USPTO Archives - Cokato Copyright Attorney: The Law Blog of Thomas James

Longstanding and Emerging Legal Issues in Trademark Law

Trademark law protects brand identifiers like names, logos, words, slogans, and other things, ensuring consumers aren’t deceived about the source of a product or service. It also protects businesses from unfair competition. Core concepts include use in commerce, distinctiveness and the likelihood of confusion, which dictate whether a mark can be registered and enforced.

Jack Daniels and Bad Spaniels

Whether you’re a startup founder, an artist, or just astudent of the law, understanding trademark law is essential. Here is a breakdown of the fundamentals, followed by some of the biggest trending issues in the trademark world today.

The Fundamentals of Trademark Law

A trademark is any word, name, drawing, graphic, or device used to identify the source of goods or services and distinguish them from others. The four essential requirements for a valid trademark are:

Distinctiveness

A trademark must operate not only to identify the source of a product or service but also to distinguish it from others.

It is evaluated along a spectrum:

Fanciful marks: These are completely made-up, invented words, graphics, etc. that have nothing whatsoever to do with the nature or quality of the products or services with which they are associated. These are inherently distinctive, meaning it is not necessary to prove that consumers have come to associate the mark with the source. XEROX and EXXON are examples.
Arbitrary marks: These are real words, images of real things, etc., but they bear no relationship to the product or service with which they are associated. APPLE computers is an example. These, too, are inherently distinctive.
Suggestive marks: Suggestive marks are marks that hint at the nature or a quality of the product or service, but do not directly describe it. They require some imaginative thought on the part of the consumer to “connect the dots.” JAGUAR for cars and COPPERTONE for suntan lotion are examples. A suggestive mark is inherently distinctive.
Descriptive marks. These describe a quality, ingredient, or characteristic of the product or service. Unlike suggestive marks, they don’t merely hint at it; they come right out and directly describe the product or service, or a characteristic or ingredient of it. HOLIDAY INN and INTERNATIONAL BUSINESS MACHINES are examples. Descriptive marks cannot be claimed as trademarks unless they have acquired “secondary meaning.” The burden of proof is on the claimant to show that consumers have come to identify the brand with the claimant’s product or service, and not with other sources of it.
Generic marks: These are names for a category of product or service. MILK, as a mark for milk would be an example. No trademark rights can be claimed in generic marks.

Likelihood of Confusion

The primary legal standard for both registering a mark and suing for infringement is “likelihood of confusion”. This means determining if an ordinary consumer would mistakenly believe that your product or service and someone else’s come from the same source, or are affiliated.

Courts apply a multi-factor test (primarily the DuPont factors) to assess likelihood of confusion. The most critical ones are:

Similarity of the marks: Do they look, sound, or convey a similar commercial impression?
Relatedness of the goods/services

Courts consider other factors, too.

Two marks may be confusingly similar even if they are not identical. The key is whether consumers would be likely to confuse the source of one with the source of the other.

Use in Commerce

A mark must be used in commerce as a source identifier. Otherwise, a trademark does not come into being. To register a trademark federally with the USPTO, the use must be in interstate or foreign commerce. Purely intrastate commerce will not suffice for federal registration.

Registration

In the United States, trademarks come into existence through use in commerce as a trademark. When all the elements of a valid trademark exist (distinctiveness, etc.) a “common law” trademark exists. The scope of protection a common law trademark affords, however, is limited to the geographic area of trade. To get nationwide protection and the right to use the coveted ® symbol, you must register your mark with the U.S. Patent and Trademark Office (USPTO).

My experience has been that the major stumbling blocks for people who apply to register their trademark with the USPTO are (1) lack of distinctiveness, usually due to selecting a descriptive mark without acquired meaning; (2) likelihood of confusion with another person’s or company’s trademark; and (3) improperly completing the application for registration.

