What is a trademark?

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.

WHAT IS A TRADEMARK?

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 20^th 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.”

Why Do I Need to Register a Trademark?

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:

• Registration is “prima facie” evidence of your trademark’s validity;
• Registration provides “constructive notice” of your ownership of the trademark, whether the infringer saw the registration or not – which will shut down some potential defenses in an infringement action;
• Nationwide enforcement of your trademark; and
• When registering your trademark, you will discover if anyone else is already using the same or a similar trademark.

DOES THE PATENT AND TRADEMARK OFFICE (PTO) EVER DENY TRADEMARK REGISTRATION?

The Patent and Trademark Office may decline to register your trademark pursuant to 15 USC Section 1052, which prohibits:

• Deceptive trademarks;
• Immoral or scandalous trademarks (but see Iancu v. Brunetti, discussed below);
• Trademarks “which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” (but see Matal v. Tam, discussed below);
• Trademarks that contain “the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof;”
• Trademarks that contain “a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;”
• Trademarks that are likely, “when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive;”
• A trademark that is “merely descriptive or deceptively misdescriptive of” the product;
• A trademark that is primarily geographically descriptive or “geographically deceptively misdescriptive” of the product; and
• Trademarks that are primarily surnames.

The US Supreme Court has found, however, that the code sections prohibiting “immoral or scandalous” or disparaging trademarks are unconstitutional.

Immoral or Scandalous Trademarks

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 registrati