Will Phonetic Profanity Be OK to Register as a Trademark??

SCOTUS granted certiorari to and recently heard arguments on the case of a guy trying to register FUCT as a trademark. The question: Can a phonetically profane word be registered as a trademark?

The US Patent & Trademark Office denied registration of the mark based on its obvious similarity to the past participle of a verb commonly recognized as profane. The case has wended its way through the appellate process (US District Court for DC, Federal Circuit) and now sits before the Nine Wise Ones where it asks them to decide whether a long-standing rule prohibiting the registration of profane words interferes with the trademark holder’s First Amendment free-speech rights. They heard oral arguments on 15 April 2019.

The Roberts Court has a history with disparaging marks, having allowed SLANTS (which the USPTO denied based on its derogatory reference to Orientals) only last year. But SLANTS is not outright profanity. FUCT, phonetically, is. It’ll be interesting to see what this blatantly conservative Court does with FUCT. Seems to me that either the trademark holder will be FUCT or the public will be.

Matal v. Tam, ___ US ___ (2017)

SCOTUS handed down a HUGE trademark decision yesterday.

Matal v. Tam declares the language of 15 USC 1052(a), which prevents the registration of marks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead” to be unconstitutional under the First Amendment’s Free Speech clause.


This opens up a whole new world of potential trademark registrations.


Apple Customer Service

I got an email purportedly from iTunes on Thursday telling me that I had purchased a piece of software for $899.99, adding in sales tax (at the proper rate), giving me a registration key and giving me a link to go for “support.” The email looked authentic; it correctly used Apple’s trademarks and it had me — um — worried.

Problem: I never made an $899.99 purchase from iTunes in my life.

I called Apple Support and, after being shuffled around a bit, I ended up with a customer service rep who was absolutely on the ball; she had me on hold, but every couple of minutes she checked back in with me to let me know she hadn’t forgotten me. She tracked down the source of the email (it turned out to be a phishing email) and got right back with me to let me know not to worry about the email unless I had clicked a link (I never click links in emails I don’t recognize; no one should).

Apple did its job well, and I am delighted with this person I spoke with. She was pleasant, professional and personable. She handled my problem with grace.

Sometimes customer service actually happens; it did for me. It’s a small thing to be thankful for this Thanksgiving weekend, but the small things add up. Happy Thanksgiving weekend to one and all!

The FTC Finally Targets an IP Troll

For any who don’t know, a “troll” is a company (and its lawyers) that sends out thousands of cease-and-desist letters threatening a lawsuit against a supposed infringer of that company’s supposed intellectual property. It’s a nasty practice that has brought the trolls (and their lawyers) many hundreds of thousands of dollars over the years. Finally, the Federal Trade Commission is beginning to protect the innocent public against these unscrupulous “licensing” demands.

USPTO and Politically Correct Speech

The US Patent & Trademark Office issued a ruling that the name of the Washington, DC NFL football team is derogatory and offensive toward Native Americans. They cancelled the trademark.

The Washington team has had its name since 1933. They started out in Boston as the Boston Braves in 1932, becoming the Boston Redskins when they moved to Fenway Park in 1933. Boston, in colonial times, had a friendly relationship with the surrounding Native American nation; the Native Americans and their new neighbors coexisted peacefully (for the most part) and helped each other out. The team’s founder respected that history when he named his team after the proud Native American.

The football team moved to DC in 1937 and was, from that day til this, known as the Washington Redskins. Their logo is a very handsome Native American brave, who signifies very well a tough and successful football team.

Evidently the USPTO is falling for the current trend toward politically correct speech, something a government agency has no business doing. This mark is almost 100 years old. It is a famous mark. And it will now cost the Redskins franchise $millions to rebrand. That, of course, will be reflected in an increase in ticket prices, which deleteriously affects the public. This is all for something I have trouble comprehending. I would think that naming a successful football franchise after the proud people who originally found this continent and helped their neighbors through tough times would be something that honors the Native American, not something that denigrates them.

A line needs to be drawn somewhere on all this political correctness; canceling an old and famous mark that honors the Native American by naming an NFL franchise after them goes, in my book, more than a little overboard.

All this politically correct speech has me flummoxed. I give up. I shall continue to simply call a spade a spade; if you find that to be offensive or politically incorrect, you’re welcome to call me whatever politically incorrect term for a white Anglo-Saxon Protestant you can come up with — the two I know of are a WASP and a honkey (a term that I find hilarious because it is actually accurate). I won’t get mad over noises.

Washington Redskins

It’s been quite some time since I posted to this blog, and I have to come back with a rant.

The Washington Redskins are an NFL football franchise. Nothing more, nothing less. However, their name is evidently a political fireball.

The pro column for changing the name is limited to political correctness, which, I’m sorry, I have a problem with. We can’t call a spade a spade these days without offending someone. I don’t even know if those who are of Native American descent are offended by the NFL’s calling their Washington team the Redskins. Me, I look at it as the team based in our nation’s capital is honoring the Native Americans. But I guess that’s not the politically popular view these days.