Topical Issues in Trademark Law

Fraudulent filings

The USPTO has implemented rigorous enforcement frameworks to crack down on fraudulent filings. Historically, many trademark owners were in the habit of registering their marks in more than one category of goods or services, either to “keep options open” for possible company expansion into a new product line, or to prevent competitors from doing so. The USPTO is making more vigorous efforts to crack down on registrants who fraudulently claim use in connection with goods or services with which they are not actually using the mark.

Due to a massive influx of suspicious, fraudulent, or automated filing mills, the office has cracked down by requiring stricter identity verification and heavily scrutinizing specimens of use. If a brand is caught digitally altering logos or faking mock-ups of their goods in commerce, their registration is being swiftly canceled. Examiners are inspecting specimens of use more closely now, trying to ferret out digitally created mock-ups of trademarks being used in commerce. A false or fraudulent specimen of use is grounds for cancellation of registration.

The Trademark Modernization Act has given the USPTO new and enhanced powers to cancel unused and fraudulent registrations.

AI-Generated Counterfeits

Generative-AI is being used to create knock-offs of digital products. This is creating challenges for owners of trademarks in digital products and services.

Intermediary Platform Liability

Can an online marketplace platform or intermediary website or online service provider be held contributorily liable for facilitating or otherwise contributing to counterfeit and trademark-infringing goods being sold on their platforms?

Phrases Without Trademark Functionality

People are increasingly trying to claim trademark ownership over common words and phrases, such as, “Hello. How are you?” The USPTO and courts are rebuffing a lot of these efforts. It is still possible for a phrase to become a trademark, but proof of acquired secondary meaning as a source identifier is needed. Otherwise, an applicant is likely to experience a “failure to function as a trademark” denial.

Read more about non-AI-related legal issues.

Need help with a trademark registration? Contact attorney Thomas James.

Enduring (Non-AI) Legal Issues

With so much attention being given to the legal issues that AI-powered technologies are generating, it can be easy to overlook or underestimate the importance of long-standing legal issues having nothing to do with artificial intelligence. While it would be neither possible nor particularly useful to catalog all of them in a single blog post, it might be helpful to highlight a few key legal issues that are developing alongside developments in AI law.

Copyright Law

The core principles of intellectual property remain anchored in traditional law. In that connection, it is important to understand the philosophy of copyright. Copyright is not the only kind of intellectual property there is, but it is by far the most common. Everyone who has ever written a story or a poem, scribbled a doodle, or composed an email message is very likely a copyright owner. Merit is not a requirement. In theory, even that terrible drawing of a turkey you made in first grade by tracing your fingers and hand on paper and drawing a head and two legs on it may be protected by copyright. Whether it makes sense to pay the filing fee to register something like that is a different story.

A key issue in copyright law that continues to develop is fair use. Courts have been grappling with how to interpret and apply the four vaguely worded factors they must to make findings about whether a particular otherwise-infringing use is “fair” or not. The idea of “transformative use” is at the center of this evolving doctrine. Andy Warhol Foundation for the Visual Arts v. Goldsmith, decided in 2023, is a leading case in this area now. Other limitations on copyright infringement liability, such as the safe harbors set out in the Digital Millennium Copyright Act (DMCA), are also important. There are also evolving protections for sound recordings and licensing. Other topics in copyright law include such things as the registration requirement, damages for infringement, diversity, copyright estoppel, the limitations period, the extent of protection for shorter works, compulsory e-book licensing, and circumvention of copyright protection measures.

The Internet Archive lawsuit addressed the phenomenon of digitized e-books and the impact on authors of making them freely available to readers via an online digital library.

The new administrative court for resolving smaller copyright claims, the Copyright Claims Board, is one of the more significant developments in copyright law in a long time. Find out what to know about the new CCB.

Read about the top copyright cases of 2021.

Read about the top copyright cases of 2022.

Read about the top copyright cases of 2024.

Meanwhile, more and more works continue to enter the public domain.

