USPTO – Generic Fair Use

Space Force v. “Space Force” – a trademark kerfuffle

June 9, 2020 / David / Comments Off

On May 29, 2020, Netflix released a new comedy television series starring Steve Carrell titled “Space Force.” It is a workplace comedy from one of the creators of “The Office” that focuses on the presumed sixth branch of the United States military. This concept is directly derived from the United States’ Space Force that was announced by President Trump and authorized by Congress on December 20, 2019.

By any standard, the existence of both things is somewhat of a farce. Making things even stranger is that no one seems to understand how names and titles and trademarks work, which led to a series of articles this week about the purported trademark rights to SPACE FORCE being lost by the United States government. This premise is ridiculous and this article will attempt to explain why this is a non-story.

That’s Not How Any of This Works! Cultural Phrases and the Failure to Function as a Trademark

December 4, 2019 / David / 1 Comment

As of this morning, there are seven (7) pending applications with the United States Patent and Trademark Office (USPTO) to register some variation of OK BOOMER as a trademark.[1] Thanks in part to the New York Times article in October, the casually dismissive phrase “ok, boomer” went from a limited internet audience to a mocking cultural term du jour. Inspired would-be entrepreneurs rushed to file applications with the USPTO to “own” this phrase as a trademark.

It is unlikely any of these applications will mature into a trademark registration. Simply put, this is not how trademarks work. Following in the footsteps of such whimsical terms like COVFEFE, TACO TUESDAY, and ALTERNATIVE FACTS, most of these alleged marks will fail to acquire a registration from the USPTO.

Because they almost certainly fail to function as trademarks.

Top 10 Misconceptions about LeBron and Ohio State’s Trademark Filings

September 16, 2019 / David / Comments Off

Trademark law is quirky. Look no further than the attention being given to recent filings to the USPTO by LeBron James and Ohio State University. TACO TUESDAY and THE. These legal matters are receiving substantial media coverage. But the subsequent news blurbs, articles, and media stories all seem to have one important thing in common:

Nearly everyone is wrong about what is going on here.

At this point, I expect ESPN and Darren Rovell to fail at describing the intricate proceedings of trademark matters. That much is a given. It is everyone else piling on these stories that is making me nervous. Accordingly, to address these issues, and because the internet practically runs on top 10 lists, here are 10 misconceptions about LeBron and Ohio State’s trademark filings.

Someone should petition to cancel the SUPER BOWL® trademark registration

February 4, 2019 / David / Comments Off

Last night, the Los Angeles Rams and the New England Patriots played Super Bowl LIII. It was one of the worst exhibitions of professional football in a long time, and certainly the most boring Super Bowl to date. Enough people will be writing about that game today, but I see it as an opportunity to further discuss the NFL’s SUPER BOWL® trademark. And this is why:

The NFL is a known trademark bully. Someone should petition to cancel its SUPER BOWL® trademark registration. And I think I have found a way for this petition to be successful. The NFL fraudulently acquired the registration and it should be canceled.

This is not how trademarks work

October 10, 2018 / David / Comments Off

Colin Kaepernick’s “Intent to Use” trademark filing explained

ESPN once again published another article about an athlete seeking to protect his trademark rights in the United States. I have written about this topic before. More than a few times – to be precise. I still maintain that these “athlete trademarks” are getting absurd. Colin Kaepernick, however, is a substantially different athlete in terms of branding and awareness and overall newsworthiness. Kaepernick’s company filed a series of new applications to register a particular mark on October 5, 2018 with the United States Patent and Trademark Office. This provides another good opportunity for an analysis of what trademarks are and how trademark registrations work.

More importantly, it allows for continued discussion on how “trademark” and “trademark registration” are entirely different things. Plus, another reminder of the fact that there is no such thing as a “trademark application.”

There is no such thing as a “trademark application”

March 19, 2018 / David / Comments Off

Trademark law is a nuanced discipline. Word choice matters greatly. The use of a particular word, a certain combination of words, the exact construction of a phrase, and/or the precise arrangement of particular terms – each of these can affect the validity and enforceability of a trademark.[1] It is important.

Last week, I was in the middle of a trademark infringement trial in federal court. Opposing counsel colloquially referred to official certificates of registration as “trademarks” and the underlying applications as “trademark applications.” Each time I had to stand up and object. For one simple, yet legally necessary reason:

There is no such thing as a “trademark application.”

Deep in the TC Heartland of Texas: Supreme Court Reverses 25 Years of Patent Venue Practice

June 5, 2017 / David / Comments Off

June 5, 2017

Marshall, Texas is a town of less than 25,000 residents in East Texas.[1] It is closer to Shreveport, Louisiana than it is to Dallas or to Houston. Nevertheless, since the late 1990s, Marshall has become the epicenter for a series of high-profile patent litigation cases. In 2015, there were nearly 6,000 patent infringement cases filed in the United States. At least 1,500 of these filings ended up before Judge Rodney Gilstrap,[2] a judge for the Eastern District of Texas, in the Marshall, Texas division. This was no accident.