The con column for changing the name is legion. The team will have to spend $millions to re-brand itself. The logo will have to be changed. The colors will have to be changed. The stadium and road signage will have to be changed. The direct marketing collateral will have to be changed. And what about all those franchise-specific marketing paraphernalia — the mugs, the hats, the key rings, the sports cards, the kids’ uniforms bearing RG3’s number? Those will all have to be changed. Redskins sports memorabilia bearing the Redskins logo and name won’t exist, and that will do a number on the market for that memorabilia.

Can’t we just call a spade a spade?

Starbarks and Starbucks: A Story of a Trademark Problem

Starbucks objects to the name of a new dog daycare facility outside of Chicago. Starbarks is evidently too similar to Starbucks for the coffee chain. They’ve sent a cease-and-desist letter threatening legal action unless the owner changes the name post haste.

Andrea McCarthy-Grzybek, who co-owns the Illinois facility, can’t afford to pursue the case in court, so she, having just launched her business, says she will comply and change the name, even though she insists that any resemblance to the Starbucks name is merely coincidental.

Trademark infringement is determined by a series of factors which descend from Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir. 1961), specifically: “…the strength of his make, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant’s good faith in adopting its own mark, the quality of defendant’s product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities–the court may have to take still other variables into account.” Every circuit court of appeals in the US has adopted its own very similar list of factors that it looks at for trademark infringement claims.

If I were the judge deciding this case under Polaroid, I would analyze this as follows:

1. Strength of the mark: Starbucks is an arbitrary mark, which is strong; an arbitrary mark is a mark that uses existing words to mean something entirely out of the context of the meaning of the word or words. Furthermore, the Starbucks mark is famous; Starbarks is more suggestive for the services provided; dogs bark, this is a dog day care facility, which makes Starbarks a more suggestive mark, which is weaker than an arbitrary mark. This factor leans toward Starbucks.

2. Similarity between the two marks: Starbucks vs. Starbarks has two letters’ difference. That’s pretty similar. Furthermore, Starbucks has as one of its logos an oval or circle with the word STARBUCKS in the top side of the rim, a star on each side of the word, and COFFEE in the lower portion of the rim, with a stylized face inside; This logo, although color is not a registered part of it, is generally shown in green and white. Compare that to the logo shown on the poster made by Starbarks, shown here. To my eye, these two marks are disturbingly similar, leaning this factor toward Starbucks.

3. Proximity of the products. Coffee … doggie day care. Not similar at all. This leans toward Starbarks.

4. Likelihood that the prior owner will bridge the gap. Is it really likely that Starbucks, known for its coffee and related products, actually going into the dog-walking business? Probably not. This leans toward Starbarks.

5. Actual confusion: We know of no one who has actually confused Starbucks and Starbarks; if it is indeed the case that no consumer actually confused the two businesses, this factor leans toward Starbarks.

6. Reciprocal of defendant’s good faith in adopting its own mark: Ms. McCarthy-Grzybek insists that any resemblance to the Starbucks name and logo is merely coincidental. If that’s true, her good faith is large, which would lean toward Starbarks; if, as Starbucks would very likely maintain if the case were to go to court, this factor would lean toward Starbucks.

7. Quality of defendant’s product: We know nothing of the quality of the dog-sitting service Ms. McCarthy-Grzybek provides. Assuming it’s of a reasonable quality, this factor would lean toward Starbarks; if she neglects the dogs or otherwise does not perform her duties in the way a reasonable dog-sitter would do, it would lean toward Starbucks.

8. Sophistication of the buyers: Both companies have the upscale general public for customers. The courts have repeatedly held that the general public is not a sophisticated buyer. This factor leans toward Starbucks.

Solely on the Polaroid analysis, Starbarks, the Doggie Daycare, could win. However, there’s another prong to a trademark infringement suit. Because the Starbucks mark can easily be proved to be famous, the spectre of trademark dilution raises its ugly head. Starbucks, once it shows its mark is famous, has standing to prevent anyone, no matter how disparate the product or service, from using a mark that is similar to its own. The logic behind that is that since a famous mark is so well known among consumers, those consumers automatically assume that a mark that is similar to a famous mark is affiliated with the owner of the famous mark regardless of the product or service being sold.

Frankly, I don’t see much hope for Starbarks under the dilution doctrine. It is wise of Starbarks’ owner to decide that changing the name and the logo of the doggie daycare business to something that does not come anywhere close to Starbucks’ name and logo is the way to go.

Starbucks is Revamping Its Image

They just unveiled their new logo. See the Yahoo! story.

Companies update their logos from time to time, and the changes, as long as they don’t completely change the logo, are considered to be part of the continuous use of the logo. For example, the little girl carrying the spilling salt on the Morton Salt container has undergone wardrobe and hairstyle changes from her debut appearance in the early part of the 20th Century. Even with the changes, the mark is deemed to have been in continuous use since the spilling salt’s introduction.

Starbucks is following suit; they have modified their logo four times in the last 40 years, yet their logo is deemed to have been in continuous use.

Chinese search engine Baidu sues Register.com

…for allowing cyberterrorism against it.

Evidently, hackers got into the baidu.com website and posted an Iranian flag and a broken Star of David. Baidu claims that this damaged its reputation in the world marketplace, and perhaps it did.

It’s going to be interesting watching this battle. Is Register.com responsible for the activities of the hackers? Should they have taken further steps to protect the baidu.com domain? If so, what should those steps have been?

Stay tuned for the answers to these and other questions….