Trademark Law

There has been a surge in interest in trademark law ever since the COVID-19 phenomenon. Many small brick-and-mortar businesses had to shut down as people were instructed to quarantine at home. While quarantining at home, a lot of people had the same idea: Starting a home-based, online business. Those new online businesses needed to have names. The USPTO was soon flooded with an unusually large number of trademark registration applications. Competition in the trademark space became fierce. Descriptiveness and likelihood-of-confusion challenges increased. New laws and procedures, such as the Trademark Modernization Act, were enacted to clear more room for new businesses by cancelling unused trademarks and cancelling registrations for classes of goods and services no longer being used by the trademark owners. Interest in nontraditional marks like color marks, trade dress, and sound and olfactory trademarks (smell marks) has also grown.

The clash between First Amendment values and trademark interests continues to surface from time to time. Courts have addressed trademark speech rights on several occasions now.

And of course, distinctiveness, likelihood of confusion, and registration disputes are ongoing.

Foundational Context: Major IP Developments of 2023

This section is a repost of an article I wrote in 2023 describing major developments in various areas of intellectual property law that took place that year. While I have broadened the scope of the discussion, it can still be useful to look back at what went on during that pivotal year, as it provides important context for the developments in IP law that are taking place now.

Copyright: Fair Use

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al.

I’ve written about this case before here and here. The Supreme Court issued a ruling in the case in May. The decision is significant because it finally reined in the “transformative use” doctrine that the Court first announced in Campbell v. Acuff-Rose Music back in 1994. In that case, 2 Live Crew had copied key parts of the Roy Orbison song, “Oh, Pretty Women” to make a parody of the song in its own rap style. The Court held that the 2 Live Crew version, although reproducing portions of both the original song and the original recording of it without permission, transformed it into something else. Therefore, even though it infringed the copyright, the 2 Live Crew version was for a transformative purpose and therefore protected as fair use.

In the thirty years since Campbell, lower courts have been applying the “transformative use” principle announced in Campbell in diverse and divergent ways. Some interpretations severely eviscerated the copyright owner’s exclusive right to make derivative works. Their interpretations often conflicted. What one circuit called transformative “fair use” another circuit called actionable infringement. Hence the need for Supreme Court intervention.

In 1984, Vanity Fair licensed one of photographer Lynn Goldsmith’s photographs of Prince to illustrate a magazine article about him. Per the agreement, Andy Warhol made a silkscreen using the photograph for the magazine and Vanity Fair credited the original photograph to Goldsmith. Unknown to her, however, Warhol proceeded to make 15 additional works based on Goldsmith’s photograph withour her permission.. In 2016, the Andy Warhol Foundation for the Arts licensed one of them to Condé Nast as an illustration for one of their magazines. The Foundation received a cool $10,000 for it, with neither payment nor credit given to Goldsmith. The Foundation then filed a lawsuit seeking a declaration that its use of the photograph was a protected fair use under 17 U.S.C. § 107. The district court granted declaratory judgment in favor of the Foundation. The Second Circuit Court of Appeals reversed, ruling that the four-factor “fair use” analysis favored Goldsmith. The Supreme Court sided with the Court of Appeals.

Noting that it was not ruling on whether Warhol’s making of works using the photograph was fair use, the Court limited its analysis to the narrow question whether the Foundation’s licensing of the Warhol work to Condé Nast was fair use. On that point, the Court determined that the use of the photograph to illustrate a story about Prince was identical to the use Goldsmith had made of the photograph (i.e., to illustrate a magazine article about Prince.) Unlike 2 Live Crew’s use of “Oh, Pretty Woman,” the purpose of the use in this case was not to mock or parody the original work.

