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Category Archives: First Amendment

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Scandalous Trademark Applications On Hold

Posted in Articles, Branding, First Amendment, Marketing, Trademarks, USPTO

Trademarks consisting of or comprising “scandalous or immoral” matter still won’t be granted federal registration “in the name of the United States of America,” at least for the time being. Immediately on the heels of the International Trademark Association’s 140th Annual Meeting in Seattle, and our well-received panel discussion concerning Trademarks and Free Speech, the United… Continue Reading

At INTA 2018: Trademarks and Free Speech

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, First Amendment, Infringement, Law Suits, Marketing, Trademarks, TTAB, USPTO

Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:… Continue Reading

Trader Joe’s Takes on Trademark “Schmo”

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Food, Infringement, Law Suits, Mixed Bag of Nuts, Sound, Squirrelly Thoughts, Trademarks, TTAB, USPTO

In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The… Continue Reading

Legitimate Super Bowl Ambush Marketing

Posted in Advertising, Articles, Branding, Dilution, Fair Use, False Advertising, First Amendment, Infringement, Marketing, Trademark Bullying, Trademarks

Not all ambush marketing is created equal. Some can cross the line and create a likelihood of confusion as to sponsorship. Some falsely advertises. But, some is totally fair use and lawful. This current promotional banner by La-Z-Boy is capitalizing on the excitement surrounding the upcoming Super Bowl weekend festivities, but without reasonable risk of… Continue Reading

Happy Birthday: TTAB Turns Sixty in 2018

Posted in Articles, Branding, First Amendment, Infringement, Marketing, Mixed Bag of Nuts, Trademark Bullying, Trademarks, TTAB, USPTO

We follow closely and write a lot about what goes on with the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO); these ironmongers do too, really well. Serious trademark and brand owners care about TTAB decisions because many trademark disputes begin and end there, as the TTAB determines the important… Continue Reading

Does Erik Brunetti Have Ford’s Attention Yet?

Posted in Articles, Branding, Famous Marks, Fashion, First Amendment, Marketing, Trademarks, USPTO

Last Friday was a big day for Erik Brunetti. He won his appeal at the CAFC, opening the door to federal trademark registration of his four-letter-word “fuct” clothing and fashion brand name. The same door swung wide open for all other vulgar, scandalous, and immoral designations used as trademarks, because the 112-year old registration prohibition… Continue Reading

DYKES ON BIKES No Longer Idling After Matal v. Tam

Posted in First Amendment, Mixed Bag of Nuts, Trademarks, TTAB, USPTO

Simon Tam wasn’t the only one barred by the Lanham Act from reclaiming a historically derogatory term. Dykes on Bikes is a nonprofit lesbian motorcycle organization.  According to their website, the group’s mission is to “support philanthropic endeavors in the lesbian, gay, bisexual, transgender, and women’s communities, and to reach out to empower a community… Continue Reading

Call of Duty Trademark Lawsuit: A Humvee Humdinger

Posted in Branding, Fair Use, Famous Marks, First Amendment, Infringement, Mixed Bag of Nuts, Trademarks

AM General, manufacturer of Humvee military vehicles, has sued Activision Blizzard for trademark infringement, based on the use of the “Humvee” and “HMMWV” marks for the virtual military vehicles displayed in Activision’s Call of Duty video games. See the complaint here, filed last week in the Southern District of New York. For those of you who are not avid… Continue Reading

University of North Dakota Abandons Sioux Mascot, but not Sioux Mark

Posted in Famous Marks, First Amendment, Loss of Rights, Mixed Bag of Nuts, Trademarks

The weekend of October 20-21, 2017, the Minnesota Golden Gophers and North Dakota Fighting Hawks traded wins in one of college hockey’s most competitive series. While watching the NCHC broadcast, an ad for the “Sioux Shop” appeared on screen. The ad explained that the Sioux Shop sells North Dakota fan gear at Ralph Englestad Arena… Continue Reading

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part III

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Marketing, Trademarks, TTAB, USPTO

Of course, loyal readers have been eagerly awaiting Part III of the series (see Part I and Part II) focusing on Tam’s intersection of federal trademark registration and the First Amendment. In terms of the certain and practical implications flowing from the decision, it opens the door to a host of new trademark applications containing religious and… Continue Reading

Making Fair Use of the Super Bowl Trademark

Posted in Advertising, Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks

Over the weekend, the Star Tribune continued the growing drum beat of understandable excitement for Super Bowl LII, as it steadily approaches U.S. Bank Stadium in Minneapolis. The article also plays the typical NFL-enabling drum beat of caution against local businesses that might see fit to fairly and truthfully reference the Super Bowl in some… Continue Reading

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II

Posted in Articles, Copyrights, Dilution, Famous Marks, First Amendment, Trademarks, USPTO

