It’s essentially an universal rule not to copy other’s work without permission or proper reference.
Social media platforms have grown to have billions of users in the past decade. It a valuable tool to facilitate fast communication and exchange ideas; and it is a valuable tool for businesses - particularly small business interested in growing their brands. It may be impossible to have a business without the use of social media in the near future. With the core of social media’s success being sharing content, do owners of original trademarked content have rights in these virtual realms?
There are not many cases involving trademarks and social media because most are settled via alternate dispute resolutions. Some courts have created a model of what may be expected when a company is attempting to protect its’ trademark. eBay was sued by Tiffany Inc. in 2008 because items were being sold on the website using Tiffany’s logo or name to sell counterfeit products. The Southern District of New York held that eBay did not have to police it’s cite for improperly used trademarks but eBay had a duty to act accordingly when notified about illegal trademark use, as it had.
Twitter dealt with a similar lawsuit when a fake profile was created under well-known individual’s name. Although Twitter was contacted by the well-known individual on several occasions asking that the profile be removed, it wasn’t. Twitter lost the $32 million-dollar lawsuit.
Many social media sites have policies to protect copyrighted data. Facebook sometimes even removes homemade videos of users who use copyrighted music. Ultimately, if you would seek permission or cite the source in the offline community, it should make sense to do so online also.
By: Whitney Shirley
The Lanham Act includes two applications available for trademark registration under Sections 1(a) and 1(b). Section 1(a) is known as the "use" based application, whereas, Section 1(b) is the intent to use (ITU) application. Before the Trademark Revision Act of 1988, there was only one application offered for registering trademarks in the United States. For a mark to be deemed registerable, it had to satisfy the use in commerce requirement. The Lanham Act modifications introduced domestic applicants to seek registration of a trademark before use in commerce. Forming Section 1(b) created a dual application system for marks already used in commerce and for those projected marks.
Section 1(b) enables those who have yet to use their mark in commerce, with the intent to do so in the future, to file their application under an intent to use basis. The application’s only requirement is for trademark seekers to have a bona fide intent to use the mark in commerce. Although ITU trademark applicants must have more than just an idea, generally at least some initial business activities, they can be less than market ready. Further, unlike Section 1(a), since the applicant does not have to confirm that they have used the trademark in commerce, use can be shown at a later date than the initial filing.
Generally, ITU applicants should provide a statement of use within six months of receiving USPTO’s Notice of Allowance. However, the applicant could pay $125 to file extensions in 6-month increments. The applicant can submit five extensions totaling up to three years. Therefore, the ITU applicant does not need to use the mark in commerce for up to three years which enables trademark squatting.
Certainly, with the flexibility of the ITU application, there must be some applicants abusing the system, right?
Recently, it was reported that R&B singer, the Weekend sued a realtor by the name of Eymun Talasazan for attempting to register the “Starboy” trademark on two different occasions. Talasazan utilized the ITU application to register the “Starboy” trademark in association with entertainment services shortly after the Weekend released his album titled Starboy. He then filed another ITU application for the “Starboy” trademark in connection with comic books days after the Weekend and Marvel publicized a Starboy comic book collaboration.
It appears as though Talasazan has a history of filing other people's marks. Some of his ITU based applications include famous sayings such as "Runnin’ through the 6,” “Straight outta bompton,” and “Da Posse.”
Talasazan could be trademark squatting. Trademark squatters register other people’s mark as their own to gain benefit from the original mark or real trademark owners. Specific behavior that trademark squatters engage in is as follows:
(1) Offer goods or services that label the mark to consumers who believe the products or services are of the "real" owner;
(2) Assign the trademark back to the “real” owner after establishing use in commerce;
(3) Utilize the mark for marketing goods or services that are distant from those sold by the "real" owner; or
(4) Establish a claim of mark to exclude the "actual" owner from the market.
With the loopholes in the ITU application, there will always be people abusing the system.
Thus, trademark owners should always take preventative measures to avoid mark squatting to the best of their abilities.
Being proactive is always crucial. The Weekend should have filed an ITU application before making any public announcement of plans to collaborate with Marvel on a Starboy comic book. The application could be as inexpensive as $225 and might guarantee the real mark owner priority of the mark. Further, if plans change, the application can always be abandoned.
Hopefully, the Weekend will use this incident as a lesson and will take some preventive measures when dealing with future trademark matters.
By: Brittany Hamner
Genericide is when a protectable trademark becomes generic. Courts have defined “generic” as “the genus of which the particular product or service is a species.” Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 601 F.2d 1011, 1014 (9th Cir. 1979). A generic term is one which describes what the product or service is, and thus is not protectable under trademark law as its use would prevent others from describing the good or service in it of itself.
In the case deeming ASPIRIN generic in the United States, the late Judge Learned Hand set forth a standard for determining whether a mark has become generic:
The single question, as I view it, in all these cases, is merely one of fact: What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, them [sic], I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more. He has failed, and he cannot say that, when the defendant uses the word, he is taking away customers who wanted to deal with him, however closely disguised he may be allowed to keep his identity.
Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921).
In addition to aspirin for headache medicine, all of these generic words were once exclusive trademarks:
• Cellophane for “transparent cellulose film.”
• Murphy Bed for a fold-up wall bed.
• Thermos for an insulated beverage container.
• Yo-Yo for the toy.
• Escalator for the mechanical stairs.
• Flip Phone for smartphone with two sections that fold
• Laundromat for coin laundry shop
Genericide can devastate a company’s entire intellectual property portfolio. For example, Google recently faced a threat of genericide for use of its mark to describe searching the web. the Ninth Circuit, the court held that “google” was not a generic term and was a protectable trademark, re-affirming that even if a trademark is widely-used by the generic public as a verb, that does not mean that the trademark is considered generic.
Similarly, other marks were once on their way to becoming generic include XEROX, JEEP, BAND-AID, and KLEENEX. To prevent these trademarks from becoming generic, each trademark owner ran an aggressive ad campaign to educate consumers to view its trademark as a source identifier as opposed to a common name for its goods and/or services.
In order to avoid genericide and protect your mark, owners should:
• focus on educating the consumer that their mark is the source of the product, not the product itself
• establish guidelines for the use of their mark, such as determining how their trademark will be used and displayed in commerce – whether it will always carry the ® or ™ signs, or whether it will be used as a verb or noun
• advertise the trademark or brand name along with the general term, instead of just the trademark. For example, “Jell-O gelatin” or “LEVI’s jeans
• police the use of the mark and its use in domains as well as in the media
• describe the mark without including the name of your mark
By: Brianna Penermon
The wildly popular chili sauce, Sriracha, has gained a cult-like following among millennial’s. This spicy condiment has become the newest novel flavor profile for everything from peanuts to burgers. One might assume the originator of Sriracha is riding the wave of this trend and raking in the dough, but this is not necessarily the case. David Tran, owner of Huy Fong Foods, the company responsible for commercializing this sauce, never trademarked the name.
Tran, a Vietnamese refugee, began selling Sriracha 25 years ago, but never sought trademark protection. As the sauce grew in popularity, several Sriracha “knockoffs” popped up on the market. Large companies such as Taco Bell, Pizza Hut, and Subway began to market new Sriracha flavored menu items. If Tran had registered his trademark years ago, when he first started selling his sauce, he would have the right to license the use of the Trademark “Sriracha” to these large companies. Because he did not, he has missed this opportunity and as a result, is losing out on thousands and possibly millions of dollars in royalties.
Despite the loss of potential revenue, Trans says he does not regret not filing for trademark protection for the name. He believes all the “Sriracha buzz” is more valuable as a free marketing tool. And while the actual name of the popular sauce is not trademarked, Tran has trademarked the familiar green cap and rooster logo.
Tran admits he has received many calls over the years from lawyers advising him to protect his brand name. Some other companies have attempted to apply for the trademark themselves, but courts have determined the term is now generic because of it wide use. Still, there are others who don’t believe “Sriracha” could have ever been trademarked in the first place. Interestingly, the name comes from the city Sri Racha, where the sauce originates. This would make the trademark “Sriracha” geographically descriptive and likely to be refused by the USPTO office.
The story of Huy Fong’s Sriracha Sauce is a cautionary tale to companies and creative to apply for trademarks early, before it’s too late. You never know if your goods or services will become the next teen craze or hipster fad.
By: Quendesmond Kellum
On June 26, 2017, a week after the U.S. Supreme Court unanimously held that the
“disparagement clause” in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the
Free Speech Clause of the First Amendment in Matal v. Tam, the U.S. Patent and Trademark
Office (the “USPTO”) has updated (Examination Guide 1-17) its previous
guidance, Examination Guide 01-16, to explain how it will examine applications following the
Supreme Court’s decision in Tam.
Matal v. Tam
Simon Tam is the lead singer of the rock group “The Slants.” In 2011, Mr. Tam sought to obtain
a trademark for his band’s name. The USPTO refused the application under 15 U.S.C.
§ 1052(a), claiming that the mark “consists of or includes matter which may disparage or bring
into contempt or disrepute persons, institutions, beliefs or national symbols.” Apparently,
“SLANTS” is a racial slur for Asians. Mr. Tam deliberately chose the name to reclaim the term
and, hopefully, make it less forceful as an insult. Mr. Tam argued that the term had other, more
likely meanings, but the USPTO disagreed, and the Trademark Trial and Appeal Board
(“TTAB”) affirmed the rejection.
Tam appealed to the U.S. Court of Appeals for the Federal Circuit. There, Mr. Tam argued that
the law prohibiting the registration of disparaging trademarks violated his First Amendment
rights. A panel of three judges affirmed the PTO’s rejection of his application, but noted that it
was time for the court to revisit whether § 1052(a) violated the First Amendment.
