#NoFilter: Supreme Court paves way for Offensive Trademarks

On June 19, 2017, the Supreme Court concluded that the disparagement clause of the Trademark Act violates the Free Speech Clause of the First Amendment.  The heart of the issue comes down to whether or not a restriction on disparaging marks is a violation of the First Amendment and frankly, the answer is yes. The Government offered explanation by way of public policy and interest. However, the Supreme Court remained firm in the idea that principal of freedom of speech means the freedom to express our ideas and opinions, even if they are negative.

In light of this ruling by the Court, applicant’s seeking Trademark registration for a particular offensive mark, no longer need to be weary of the USPTO rejecting their application for fears of violating the disparagement clause.  Additionally, a Trademark Attorney consulting with their client on selecting a particular mark for registration, need not be as restrictive in eliminating potential marks that would most likely have been rejected prior to this ruling.  The Supreme Court has firmly supported a trademark owner’s right to register a mark, no matter how offensive, as long as it meets the minimum requirements of filing under the Trademark Act.  In turn, a mark may no longer be rejected merely because it expresses a negative viewpoint.

For some, this case comes as a huge win in that the ruling eliminates a potentially large obstacle in the trademark registration process. Most notably, the Washington Redskins, may find themselves benefiting from this ruling immensely as they are currently appealing the cancellation of their marks based on the disparagement clause.  The team has been fighting to keep their registrations alive for several years now, arguing against a finding that their long used trademarks are a violation of the disparagement clause.  Thus, with the current ruling, this should pave the way for their registrations to remain in force.

For others, this ruling comes as a devastating loss. The decision grants applicants the right to receive protection and to use in commerce marks that are offensive, hateful and derogatory. For those on the receiving end of this type of language, seeing these types of marks used in public is a disturbing thought, let alone allowing a Trademark owner to enforce the rights granted to them with a Federal Trademark Registration.

In conclusion, an excerpt from Justice Alito’s opinion as noted below demonstrates the balancing act required in addressing free speech concerns:

“But no matter how the point is phrased, its unmistakable thrust is this: The Government has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”

Trademark Protection: Three Questions Answered for Small Businesses

When starting a business, it is important to establish brand recognition for your product and/or service.  In establishing brand recognition, it is essential for a company to protect the use of their brand whether it is a name, logo, slogan or any combination of the three.  A Federal Trademark registration is an excellent way to solidify protection of an up-and-coming brand while also preventing a competitor from operating under a confusingly similar name.

Here are a few common questions we have received from clients over the years regarding Trademarks:

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USPTO EXTENDS AFTER FINAL PILOT PROGRAM

The United States Patent & Trademark Office recently extended the current After Final Pilot Program until September 30, 2015, at which time the program will be up for renewal again. The After Final Consideration Pilot (AFCP) Program 2.0 which originally began on May 19, 2013 aims to reduce the number of Request for Continued Examinations (RCE) filed and increase the collaboration between the applicant and the examiner.

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Post Alice: A Nonexistent Wonderland Filled with Questions

On June 19, 2014, the Supreme Court unanimously ruled in Alice Corp. v. CLS Bank International, that basic business methods could not be patented, even if computers are used to apply them. An Australian company, Alice Corporation, owned the patents at issue. The case questioned the patent eligibility of Alice Corp.’s claims to a computerized method, a computer-readable medium containing computer instructions, and a computer system that implements those instructions. Justice Clarence Thomas wrote for the court and determined that “merely requiring generic computer implementation fails to transform [the] abstract idea into a patent-eligible invention.”

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DOMAIN NAMES . . . USE THEM OR LOSE THEM?

In today’s global economy coupled with the continued growth of e-commerce, businesses no longer exist only as brick and mortar locations, but instead must maintain an active online presence in order to gain and maintain a customer base. For better or worse, a business is associated with their online presence through their domain name. In most cases, a business has no issue in securing an appropriate domain that represents their interests, and assists with their search engine rankings. For instance, Company ABC, would most likely desire to register a domain for their business such as www.abc.com, however what happens if this domain is not available.

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Assignment of Intellectual Property Rights in Employment Contracts

Intellectual Property, namely patents, trademarks and copyrights are some of a company’s most valuable business assets, and accordingly, care should be taken to ensure that there is a clear chain of title with respect to ownership of these assets and that it is identified and determined at the onset of these creations. Unfortunately, there are many instances where ownership issues arises due to either poor planning on the part of the company, vague definitions as to what qualifies as a company asset and/or failure to have the necessary documents in place to automatically transfer an employee’s contribution directly to the company.

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Do I Need a Prototype to File a Patent Application?

A common question that arises during an initial consultation, especially with start-ups and individual inventors is whether or not a prototype of their proposed invention needs to exist before they are able to submit a patent application.  The simple answer is that an inventor does not need to have a prototype built in order to move forward with a patent application.

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I Have an Idea . . . Now What?

All of a sudden, one day you are sitting at work or at home and something pops into your head, you believe you have an idea that if marketed properly would be valuable and desired by the public.  On average, individual inventors usually develop ideas as a result of an everyday problem they have to deal with and yet the solutions available to them are not optimal, and thus feel that they can create a new product that fills this gap and will make everyday life a little easier.

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Start Ups – When Should I File a Trademark Application?

When deciding to form a start-up company, there are several important legal documents that should be prepared and evaluated, specifically with respect to Intellectual Property.  One area of Intellectual Property that should not be overlooked is the protection of the brand of the company through a Federal Trademark Application, which ensures that the name or logo associated with the goods and services provided by the start-up will not be copied or infringed upon.  This article will continue the discussion of a previous posting, wherein once a trademark search has been completed, it is time to consider the benefits and drawbacks related to the timing of filing a Trademark Application as it pertains to a start-up company or any other early-stage entity.

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