The case is significant for vindicating the Copyright Act’s promise to copyright owners of an exclusive right to make derivative works. While Warhol put his own artistic spin on the photograph – and that might have been sufficient to sustain a fair use defense if he had been the one being sued – the Warhol Foundation’s and Condé Nast’s purpose was no different from Goldsmith’s, i.e., as an illustration for an article about Prince. Differences in the purpose or character of a use, the Court held, “must be evaluated in the context of the specific use at issue.” Had the Warhol Foundation been sued for displaying Warhol’s modifications of the photograph for purposes of social commentary in its own gallery, the result might have been different.

Although the holding is a seemingly narrow one, the Court did take the opportunity to disapprove the lower court practice of ending a fair use inquiry at the moment an infringer asserted that an unauthorized copy or derivative work was created for a purpose different from the original author’s.

Copyright Statute of Limitations and Damages

Warner Chappell Music, Inc. v. Nealy

The U.S. Supreme Court has granted certiorari to review this Eleventh Circuit decision. At issue is whether a copyright plaintiff may recover damages for infringement that occurred outside of the limitations period, that is, infringement occurring more than three years before a lawsuit was filed.

The circuits are split on this question. According to the Second Circuit, damages are recoverable only for acts of infringement that occurred during the 3-year period preceding the filing of the complaint. The Ninth and Eleventh Circuits, on the other hand, have held that as long as the lawsuit is timely filed, damages may be awarded for infringement that occurred more than three years prior to the filing, at least when the discovery rule has been invoked to allow a later filing. In Nealy, the Eleventh Circuit held that damages may be recovered for infringement occurring more than three years before the claim is filed if the plaintiff did not discover the infringement until some time after it first began.

A decision will be coming in 2024.

Artificial Intelligence

Copyrightability

Thaler v. Perlmutter, et. al.

This was an APA proceeding initiated in the federal district court of the District of Columbia for review of the United States Copyright Office’s refusal to register a copyright in an AI-generated work. In August, the district court upheld the Copyright Office’s decision that an AI-generated work is not protected by copyright, asserting that “human creativity is the sine qua non at the core of copyrightability….” For purposes of the Copyright Act, only human beings can be “authors.” Machines, non-human animals, spirits and natural forces do not get copyright protection for their creations.

An appeal of the decision is pending in the D.C. Circuit Court of Appeals.

Infringement

Many cases that were filed or are still pending in 2023 allege that using copyrighted works to train AI, or creating derivative works using AI, infringes the copyrights in the works so used. Most of these cases make additional claims as well, such as claims of unfair competition, trademark infringement, or violations of publicity and DMCA rights.

I have been blogging about these cases throughout the year. Significant rulings on the issues raised in them are expected to be made in 2024.

Trademark: Parody Goods

Jack Daniels’s Properties Inc. v. VIP Products LLC

For more information about this case, read my blog post about it here.

This is the “parody goods” case. VIP Products used the “Bad Spaniels” name to market its dog toys, which were patterned on the distinctive shape of a Jack Daniel’s whiskey bottle. VIP filed a lawsuit seeking a declaratory judgment that its product did not infringe the Jack Daniel’s brand. Jack Daniel’s counterclaimed for trademark infringement and dilution. Regarding infringement, VIP claimed First Amendment protection. Regarding dilution, VIP claimed the use was a parody of a famous mark and therefore qualified for protection as trademark fair use. The district court granted summary judgment to VIP.

The Supreme Court reversed. The Court held that when an alleged infringer uses the trademark of another (or something confusingly similar to it) as a designation of source for the infringer’s own goods, it is a commercial, not an expressive, use. Accordingly, the First Amendment is not a consideration in such cases.

Rogers v. Grimaldi had held that when the title of a creative work (in that case, a film) makes reference to a trademark for an artistic or expressive purposes (in that case, Fred Astaire and Ginger Rogers), the First Amendment shields the creator from trademark liability. In the Jack Daniel’s case, the Court distinguished Rogers, holding that it does not insulate the use of trademarks as trademarks (i.e. as indicators of the source or origin of a product or service) from ordinary trademark scrutiny. Even through the dog toys may have had an expressive purpose, VIP admitted it used Bad Spaniels as a source identifier. Therefore, the First Amendment does not apply.