As of last month, however, this may all be subject to change.

On May 22, 2017, in TC Heartland LLC v. Kraft Foods Group Brands LLC, the United States Supreme Court addressed a dispute regarding the patent venue statute and unanimously held that civil actions for patent infringement may only be brought in the judicial district where the defendant resides or where the defendant has committed acts of infringement and has a regular and established place of business. Prior to TC Heartland, patent owners could choose to file suit in most any state given that most corporations made or sold products nationwide. This allowed certain courts to set up shop as patent “rocket dockets” which encouraged litigators to choose their venue.

This is how one judge in Marshall, Texas came to oversee, on average, nearly a quarter of all patent infringement cases filed in the United States. Now that TC Heartland is the rule of the land, there are three primary issues to address and explore: (1) how did Marshall, Texas become a “rocket docket” for patent cases?; (2) what rule did the Supreme Court actually change?; and (3) what is likely to happen now?

Why You Should Register Your Trademarks

December 12, 2016 / David / Comments Off

Trademarks and trademark law are a tricky legal property. For one, trademarks are technically “owned” by the individual or entity that uses the mark in association with goods or services in commerce. Yet the underlying purpose of trademarks is to protect the relevant consumer. Trademarks are only valuable (and protectable) to the extent the consumer associates that mark with the source of particular goods and services.

How do you get a trademark? It is not difficult. The exact moment you select a word, logo, slogan, phrase, or design – and “use” it in association with particular goods and services in the stream of commerce, it becomes a legal trademark. While the definition of “use” can be nebulous and imprecise, essentially any sales or marketing efforts that target consumers or customers across interstate lines can be proper trademark “use” that breathes life into a mark. This provides what is known as “common law” trademark rights. These rights are enforceable in a court of law.

The obvious follow-up question then is: if getting a trademark is so easy, why should I bother going through the process of applying for a state or federal trademark registration? What do I get for my money? We have now stumbled across the purpose of this article.

Golden Knights trademark

A ‘Golden’ Opportunity to Talk About Team Names and Trademark Rights

December 9, 2016 / David / 1 Comment

On December 8, 2016, ESPN’s website ran with the scandalous headline “Patent office denies Golden Knights trademark” regarding the new Las Vegas NHL franchise’s recently chosen moniker.[1] The article subsequently provided a detailed analysis of all the supposed ways in which “Golden Knights” allegedly could not be a trademark that belonged to the NHL team. As you may have gathered, I am writing this article to clarify that misconception.

There are numerous statements and implications in that article that are dangerously misleading. Trademark law is quite nuanced. But ESPN continues to attack it with a sledge hammer. If nothing else, it provides me a good opening to discuss some of these nuances in trademarks and how they may apply to professional and college sports teams’ nicknames.

Trademarks vs. Disparagement

September 30, 2016 / David / Comments Off

September 30, 2016

On September 29, 2016, the United States Supreme Court granted certiorari in the matter of Lee v. Tam, regarding whether the disparagement provision of the Lanham Act is facially invalid under the First Amendment, particularly whether it restricts free speech. This is the appeal from the same case I wrote about last December. I am curious to see how the Supreme Court tackles this issue, and what I consider substantive errors in analysis made by the Federal Circuit last fall.

Nevertheless, while the legal issues are heavily nuanced and regard convoluted topics such as “chilling effects,” “government speech” versus “commercial speech,” “disparagement,” and what constitutes “use in commerce,” it appears the layperson is confused by the scope of the case. Particularly, after the news broke yesterday, the common theme was “why is a musical group not allowed to call itself the Slants?” – which is not only wholly irrelevant to the issue but is also a dangerous interpretation of what I consider to be an important trademark matter.

In short, you can name your rock band whatever you want. You can also name your professional football team whatever you want (looking at you, Washington Redskins). No one is going to stop you. The United States Patent and Trademark Office, however, may refuse to grant you a trademark registration for such a name. Not that the name cannot be a trademark – it can be – but “registration” confers additional benefits that may or may not extend to marks that the USPTO considers to be “disparaging” of people or groups. This is the entirety of what the Supreme Court is going to address.

Instead, here I will try to address the distinction between free speech, trademarks, and trademark registrations in general terms.

Generic Fair Use

... where pop culture meets intellectual property law

Tag: USPTO (page 1 of 2)

Space Force v. “Space Force” – a trademark kerfuffle

That’s Not How Any of This Works! Cultural Phrases and the Failure to Function as a Trademark

Top 10 Misconceptions about LeBron and Ohio State’s Trademark Filings

Someone should petition to cancel the SUPER BOWL® trademark registration

This is not how trademarks work

There is no such thing as a “trademark application”

Deep in the TC Heartland of Texas: Supreme Court Reverses 25 Years of Patent Venue Practice

Why You Should Register Your Trademarks

Trademarks vs. Disparagement

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