F-bomb Trademarks

One of the several reasons your trademark might be refused registration by the USPTO is that your proposed mark is scandalous or immoral. Without too much further explanation you might guess that a certain word starting with “F” and rhyming with “duck” might be problematic as a trademark. You would be right. Trademarks can be refused registration for being scandalous or immoral. Now you might think that this is America and you can say what the F— you want, and you can. But at least for now, you aren’t going to get the US government to help you protect that as a brand name.

But many people do try anyway. In fact, if you search the USPTO for applications for marks containing that word, you will see nothing but refusals (were 0 for 53 so far), probably causing the applicants to shout . . .

But. . . they did it on TV: What Glee teaches about copyright

The fictional high school chorus at the center of Fox’s Glee has a huge problem — nearly a million dollars in potential legal liability. For a show that regularly tackles thorny issues like teen pregnancy and alcohol abuse, it’s surprising that a million dollars worth of lawbreaking would go unmentioned. But it does, and week after week, those zany Glee kids rack up the potential to pay higher and higher fines.

Check out the rest of Christina Mulligan’s post at Balkanization.

Trademarks and Oil Spills

The Twitter account @BPGlobalPR has more followers than the real BP Twitter account. Yes its fake and they use the BP name and logo. The tweets are both biting and funny, at least to people who don’t work at BP. But is it trademark infringement?

If trademark law exists primarily prevent confusion in the marketplace and to let companies control their own reputation, then probably not. Does @BPGlobalPR tarnish BP’s brand? Probably, but it seems as though everyone knows its a parody, and how could you not with tweets like:

“We feel terrible about spilling oil in American waters, we’ll make sure the next spill happens where the terrorists live. #bpcares”

“Please help us with rebranding. We’re not calling it an “oil spill” anymore, now it’s a “Southern Fun Party”. #bpcares”

So, if a decent trademark infringement or dilution claim could be made, BP might ask themselves, “should we?” The answer to that might be “no.” The fallout from a trademark lawsuit now could be worse than the tweets. (See Streisand Effect) It might make it seem like BP is trying harder to plug the word leak than the oil leak.

The value of a trademark is based in large part on the reputation of the company. To BP’s credit, it seems as though their tweeting has been pretty focused on keeping people updated about the oil spill. This might be one time where protecting a trademark might be done best by letting people vent and take a few jabs.

UPDATE/CLARIFICATION: I am pretty sure that this wouldn’t be a good trademark case for BP anyway. It is such a clear parody as well as a non-commercial, non-competing use. However, there have been some inconsistent results in the area of trademark parodies. Sometimes judges as well as brand owners just don’t have a good sense of humor. Thanks to @cathygellis for the reply tweet and comment.

Lincoln on Lawyers and Honesty

There is a vague popular belief that lawyers are necessarily dishonest. I say vague, because when we consider to what extent confidence and honors are reposed in and conferred upon lawyers by the people, it appears improbable that their impression of dishonesty is very distinct and vivid. Yet the impression is common, almost universal. Let no young man choosing the law for a calling for a moment yield to the popular belief — resolve to be honest at all events; and if in your own judgment you cannot be an honest lawyer, resolve to be honest without being a lawyer. Choose some other occupation, rather than one in the choosing of which you do, in advance, consent to be a knave.

from Notes on a law lecture (1850)

New Podcast on TechdotMN

I had the pleasure of talking to Harold Slawik of New Counsel about choice of entity, funding and securities law issues for startups. Check out the article and podcast at TechdotMN.

Choosing a Strong Trademark

The art of giving your product or service a name is challenging. Making sure that name can also be protected as a trademark can make things more difficult. But there are a few things you can consider as guides when choosing a name.

What you can’t use as a trademark:
– Offensive or disparaging words.
– Names that are primarily a surname
– Names that sound like, look like or mean the same as another competing trademark.
– Words that merely describe a feature of the product.

In my experience, the last two are the source of the most frequent problems. A different spelling or adding one more word to a trademark that already exists is still too close. The USPTO wants to help you register your trademark, but they also want to make sure there isn’t confusion in the marketplace. Foreign translations of trademarks are also a problem “Pomme Ordinatuer” doesn’t look like or sound like “Apple Computer” but it means the same thing. Descriptive words are helpful for telling consumers what your product does, but can’t be registered trademarks.

So what works? I am not an ad wizard but I have noticed a few things that are both clever and capable of being registered.

– Words that are associated with good qualities, but don’t literally describe the product. (e.g. EVEREADY)
– Words or images that are symbols for values that are important to your company. (e.g. FIDELITY, APPLE)
– Puns. Especially if you have a fun product (e.g. GARDEN OF EATIN)
– Just make up a word that sounds good but doesn’t mean anything. (e.g. KODAK)

A large part of a brand’s success has to do with how consumers feel about the products and not so much to do with having chosen the perfect name. I have no idea what “kodak” means (apparently nothing), but I do recognize the name and associate it with quality photography equipment. In the long run, so long as you keep you customers happy, and they know how to identify you, any name might work.

Happy Law Day

May 1st is Law Day which was first recognized by President Eisenhower to observe that we are a nation that has a government of laws. While there are plenty of problems with the legal system in the United States, we often forget how essential rule of law is and how much we rely upon it.

Be Kind To Lawyers Day

Although not conclusively proven, it has been asserted that lawyers have feelings too. So don’t forget to celebrate “Be Kind To Lawyers Day.”

If you’re not sure how to celebrate such a holiday, here are some suggestions.

USPTO Director David Kappos at William Mitchell College of Law

David Kappos at William Mitchell College of Law

I was only able to attend the first 45 minutes of this event. Thank you to William Mitchell College of Law for making the whole program available online so I could see the rest. Director Kappos seems to be exactly the kind of person we should want to be heading up the U.S. Patent and Trademark Office.

A Victory for Open Source Software

Novell recently won a 7 year battle against the SCO Group over the copyright to UNIX source code. A jury in Utah found that Novell was the owner of the copyrights in question. Its a victory for open source software generally, because it was probably the most serious legal threat to development of Linux, an open source UNIX-like operating system. SCO had alleged that Linux infringed copyrights it held in UNIX. Though Novell’s offerings have changed over the years, currently it offers SUSE Linux and related software and services.

The blog Groklaw has been following this case in great detail over the years. There is an unbelievable amount of information there which illustrates how much work can go into litigating a case of this scale.