“The” A Registered Trademark Now

It happened. “The” is a registered trademark now. The USPTO issued a registration certificate for the word “The” to Ohio State University (Sorry; the Ohio State University) on June 21, 2022. How did this happen, and what does it mean?

The The Saga

The legal quest to own “the” began on May 6, 2019, when Marc Jacobs Trademarks, LLC (MJT) filed an application with the United States Patent and Trademark Office (USPTO) to register the word as a trademark for use on clothing, bags and similar merchandise. MJT claimed a first use date of December 3, 2018.

On August 8, 2019, the Ohio State University filed its own application to register the word as a trademark for use on clothing. The university claimed first use in commerce at least as early as August, 2005.

Due to the earlier filed MJT application, the examining attorney issued an office action to the Ohio State University. It referenced the earlier filed MJT application as a potential bar to registration of the Ohio State University claim. The application was suspended pending the outcome of MJT’s “the” application.

MJT’s application was published for opposition on October 27, 2020. The Ohio State University filed an opposition. The Ohio State University alleged that;

[MJT’s THE mark] “so resembles Ohio State’s THE mark as to be likely, when used on or in connection with the applied-for goods, to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of MJT with Ohio State, or as to the origin, sponsorship or approval of the applied-for goods or commercial activities by Ohio State, all in violation of § 2(d) of the Trademark Act….”

Opposition of The Ohio State University in re: TM Application No. 88416806

It appears that the parties have reached a cooperative use agreement of some kind. The opposition has been withdrawn and the opposition proceeding has been terminated.

Ornamentation vs. The Registered Trademark

Both companies have faced objections from examining attorneys that their uses of the word “the” on clothing were ornamental. A decorative use of a word, symbol, design, etc. that does not function as an identifier of the source of a particular product or service is not sufficient to satisfy the “use in commerce” requirement for trademark registration.

Mark Jacobs Trademarks specimen

After the USPTO rejected the MJT application in March, 2020, MJT filed a successful request for reconsideration. That led to the publication for opposition to which the Ohio State University responded. The USPTO issued a Notice of Allowance on October, 2021. The MJT application is still pending in the USPTO.

The Ohio State University initially encountered the same kind of resistance from the USPTO. The university remedied the problem, however, by showing that it wasn’t just using the word ornamentally; it was also putting it where trademarks usually go, such as inside the shirt at the back of the neck and on its website.

The label

That satisfied the examiner. The mark was published for opposition, and on June 21, 2022 a registration certificate issued.

Scope of The Registered Trademark

Does this mean nobody can use the word “the” in a trademark anymore? No.

To begin with, the Ohio State University has only registered it in Class 25. Class 25 consists of sports and collegiate athletics clothing.

The registered trademark certificate
The trademark registration certificate

The ultimate question, in all cases, is whether another company’s use of the word would be likely to confuse consumers as to the origin of a product or service. The Tax Curative Institute should have very little to fear from the Ohio State University’s registration of “the” as a trademark for collegiate and athletic clothing.

What about displaying the word on clothing, though? Does the Ohio State University’s ownership of the “the” trademark for clothing mean that no one can display the word “the” on a T-shirt now?

Not necessarily. Purely ornamental uses of the word should not expose a T-shirt seller to a risk of infringement liability. For example, a company selling T-shirts emblazoned with the band name “The Slants” should not have to worry about being sued by the Ohio State University.

Of course, unless they have a license from The Slants, they might encounter some pushback for using the band’s name. That’s because the band owns a trademark in their name (“Slants”). Merely using the word “the,” however, should not be a problem. Consumers are not likely to think that every shirt they come across originates from The Slants merely because it has the word “the” on it.

Get in touch with The Cokato Copyright Attorney.

What to Know About the New Copyright Claims Board

What could the new Copyright Claims Board (“copyright small claims court”) mean for you?

Copyright Claims Board emblem

The Copyright Claims Board is scheduled to begin accepting claims on June 16, 2022. What could this mean for you?