The Court held that the same rule applies to dilution claims. The First Amendment does not shield parody goods from a dilution claim when the alleged diluter uses a mark (or something confusingly similar to it) as a designation of source for its own products or services.

Trademark: International Law

Abitron Austria v. Hetronic International

Here, the Supreme Court held that the Lanham Act does not have extraterritorial reach. Specifically, the Court held that Sections 1114(1)(a) and 1125 (a)(1) extend only to those claims where the infringing use in commerce occurs in the United States. They do not extend to infringement occurring solely outside of the United States, even if consumer confusion occurs in the United States.

The decision is a reminder to trademark owners that if they want to protect their trademark rights in other countries, they should take steps to protect their rights in those countries, such as by registering their trademarks there.

Patents: Enablement

Amgen v. Sanofi

In this case, the Supreme Court considered the validity of certain patents on antibodies used to lower cholesterol under the Patent Act’s enablement requirement (35 U.S.C. 112(a)). At issue was whether Amgen could patent an entire genus of antibodies without disclosing sufficient information to enable a person skilled in the art to create the potentially millions of antibodies in it. The Court basically said no.

If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. Amgen v. Sanofi, 598 U.S. ____ (2023)

Patents: Executive Power

In December, the Biden administration asserted that it can cite “excessive prices” to justify the exercise of Bayh-Dole march-in rights. The Biden Administration also has continued to support a World Trade Organization TRIPS patent waiver for COVID-19 medicines. These developments are obviously of some concern to pharmaceutical companies and members of the patent bar.

Conclusion

My vote for the most significant IP case of 2023 was Andy Warhol Foundation v. Goldsmith. Lower courts had all but allowed the transformative use defense to swallow up the exclusive right of a copyright owner to create derivative works. The Supreme Court provided much-needed correction. I predicted that in 2024, the most significant decisions would also be in the copyright realm, but that they would have to do with AI. The prediction turned out to be accurate.

Can We Talk Here? – Trademark Speech Rights

In recent years, the United States Supreme Court has been grappling with the thorny question of how the First Amendment applies to trademarks. In this blog post, attorney Thomas B. James attempts a reconciliation of First Amenment trademark decisions

In recent years, the courts have been grappling with some long-standing legal issues which – believe it or not – do not involve AI. Some involve trademark rights. The United States Supreme Court has been grappling with the thorny question of how the First Amendment applies to trademarks. In this blog post, attorney Thomas B. James attempts a reconciliation of recent pronouncements.

The Slants (Matal v. Tam)

Simon Tam, lead singer of the band, The Slants, tried to register the band name as a trademark. The USPTO denied the application, citing 15 U.S.C. § 1052(a). That provision prohibited the registration of any trademark that could “disparage . . . or bring . . . into contemp[t] or disrepute” any persons. The Fifth Circuit Court of Appeals declared the statute facially unconstitutional under the First Amendment. The U.S. Supreme Court affirmed.

The USPTO argued that the issuance of a registration certificate is “government speech.” Since the government and its members are not required to maintain neutrality in the views they express and are only required to maintain viewpoint neutrality when regulating private speech, the USPTO contended that it was not required to maintain viewpoint neutrality when deciding whether to issue a trademark registration certificate or not. The Court rejected that argument, holding that a trademark is private speech. As such, the government is not free to engage in viewpoint discrimination when deciding which ones to favor with a registration certification.

“If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”

— Hon. Samuel Alito, in Matal v. Tam

Commercial speech

At one time, the Court took the position that the First Amendment does not protect commercial speech (speech relating to the marketing of products or services). Valentine v. Chrestensen (1942) (“[T]he Constitution imposes no . . . restraint on government as it respects purely commercial advertising.”)

In Virginia State Pharmacy Bd. v. Virginia Citizens Consumer Council (1976) the Court reversed its position on this point, declaring that “the free flow of commercial information” is important enough to warrant First Amendment protection.