As the drum roll proceeds to the upcoming Midwest IP Institute in Minneapolis and sharing the podium with Joel MacMull of the Archer firm (and Simon Tam fame) on Thursday September 28, in a few days, I’ll be making a stop south of the border, at the University of Iowa College of Law, where it… Continue Reading

A Special Thank You to Suzan Shown Harjo

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, SoapBox, Trademarks, TTAB, USPTO

Today marks the 25th anniversary of the filing of the petition to cancel the R-Word registrations held by Pro-Football, Inc., the NFL franchise playing near the Nation’s capital. Indian Country Today has published an interview with Suzan Shown Harjo, lead petitioner in Harjo et al v. Pro-Football, Inc., and organizer of Blackhorse et al v…. Continue Reading

3:16 as a Trademark?

Posted in Articles, Branding, Fashion, First Amendment, Marketing, Mixed Bag of Nuts, Television, Trademarks, Truncation

Over the weekend, IPBiz reported that WWE (World Wrestling Entertainment) has filed an application to register 3:16 as a trademark for clothing items. A Google search confirms that 3:16 has religious significance as it is a common truncation that signifies one of the most widely quoted verses from the Bible, namely, John 3:16. Despite other… Continue Reading

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part I

Posted in Articles, Branding, First Amendment, Marketing, Trademarks, USPTO

Looking forward to sharing the podium with Joel MacMull of the Archer firm (counsel for Simon Tam, where our friend Ron Coleman is a partner) to discuss “Trademark Registration and the First Amendment,” on September 28th at the Midwest IP Institute in Minneapolis. As a drum roll leading up to that discussion, and since there… Continue Reading

Titleist Trademark Tarnishment?

Posted in Advertising, Branding, Dilution, Famous Marks, Fashion, First Amendment, Squirrelly Thoughts

-Wes Anderson, Attorney During today’s first round of the Open Championship at Royal Birkdale, many a golf ball bearing the famous TITLEIST cursive script will be lofted into the heavens – meanwhile, back on the ground, the brand’s owner is attempting to stamp out a lewd parody of its trademark. An online golf apparel company,… Continue Reading

Sorry Justice Alito, “The Slants” is Not Okay

Posted in Branding, Famous Marks, First Amendment, Guest Bloggers, Law Suits, Mixed Bag of Nuts, Trademarks

– Jason Voiovich, Virtual Chief Marketing Officer, Vojvdec & Sigma According to the unanimous ruling by the US Supreme Court handed down last month, failing to allow registration of trademarks such as the “Redskins,” “Fighting Sioux” and “The Slants” violates the free speech clause of the First Amendment to the US Constitution. Writing for the… Continue Reading

The Slants, The Redskins, and Free Speech for All Parties

Posted in First Amendment, Law Suits, Mixed Bag of Nuts, Trademarks, TTAB, USPTO

This week’s Matal v. Tam (formerly Lee v. Tam) Supreme Court ruling serves as a reminder that free speech is a two-way street.  It also suggests the value of a sympathetic litigant, at least in terms of public response. Many rallied behind Simon Tam and his rock band, The Slants.  The band members, who are all… Continue Reading

THE SLANTS Decision Affects More than a 2(a) and an (R)

Posted in First Amendment

In Monday’s decision in the newly minted Matal v. Tam case, the Supreme Court affirmed the Federal Circuit decision that the Trademark Office’s refusal to register THE SLANTS mark on disparagement grounds was unconstitutional.  Many were not surprised by this decision, foreshadowed in part by the transcript of the January oral argument where the justices… Continue Reading

On Flag Day, What Flag Can You Protect?

Posted in First Amendment, USPTO

Today is Flag Day, which commemorates the adoption of the Stars and Stripes as our national flag 240 years ago.  Although maybe more obscure than Fourth of July or Memorial Day since it is not a federal holiday, this has always been one of my favorite American holidays.  There’s just something nostalgic, reverent, and almost… Continue Reading

While the Slants are in the Spotlight, Chief Wahoo is on Deck

Posted in First Amendment, USPTO

Throughout the past decade, attorneys, judges, plaintiffs, and defendants have invested thousands of hours in the fight over offensive trademarks. Most of the public is aware of the controversy surrounding the Washington Redskins, who continue to be embroiled in litigation that is currently pending with the Federal Court of Appeals for the Fourth Circuit. But… Continue Reading

Congratulations to Howard University’s 2017 McGee National Civil Rights Moot Court Team

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, Trademarks, TTAB, USPTO

It’s not every year that participants in the William E. McGee National Civil Rights Moot Court Competition need to understand the various nuances of federal trademark law. Yet, with the Lee v. Tam case pending before the U.S. Supreme Court, and Section 2(a) of the Lanham Act hanging in the balance, this was such a… Continue Reading