Trademarks Containing Generic Words Can Be Registered

By Lum Law Group 0

On Tuesday June 30, 2020, the Supreme Court approved the trademark registration of “Booking.com” (Opinion of the Court), a generic term which was ineligible for trademark protection in the past. Booking.com had filed to register its domain name at the US Patent and Trademark Office. The office initially denied the registration, arguing that generic names are not eligible for trademark protection. Booking.com’s victory on Tuesday means the trademarks containing generic words can be registered in the future.

Considering trademarking a generic term for your business?

Contact us at 626-795-8886. Our attorney A. Justin Lum, Esq will help you.

Taco Tuesday and The

By Lum Law Group 0

So by now you’ve all heard about how a famous basketball player attempted to register a trademark for the term, “Taco Tuesday” and a university attempted to trademark the word, “the”.

Well, the first question is, what is a trademark? People often confuse copyrights, trademarks, and patents. Now although there can be an overlap, each concept is very distinct. A trademark is a word, or a design, that becomes associated with a company’s business; A copyright is an original design, while a patent is a new, or improved product, process, business method or design. So there is some overlap, but for now, let’s just focus on trademarks

A trademark (or service mark) is a symbol or a word or words, a “mark” that is, or becomes distinctive for a product or service. When you see the mark, you think of the business. The “apple” for Apple, Inc., the distinctive “M” for McDonald’s, the phrase “Just do it” for Nike. These are all registered trademarks. They are all distinctive for their companies and the companies’ products or services.

Recently, applications were filed to register “Taco Tuesday” and the word “the”. In both cases, the United States Patent and Trademark Office (USPTO) have denied their applications. It would seem obvious that you can’t register “The” or “Taco Tuesday” given the widespread use of both terms. But that isn’t always the case.

In the case of “the”, a generic term cannot be registered as a trademark, and you can’t get more generic than “the”, except for maybe “a”. The reason why this is not allowed is that since it is used all the time, if THE Ohio State University had a registration, they could literally stop anyone from using the on any shirt anywhere. That just isn’t going to happen.

“Taco Tuesday” is another matter. In fact there are two current federal trademark registrations for Taco Tuesday for restaurant services, only. However, in denying the application the USPTO stated that the mark is considered to be a “common place term, message or expression”. As such, it cannot be registered. The USPTO found it was also too similar to a registration for “Techno Taco Tuesday” in the same category of services. Thus, the term “Taco Tuesday” was registerable at one time, but at this time, it is now to common to be allowed registration.

However, as the attorneys for the applicant for Taco Tuesday have since stated, there can be another motive to file such an application: a statement from the USPTO that the term is commonplace, and therefore not registerable by anyone. Thus, it is likely that this determination would be used by individuals who might face litigation from the trademark holders for Taco Tuesday for restaurant services from attempting to broaden the scope of their own registrations.

Thus, the moral of this is that once you come up with a catchphrase for your business, better to protect it early, and police its use, before it becomes essentially a generic term.

How can a minor get a trademark or copyright?

By Jessica Suotmaa 0

Someone recently asked whether a minor, a person under eighteen years of age, can register a trademark or copyright.  Many answered that there are no federal age restrictions, but there might be restrictions in your state.  Some answered that the minor should incorporate and went on to explain how to go about becoming a shareholder in their state.  All of this is good advice, but we thought we would explain the why in addition to the how.

Can a minor register a trademark or copyright?

The answer is yes, a minor can own a trademark or copyright. There is no age restriction for registering a trademark or copyright.

However, a minor may not be able to enforce a trademark or copyright.  In federal court, a minor needs a guardian to sue for infringement. In most state courts, a minor would also need a guardian to be in charge of the business proceedings involving a trademark or copyright owned by a minor.

When does a minor benefit from incorporating and becoming a shareholder?

Depending on the state, incorporation comes with certain costs.  In California, the tax liability alone is a minimum of $800 annually. As such, we would not recommend just any minor with a copyright or trademark to incorporate.

Having said that, there are instances when incorporating would be beneficial to a minor with intellectual property.  Such instances would include minors who are in business and therefore have business income, earnings, and sales.  If a minor needs to sign contracts in relation to their intellectual property, then it may be beneficial to incorporate so as to protect the minor’s interests.

How does a minor form a corporation in the state of California?

In California, a minor cannot be a Director or officer for a corporation, but a minor of any age can own stocks.  This means a minor can be a majority stock holder in a corporation.

While the age restriction does mean the minor would need another trusted adult to act as an officer for the corporation, it also means that the minor can sue any of the officers as a shareholder.  This is an important protection for the minor in the event an officer or guardian acting as an officer, misuses the corporate funds or intellectual property.

 

Do you have more questions regarding minors and intellectual property? Contact an attorney today!

Example of trademark

By Jessica Suotmaa 0

Definition of a Trademark

The term “trademark” includes any word, name, symbol, or device, or any combination of the above that is

  • used by a person, or
  • which a person has a true intention of using in commerce and applies to register on the principal registry established by this chapter

(15 USC, Section 1127)

Legal professionals refer to trademarks, registered trademarks, and service marks as “marks”.

What are Trademark symbols?

Trademark symbols are notices of trademark ownership. When you see a word, symbol, or picture with a trademark symbol next to it, you know it has been registered in the federal database.

The three types of symbols are:

  1. Registered Mark – R – e.g. Nike’s “Just do it®” has been registered with the U.S. government, so Nike can use the ® symbol with its trademarks.
  2. Trademark – TM – e.g. Starbucks used ™ on their logo while waiting for their redesigned trademark to be approved
  3. Service Mark – SM – e.g. United Airlines’ catchphrase “Fly the Friendly Skies℠” is a good example of a company that provides services using a “service mark”

It’s important to note that companies/brands cannot use the ® symbol until their trademark registration application has been approved by the U.S. government. Pending trademarks should use the ™ symbol.

Ownership and Registration

  • Trademark Ownership – Created by use in commerce.  Ownership is maintained wherever the mark is used in commerce so long as it is used in commerce.
  • Federal Registration – Filed with USPTO – Term of a federally registered trademark – Registration is valid for ten years and is renewable before the expiration of the term.
  • State Registration – File with the California Secretary of State.

Why you should register a Trademark

No Registration – Can only prevent competitors from using a similar mark in a state, or part of state where your trademark was used first.  Governed by state unfair competition laws.  Damages limited to actual damages.

Federal Registration – Can prevent competitors from using a similar mark in all 50 states if competitor did not use the mark before you used your trademark, or before you registered your trademark.  Possible treble damages, attorneys fees and other remedies.  Possible injunctive relief.  Case is in federal court where the infringer has greater difficulty delaying case.

State Registration – Additional evidence of use (instate)

Who should register a trademark?

If you are forward thinking and want to protect your trademark before someone else realizes what a great trademark it is, or a creator who wants to protect their original work/art before someone starts copying it, we can help you protect your intellectual property.

If you’ve already registered intellectual property in the past, but you believe a competitor has infringed upon your intellectual property, we can help you litigate your case.

Have more questions about trademarks? Read more on how we can help your business secure your intellectual property!