The Court announced a framework for assessing the constitutionality of a restriction on commercial speech a few years later, in Central Hudson Gas & Elec. Co. v. Public Serv. Comm. of N.Y. (1980).

The Central Hudson test, as it has come to be known, holds, first, that commercial speech receives First Amendment protection only if it concerns lawful activity and is not false or misleading. If it clears those two hurdles, then government regulation of it is permissible only if the regulation directly advances a substantial government interest and is not more extensive than necessary to serve that interest. That is to say, the regulation must be narrowly tailored to advance a substantial government interest.

In other words, commercial speech receives an intermediate level of scrutiny. Unlike regulations of political speech, the government only needs to identify a “substantial” interest, not necessarily a “compelling” one. Also unlike political speech, the regulation in question does not have to be the least speech-restrictive means of achieving it. It is required to be no more extensive than necessary to serve the interest in question, however.

In Tam, the Court held that it did not need to decide whether trademarks are commercial speech or not. The Court rejected the government’s contention that it has a substantial interest in protecting people from hearing things they might find offensive, declaring that “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.'” See United States v. Schwimmer, 279 U. S. 644, 655 (1929) (Holmes,
J., dissenting).

The Court also rejected the second justification the government offered, that disparaging trademarks disrupt the flow of commerce. The statute, the Court held, is not narrowly drawn to eradicate invidious discrimination. Prohibiting registration of trademarks that disparage any person, group or institution, it would also prohibit registration of marks like “Down with racists” or “Slavery is an evil institution.”

The Court also identified what it described as a “deeper problem”:

If affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility,” free speech would be endangered.

— Hon. Samuel Alito, in Matal v. Tam

In short, the Court acknowledged that commercial speech can have non-commercial expressive content. When that is the case, courts should zealously guard against government encroachment on private speech rights.

FUCT

Two years later, the Court was asked to review the USPTO’s refusal to register FUCT as a trademark. The Court came to the same conclusion about the portion of the statute that prohibited the registration of “scandalous” or “immoral” trademarks as it did about the prohibition against registering “disparaging” trademarks. Because this, too, involves viewpoint discrimination, the Court held that this prohibition, too, violates the First Amendment. Iancu v. Brunetti, 139 S. Ct. 2294 (2019)

Bad Spaniels (Jack Daniels v. VIP Properties)

The Court revisited trademark speech rights in 2023, in Jack Daniel’s Properties v. VIP Products.

I’ve written about this case before. and about the Supreme Court’s decision to review it. Basically, Jack Daniel’s Property owned (and still owns) trademarks in the Jack Daniel’s bottle and in many of the words and graphics on its label for its alcoholic beverages. VIP Products began making and marketing a dog toy designed to look like a Jack Daniel’s whiskey bottle. The toy had labels affixed to it parodying the Jack Daniel’s label. For example, it used the phrase “Bad Spaniels” in place of “Jack Daniel’s.” And instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey,” it displayed “The Old No. 2 On Your Tennessee Carpet.” Jack Daniel’s issued a cease-and-desist demand. In response, VIP Products filed a declaratory judgment action seeking a declaration that its parody neither infringed nor diluted Jack Daniel’s trademarks and, in any event, was a protected “fair use” under the First Amendment.

The district court rejected these claims, essentially holding that the First Amendment does not establish a “fair use” exception for the expressive aspect(s) of a trademark when it is used as a source-identifier for a product. The Ninth Circuit Court of Appeals reversed.

The United States Supreme Court reversed the Ninth Circuit. The Court opined that although using a trademark for an expressive purpose might qualify for First Amendment protection, that protection does not insulate the user from trademark infringement or dilution liability if it is also used as a source-identifier. Parodic uses are exempt from liability only if they are not used to designate the source of a product or service.