The Supreme Court ruled that the ban on disparaging marks was an unconstitutional violation of
the First Amendment. This ruling by the Supreme Court of the United States will have a big
impact on the filing of future trademarks. This now means that scandalous and offensive marks
can now be filed and received protection from the USPTO. Does this now mean that potential
marks containing the words, “Tar-baby”, “Wetback”, or even “Nigger” will be acceptable?
Based on the language used by the Supreme Court this is quite possible.
Future Effects of Changes
The case brings other disparaging decisions under US trade mark law back into public attention.
Blackhorse v Pro Football, Inc. is currently pending appeal after the USPTO cancelled six
trademarks using the term Redskins associated with a Washington state football team. The marks
were blocked because of the disparagement clause and Pro Football, Inc. appealed. Given the
Tam decision, it’s now unlikely the USPTO decision will stand in the way of registration of the
trade marks for the team. It is arguably too early to say whether the case will open the floodgates
for disparaging and offensive marks. Free speech cases by their very nature protect the right to
say something that others believe should not be heard. However, some may say that possible
trademark applicants would not want to alienate possible consumers of their product or service,
but I guess that is something that we will have to wait and see.
By: Honor Williams
In United States history, there has arguably been no symbol that conjures up as much hatred,
violence, racial tension, and intolerance as the confederate flag. Just one quick glimpse of this
flag brings up the same sense of horror that it did back in 1861.
The confederate flag was created in 1861 in Fairfax City, Virginia as a way to distinguish
Confederate troops from Union troops. The image we consider the confederate flag was not the
original design of the Confederacy. The Confederate flag we call today was originally called the
Confederate Battle Flag, resembles the Southern Cross constellation with thirteen white stars for
each state in the Confederacy. Under the Confederacy’s first official flag, troops on the field
could not distinguish those with the American flag or those with the Confederate flags because
of their similarity. The first confederate flag consisted of the same stars and stripes concept of
the American flag, there were two red stripes and one white stripe with a blue square with eleven
stars. The second confederate flag used during the Civil War, which consisted of today’s
confederate flag in the upper left hand corner with the rest of the flag white, was disliked because
it was too similar to the white flag that symbolized a truce because the square with the Southern
cross could not be seen when hung limply or in calm air. The third confederate flag, which was
identical to the second flag except there was a red vertical stripe on the far right, was the final
flag adopted by the Confederacy. Today’s version of the flag is considered to be the Confederate
flag because it was the battle flag of General Robert E. Lee’s Army of Northern Virginia and the
Confederate Navy Jack, which was a maritime flag flown on the jackstaff in the bow of
Confederate vessels that were moored or anchored.
Although many argue that the Confederacy flag was never created as a symbol of racism, the
flag was adopted by extremist and white supremacist groups because the flag was used during
the Civil War by Southerners who wanted to preserve white supremacy by continuing the
enslavement of African-Americans. The Klu Klux Klan, a white supremacy and white
nationalism terrorist group, uses the confederate flags during rallies and almost every public
event as a symbol of their racial violence.
Today, especially at hate group rallies, it is easy to see people waving confederate flags and
wearing confederate flags on clothing. To have clothing manufactured featuring this symbol,
someone has to have it as a logo.
A flag can be trademarked as long as it is distinct enough and used to distinguish one’s goods or
services. The flag must not be a true representation of a flag of a foreign nation, a state, or the
There is difficulty tracking the use of the confederate flag because the live and dead
differentiation was not recorded until the 1980s. There are eighty-three marks using the
confederate flag; however, seventy-eight percent of the marks are dead. In the past the
confederate flag was used in trademarks for jeans, mops, boats, and shrimp. The confederate flag
was used in trademarks for Six Flags amusement parks and the NASCAR Southern 500 race.
In 2015, there were eighteen active trademarks using the confederate flag. States that still have
active trademarks using the confederate flag include: Oregon, Louisiana, Illinois, Indiana, Iowa,
Michigan, Florida, Tennessee, North Carolina, South Carolina, Virginia, Maryland, and
Pennsylvania. Since 2000, there have been forty-nine trademark applications filed with the
confederate flag, with about twenty-seven for clothing lines.
Several of today’s celebrities have adopted the use of the confederate flag in clothing. Andre
3000 wore a confederate flag on his belt buckle in OutKast’s “Ms. Jackson” video. Lil Jon was
wearing the confederate flag around his shoulders in his album cover for Lil Jon & the Eastside
Boyz “Put Yo Hood Up” album cover. Ludacris wore a Confederate flag outfit during his
“Georgia” performance at the VIBE Awards. Even Kanye West was seen wearing a confederate
flag jacket and later sold merchandise for his Yeezus tour featuring the flag. Their reason for
sporting the flag? Using a hateful symbol in an artistic form to bring healing to those tormented