The Purpose of the Copyright Claims Board

Due in large part to the Internet, copyright infringement is rampant. In many cases, however, enforcing copyrights in federal court is prohibitively expensive.

To begin with, there is a $350 filing fee and an additional $52 administrative fee, for a total of $402, just to get a case underway. After that, there will be subpoenas, depositions, witness fees, transcript costs, etc. Moreover, because copyright litigation is complex, litigants usually find it necessary to hire an attorney.  Add these additional expenses to the $402 filing fee, and a copyright owner can be looking at paying thousands of dollars just for a chance at enforcing his or her rights.

Under these circumstances, many infringement victims reasonably conclude that enforcing their rights against an infringer does not make good financial sense.

Congress enacted the CASE Act of 2020 to address the problem by creating an administrative tribunal that will hear small infringement claims. The new tribunal will have a lower filing fee and is supposed to be simple enough for a person to use without needing a lawyer.

Do you need to worry?

The definitions of copyright and copyright infringement are broad enough that everybody has probably been guilty of it at one time or another. A fair number of people have probably infringed copyrights multiple times. It is possible, for example, for an email message to be protected by copyright, so forwarding it without permission could be infringement. Photographs, memes, music, videos, essays, etc. are all potentially protected by copyright. Copying and sharing them on social media without permission could be infringement.

In some cases, a defense like fair use or implied license might provide some protection. Many people, however, misunderstand these defenses. They often interpret them much more broadly than is warranted.

The main reason copyright owners have not been suing infringers is not that they believe the infringers may have a valid defense. It’s that the cost of litigation has been too high, relative to the amount of damage suffered. The CASE Act is designed to reduce those costs considerably. Consequently, Internet users and other everyday people would be well advised to be a lot more cautious about sharing other people’s content.

Statutory damages

 A lot of people have the misimpression that so long as they are not making a profit from infringing a copyright, they are safe from a lawsuit. This is not true. Neither profit nor intent to profit needs to be proven in order to win a copyright infringement case. A copyright owner does not have to prove actual damage. He or she can request, and be awarded, statutory damages instead. These are damages that are authorized by statute without need for proof that the infringement caused any actual harm.

The CASE Act authorizes the CCB to make an award of up to $15,000 statutory damages per work when a timely registered copyright has been infringed, and up to $7,500 per work when an unregistered one has been infringed. (The total that may be awarded in one proceeding is $30,000.)

Opting out

Because CCB proceedings are voluntary, you have the right to opt out if you are served a CCB claim. The copyright owner is then free to file the claim in federal court. The range of remedies is broader and the amount of damages that may be awarded is higher in federal court.

Deciding whether or not to opt out will require careful consideration of the strength of the claim(s) and defense(s), the likely costs that each side will incur, and the level of exposure to damages and attorney fee awards in each kind of proceeding.

Why everyone should learn about the CCB

If you are a copyright owner, there is a very good chance that people have been infringing it, especially if you have displayed or published it online. The new CCB might make it feasible for you to do something about it even if you do not have the financial resources to file an infringement lawsuit in court.

If, like nearly everybody, you have shared a photograph, drawing, meme, music, recording, story, article, commentary, or email message that someone else created, without their permission, there is a chance that somebody may file a CCB claim against you.

If you are an attorney, you should know about all available avenues of recourse for copyright owners whose works have been infringed so that you can advise and represent your clients competently. Because more everyday people are likely to sue and be sued for copyright infringement than ever before, even attorneys whose primary area of practice is not intellectual property law should familiarize themselves with this new agency and the claim process.

Educational courses

I will be teaching courses on the new Copyright Claims Board and the new “small claims” process for copyright infringement. Some will be for non-attorneys; others will be for attorneys and paralegals. The first of these is being offered for continuing legal education credit for attorneys and paralegals through Echion CLE. It is an online webinar that will be offered on two different dates:

June 22, 2022 (Register)

July 13, 2022 (Register).

A course for non-attorneys is in the works.