The Court did not mention Central Hudson or discuss the commercial speech doctrine. It is likely the Court did not feel a need to do that because trademark infringement involves trademarks that are claimed to be likely to confuse consumers about the source of a product or service. Such trademarks would not clear one of the first hurdles for commercial speech protection under Central Hudson, namely, that the speech must not be misleading.

“Trump Too Small” (Vidal v. Elster)

Steve Elster applied to federally register the trademark “Trump too small” to
use on shirts and hats. The USPTO denied the application, citing 15 U. S. C. §1052(c). That provision prohibits the registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by
his written consent.” Elster appealed, asserting that this statute infringed his First Amendment right to free speech.

The Federal Circuit Court of Appeals agreed with him. The U.S. Supreme Court, however, reversed the Federal Circuit, holding that this provision of the Lanham Act does not violate the First Amendment. V i dal v. Elster, 602 U.S. __ (2024).

The decision in this case is consistent with Jack Daniel’s. Unlike Jack Daniel’s, this case did not involve a claim that the use of the trademark was likely to cause consumer confusion about the source of the product. (After all, how likely would consumers be to mistakenly believe that Trump was marketing products ridiculing his own size?) In this case, the first two hurdles for commercial speech protection under Central Hudson would appear to have been cleared.

Reconciling this decision with Tam is not as easy. What happened to the idea the Court voiced in Tam that when commercial speech has non-commercial expressive content, courts should zealously guard against government encroachment on private speech rights?

The legislative history of Section 1052(c) demonstrates that the prohibition against using a living person’s name as part of a trademark was enacted for essentially the same reason that the prohibitions against disparaging, scandalous or immoral trademarks were: Members of Congress found the “idea of prostituting great names by sticking them on all kinds of goods” — like the idea of including scandalous, immoral or disparaging content in a trademark — to be “very distasteful,” and wanted “to prevent such outrages of the sensibilities of the American people.”¹ That was the very same kind of “interest” that the government invoked in Tam and that the Court found insufficient and not tailored narrowly enough to sustain the speech restriction at issue in that case. What was different here?

By requiring consent, Section 1052(c) effectively precludes the registration of a mark that criticizes an elected government official while allowing the official to register positive messages about himself or herself. HILLARY FOR AMERICA was permitted to be registered, but HILLARY FOR PRISON was not. It seems an awful lot like viewpoint discrimination, doesn’t it?

Why shouldn’t the politically expressive aspect of a trademark (as distinguished from the purely source-identifying aspect) receive the same exacting strict scrutiny analysis that normally applies to regulations of political speech?

Well, the Supreme Court did not think this case involved viewpoint discrimination. The requirement of consent to use a person’s name in a trademark applies to people of all political persuasions, the Court reasoned. Consent would be required to register a politician’s name as a trademark whether the politician in question is a Democrat, a Republican, a Communist, or anything else, and consent would be required whether the politician in question supports or opposes, say, abortion rights, or gun rights, or anything else.

Nevertheless, the fact remains that the statute, as applied, requires an elected official’s prior approval of a trademark before it can be registered. Maybe that doesn’t rise to the level of a direct prior restraint on speech, but it would certainly seem to have a chilling effect on political speech at the core of the First Amendment.

Conclusion

It is not at all clear to me that the cases can be reconciled on a logically coherent doctrinal basis. Reliance on the common law history of trademarks might support a determination that Section 1052(c) is not unconstitutional on its face. I am not completely convinced, however, that the Court was adequately responsive to the argument that the statute is unconstitutional as applied to the names of elected officials. But what do I know? I’m just some guy living next to a cornfield in the middle of nowhere.

See Respondent’s Brief at p. 7. ↩︎

“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?

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.

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.

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.

Read about other enduring trademark issues.

Get in touch with The Cokato Copyright Attorney.

