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If you have a business and a product to sell, you may already understand the importance of branding. Trademarks are one way to create a brand, making them a critical part of any long-term marketing plan.
How do potential customers know that a product is yours? What are the words, sounds, or images that catch a person’s attention and identify your products? How can you protect your trademarks?
Below, I’ll discuss what a trademark is, whether you need to register your trademarks to protect them, and two recent US Supreme Court decisions that will allow you to register “immoral” or disparaging trademarks.
Your SC business and entertainment law attorneys at Axelrod and Associates can help you to identify the trademarks that bring the most value to your business and register those trademarks with the Patent and Trademark Office for maximum benefit.
Whether you are just starting a new business venture or you have a well-known trademark that needs to be registered, call us now for a free consultation to find out how we can help.
Trademarks are an indispensable tool in the growth and marketing of any business. But what is a trademark?
A trademark can consist of words – a single word or a phrase that is associated with your business or product. For example, do you recognize the phrase, “Just Do It?” Although the words “Just Do It” have no logical connection to shoes, it has become an integral part of Nike’s advertising and is easily recognized as connected to Nike products.
Trademarks can also be images. For example, the “swoosh” that readily identifies shoes as Nike products is another trademark owned by Nike.
Logos can also be trademarked. A logo is a symbol or design that is used to readily identify a product, and it can consist of words, images, or a combination of both.
Even sounds can be trademarked – for example, the three notes used by NBC or the short “fanfare” played at the beginning of 20th Century Fox films. Cardi B recently attempted to register “Okurrr,” a signature sound that she makes by rolling the r’s at the end. It was rejected, but only because others have used the sound and the US Patent and Trademark Office found that it is a “widely-used commonplace expression.”
You don’t have to register your trademarks.
If you do not register a trademark, you can still use it as long as you are not infringing on someone else’s trademark. Even if your trademark is not registered, you can still enforce it against infringers and prevent others from using it.
So, why register a trademark?
Registering your trademark provides additional, valuable benefits, including:
The Patent and Trademark Office may decline to register your trademark pursuant to 15 USC Section 1052, which prohibits:
The US Supreme Court has found, however, that the code sections prohibiting “immoral or scandalous” or disparaging trademarks are unconstitutional.
In Iancu v. Brunetti, decided June 24, 2019, the US Supreme Court found that the prohibition on “immoral or scandalous” trademarks violates the First Amendment because it allows the government to discriminate based on the trademark applicant’s viewpoints:
The PTO, for example, asks whether the public would view the mark as “shocking to the sense of truth, decency, or propriety”; “calling out for condemnation”; “offensive”; or “disreputable.” … Using those guideposts, the PTO has refused to register marks communicating “immoral” or “scandalous” views about (among other things) drug use, religion, and terrorism. But all the while, it has approved registration of marks expressing more accepted views on the same topics.
For example, the PTO has rejected trademarks for:
While denying the above trademarks as scandalous because they “inappropriately glamorize substance abuse,” the PTO approved trademarks including:
When it comes to religion, the PTO has a clear preference for Christians and Christian beliefs, rejecting “Agnus Dei” for safes and “Madonna” for wine because “they would be ‘offensive to most individuals of the Christian faith’ and ‘shocking to the sense of propriety,’” while approving “Praise the Lord” for a game and “Jesus Died for You” on clothing.
Two years ago, in Matal v. Tam, the US Supreme also invalidated the code section that prohibits the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.”
As with the prohibition on scandalous trademarks, the Court found that the prohibition on disparaging trademarks violates the Free Speech Clause of the First Amendment because it permits the government to ban trademarks on the ground that they express offensive ideas.
Your Myrtle Beach intellectual property attorney at Axelrod and Associates is prepared to help you to protect your intellectual property rights, including registering your trademarks, copyrights, or patents, and enforcing your intellectual property rights when someone infringes on them.
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