For more information, visit EchionCLE.com.

Need help with a copyright matter? Get in touch.

No Trademark Registration .sucks

The U.S. Trademark Office denied an application to register “.sucks” as a trademark. The Court of Appeals affirmed. Cokato attorney Tom James explains.

by Cokato attorney Tom James

the stylized font claimed for the "SUCKS" trademark discussed in this article by Cokato attorney Tom James

Most people are familiar with a few gTLDs (generic top level domains). The gTLDs .com, .net, .biz, .info, .edu and .gov come to mind. The list of available gTLDs has grown considerably over the past few years, however. Now there are literally hundreds of them. (View the full list here.) Some examples: .food, .auction, .dog, .beer.

And .sucks.

The United States Trademark Office denied an application to register that gTLD as a trademark. The Federal Circuit Court of Appeals just affirmed that decision. The case is Vox Populi Registry, Ltd., No. 2021-1496 (Fed. Cir., February 2, 2022).

The applications

Vox is the domain registry operator for the .SUCKS gTLD. The company filed two trademark applications with the USPTO. One was for the standard character mark .SUCKS in Class 42 (computer and scientific services) for “[d]omain registry operator services related to the gTLD in the mark” and in Class 45 (personal and legal services) for “[d]omain name registration services featuring the gTLD in the mark” as well as “registration of domain names for identification of users on a global computer network featuring the gTLD in the mark.” The other application was for the stylized form of the mark, as shown in the illustration accompanying this article.

The examining attorney refused both applications, on the ground that they failed to operate as trademarks, i.e., as source identifiers. The TTAB agreed, finding that consumers will perceive “.sucks” as merely one of several gTLDs that are used in domain names, not as a source identifier.

Concerning the claim in the stylized form, the Board concluded that although the pixelated font resembling how letters were displayed on early LED screens is not common today, it is not sufficiently distinctive to qualify for trademark protection in this case.

Vox appealed the part of the decision relating to the stylized font to the Federal Circuit Court of Appeals. The court affirmed.

The standard character mark

Under the Lanham Act, a service mark may be registered only if it functions to “identify and distinguish the services of one person . . . from the services of others and to indicate the source of the services.” 15 U.S.C. § 1127. Matter that merely conveys general information about a product or service generally does not function as a source identifier.

In this case, the court held that substantial evidence supported the Board’s finding that consumers will view this standard character mark as only a non-source identifying part of a domain name rather than as a trademark. The court pointed to specimens from Vox’s website that treated domain names ending in “.sucks” as products. rather than as identifier of Vox’s services. Consumers are likely to see gTLDs as part of domain names, not as identifiers of domain name registry operators.

The stylized design

Design or stylization can sometimes make an otherwise unregistrable mark registrable, provide the stylization creates an impression on consumers that is distinct from the words or letters themselves. Here, the Board determined that because of the ubiquity of the font in the early days of computing, consumers would view the pixelated lettering as ordinary rather than as a source identifier.

It appears that Vox did not claim that the stylized presentation of .SUCKS had acquired distinctiveness. If it had done so – and if it could present persuasive evidence of acquired distinctiveness – then the stylized mark might have been registrable.

Conclusion

Does this decision mean that a gTLD can never serve as a trademark? No. To give just one example, AMAZON is both a gTLD and a trademark. The import of the case is only that a gTLD is not likely to be registrable as a service mark for a domain name registry service, where consumers are more likely to see it as simply being a part of a domain name, not as an identifier of a particular domain registry service.

Contact Tom James

Contact Cokato attorney Tom James for help with trademark registration.

“Sales and Use Tax Nexus: The Way Forward for Legislation” by Tom James

By Tom James, Published in 2020

By Tom James, Published in 2020

Read the full article at: open.mitchellhamline.edu

“Sales and Use Tax Nexus: The Way Forward for Legislation,” Mitchell-Hamline Law Journal of Public Policy & Practice, vol. 41, no. 1 (2020)

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