For Whom the Za Tolls Update

You’re driving the Florida Keys when suddenly you get a hankering for pizza. Tragically there is no toll booth in sight. Minnesota attorney Tom James explains.

by Minnesota attorney Tom James

“You’re driving over the ocean in the Florida Keys when suddenly you get a hankering for a slice of pizza. Unfortunately, there is no toll booth in sight. What will you do?”

Some of you might remember an article I wrote several years ago that began this way. I was alluding to the strange case of a state turnpike authority that was suing a pizzeria for trademark infringement. Here is a very belated update on that case.

The lawsuit

The New Jersey Turnpike Authority filed a federal lawsuit against Jersey Boardwalk, a Florida pizzeria, for trademark infringement. It claimed the pizzeria’s mark was so similar to its mark that people were likely to mistakenly assume the pizza restaurant was connected in some way with the New Jersey Turnpike Authority. It accused the pizzeria of trading on the goodwill of the New Jersey Turnpike Authority. It sought an injunction, compensatory damages, and treble damages, claiming trademark infringement, dilution, and unfair competition.

Pizza

Pizza is an Italian food that was created in the Naples area of Southern Italy. It is made with different toppings. Some of the most common ones are mozzarella cheese, sausages, pepperoni, vegetables, tomatoes, spices and herbs. These toppings are put on a large piece of bread covered with sauce. The sauce is most often tomato-based, but other kinds of bases may be used. The bread is called a “crust.” Virtually any kind of topping can be put on a pizza. I have even witnessed otherwise rational people using chicken and pineapple as pizza toppings.

Disposition

The court ultimately dismissed the lawsuit on jurisdictional grounds. The court noted that the pizzeria does not have any stores in New Jersey. It had only made sales to a handful of New Jersey customers, and they were online sales. These contacts with New Jersey were “too attenuated to put the Defendants on notice that they would be subject to a trademark infringement suit in New Jersey,” the court ruled.

Nor did the company’s use of the word “Jersey” amount to purposeful availment of the privilege of doing business in New Jersey. Using the name of a state to conjure consumer interest in nostalgia or exoticism is not what “purposeful availment” of a state’s services or resources means, for purposes of Due Process analysis.

USPTO proceedings

Years before this litigation, the Turnpike Authority had filed an opposition to the pizzeria’s application to register its mark. The United States Trademark Trials and Appeals Board (TTAB) dismissed the Turnpike Authority’s opposition to the pizzeria’s registration of the trademark for restaurant services.

After the registration certificate was issued, the Turnpike Authority filed a petition to cancel it. The U.S. TTAB denied the petition . The Board found that the Turnpike Authority failed to establish likelihood of confusion with its registered trademark for highway maintenance and information services. The Board did not believe that consumers would expect restaurant and highway maintenance services to come from the same source.

It is one of those kinds of cases that can make you simultaneously scratch and shake your head.

Read about other, perhaps less weird, trademark legal issues.

Contact attorney Tom James

Need help with a trademark or copyright matter? Contact Cokato, Minnesota attorney Tom James.

The Fundamentals of Trademark Law

Distinctiveness

Likelihood of Confusion

Use in Commerce

Registration

Topical Issues in Trademark Law

Fraudulent filings

AI-Generated Counterfeits

Intermediary Platform Liability

Phrases Without Trademark Functionality

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Copyright Law

Trademark Law

Other Legal Topics

Foundational Context: Major IP Developments of 2023

Copyright: Fair Use

Copyright Statute of Limitations and Damages

Artificial Intelligence

Copyrightability

Infringement

Trademark: Parody Goods

Trademark: International Law

Patents: Enablement

Patents: Executive Power

Conclusion

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The Slants (Matal v. Tam)

Commercial speech

FUCT

Bad Spaniels (Jack Daniels v. VIP Properties)

“Trump Too Small” (Vidal v. Elster)

Conclusion

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The The Saga

Ornamentation vs. The Registered Trademark

Scope of The Registered Trademark

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The lawsuit

Pizza

Disposition

USPTO proceedings

Contact attorney Tom James

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