Page 42 - AVN August 2017

BUSINESS
ROCKING THE FIRST AMENDMENT
The ‘Slants’ ruling: Trademarks are protected
THIS MONTH’S COLUMN IS LONGER than customarily is the
McDonald’s World Headquarters is required to slap them on the wrist to be sure that they toe the mark.
case, but for good reason. The topic—the Supreme Court’s
Failing to do that would open them up to a claim that their trademark does not fairly represent a particular
decision in Matel v. Tam, the so-called “Slants” case—which
kind and quality of product.
seems rather straightforward, is loaded with subtle,
Trademarks come and go automatically. There is no registration requirement for trademarks, unlike, for
bombshell political underpinnings. Matel v. Tam, ___ U.S.
example, patents. If you use a trademark or trade name, it is yours, so long as it doesn’t infringe on one
___, 137 S.Ct. 1744, ___ L.Ed.2d ___ (June 19, 2017).
that someone else owns. Similarly, if you stop using it, it is considered abandoned and you lose it, even if
The practical result of the case to this industry seems
it is registered.
fairly clear: Federal trademark registration cannot be denied
Historically, trademarks were many times geographically limited. For example, if you owned a hardware
because the trademark expresses an unpopular message.
store in Twin Falls, Idaho, the trademark you had for that business would be limited to the Twin Falls
That had not been the case prior to the relentless battle
area of Idaho. The Internet, however, has changed all of that, given that materially every business has a
mounted by the rock band The Slants with the United
website.
States Patent and Trademark Office (the “PTO”).
Both the federal government and the states have mechanisms for registration of trademarks. The focus
Analyzing this case requires a review of general
here is the federal one, which as a general proposition is by far the most important. (State trademark
trademark principles, how federal trademark registration
registration may or may not confer additional benefits, depending upon the state you are in. Ask your
operates; and a little history of the PTO’s consistent
attorney.) Federally registered trademarks (and only federally registered trademarks) are indicated by the
rejection of controversial trademarks. The impact of this
® symbol, with which you probably are familiar. There also are the ™ and ℠ symbols, with which you
case clearly will be to “un-cancel” the registration of
likely are equally familiar. They do nothing more than tell the world that you are claiming that with which
the Washington Redskins football team, and permit the
it is associated as your trademark or service mark, respectively, which is worthwhile.
registration of many other very controversial ones.
Federal trademark registration confers substantial benefits to the registrant. First,
once you file your registration application with the Trademark Office (The
Trademarks and Registration
Trademarks (which, as used here, include service marks)
are words or symbols that distinguish the origin of
goods and services. Trademarks function to protect
both consumers and commercial interests. Those, of
course, are each important interests. There are now
more than two million active trademarks that enjoy
federal registration; and the number of trademarks
that are valid although unregistered is staggering, an
unimaginable number.
To use an example, take two trademarks with which
everyone is familiar, “McDonald’s” and the
“golden arches” that tower over most every
McDonald’s in the world. When the first
McDonald’s was opened over a half-
century ago, it had no trademarks,
registered or otherwise. But when
it started selling hamburgers at
its McDonald’s business with
the golden arches rising above
it, McDonald’s garnered two
common-law trademarks. That
is, McDonald’s could prevent
any competing hamburger
joint from using either mark.
As noted, that serves two
important public interests.
Interest Number One is for
McDonald’s. Other hamburger
joints are prevented from
trading off of the famous name
to gain an unfair competitive
advantage. Interest Number Two
is for the consumer. Whatever
your opinion of the food at
McDonald’s may be, if you go into
one of those places beneath the
“golden arches,” you know what to
expect, right down to the amount of
salt on the fries.
It is for the latter interest that
trademark owners are required
to “police” their trademarks. If
a McDonald’s franchise fails to live
up to McDonald’s quality standards,
United States Patent and Trademark Office, or the “PTO”), you secure your
“place in line.” It is for that reason that the trademark office allows “intent
to use” (or “1(b)”) applications. Second, after five years, you can file the
appropriate papers and your registration becomes largely incontestable.
That’s a biggie!
Federal trademark registration is not automatic, although the
process is relatively straightforward (though not so much that a non-
lawyer should attempt it). First, you complete an online application
and pay the filing fee (a little over $300). Unless it’s an intent-to-use
application, it must include a “specimen” that establishes how the
mark is being used. For example, if the trademark is for
the name of a product, you might include a photo of the
packaging, showing the use of the mark (in interstate
commerce, by the way).
The application is then assigned to an
examining attorney. The examiner will
review the application to determine
whether it was done correctly,
whether the applied-for mark
infringes on any existing mark and
whether there is any part of the
mark that must be disclaimed. (A
“McDONALDS HAMBURGERS”
trademark, for example, must
disclaim any special right to the
use of the word “hamburgers.”)
If the examining attorney
doesn’t like something about
your application, he or she issues
an “office action,” to which you
will have six months to respond.
The most common of office
actions consist of a complaint
about the description of the
goods or services attached to
the mark.
Usually what happens is
that the response to the office
action satisfies the examining
attorney. In that event, the mark
is “published for opposition” for 30
days and, if there is no opposition, the
registration is granted and the applicant
can (in fact, must) commence using the ®
next to the mark.
42 | AVN.com | 8.17
LEGALESE | By Clyde DeWitt