Slogans are commonly used by companies in marketing and promotion activities to draw public attention to goods and services. Through widely promoted commercials, certain slogans have become well-known: “Just do it”, “Because I’m worth it”, “The world’s local bank”, “Impossible is nothing”. In some cases, the fame of slogans can exceed brands’ own reputations.
In a ruling that has quickly spread throughout social media, the Trademark Trial and Appeal Board (the “Board”) issued an order cancelling six trademark registrations which contain the word REDSKIN (the “Redskins Registrations”), owned by the Washington, D.C. professional football team, the Redskins (the “Team”). In a divided ruling, the Board stated that the Redskin Registrations “must be cancelled because they were disparaging to Native Americans at the time of registration,” in violation of Section 2(a) of the Trademark Act, which prohibits the registration of trademarks that disparage persons or bring them into contempt or disrepute.
While there is some confusion about the implications of this decision for the future of the Team’s name, the Board prominently noted the limited effect of its decision at the outset of its opinion. Specifically, the Board stated that the decision only concerns the right to federal registration of REDSKIN-formative trademarks, noting that the Board lacks any authority to prohibit the Team from use of its REDSKIN-formative trademarks
Earlier this month, Radiance Harris and James Stewart attended a roundtable on trademark protection in social media. The event was hosted by the International Trademark Association (INTA) to create a forum for practitioners to share their experiences in this rapidly evolving area. This is a multipart series that will discuss potential pitfalls, enforcement mechanisms for brand protection, and strategic tips for engaging in social media.
Practitioners agree that social media is no longer a luxury for “early adopters” or “hip” brands, but a necessity for brands to leverage bilateral communication with consumers, thought leaders, and the press. If a brand does not have an active presence in social media, a user may create a presence for the brand. Sometimes these user-generated accounts can adopt a laudatory tone and engage consumers better than the brand could have envisioned engaging consumers. These accounts can grow to attract many thousands of fans. However, all too often practitioners have seen brands take an overly cautious stance and become the subject of a dreaded “smear account” (i.e. www.yourbrandsucks.com), in which the negative aspects of a brand or consumer experiences with a brand are highlighted.
These extremes aside, brand owners work hard to develop compelling intellectual property that uniquely resonates with consumers in a uniform and cohesive way. Even if a social media presence created for a brand does not adopt a negative stance, does it conform to the brand approved aesthetic? Are the correct logos, fonts, and colors used? If they are not, or worse, if the creator has a poor experience with the brand and the tone of the page turns negative, the brand does not have control or ownership of the page or the immediate ability to take control of the message. The brand may scramble to create its own “official” account to commence damage control, but many times this account will grow at a much slower rate than the rogue account. Often by the time the brand has come up with this alternative account, the rogue account has grown and an online multichannel social movement has come to life.
Unlike many countries, it is not possible to register trademarks for retail services in China. This position has recently changed with the implementation on January 1, 2013 of the revised Chinese Trademark Office (CTMO) trademark classification which now recognizes retail and wholesale services, albeit in a limited way. The CTMO’s revised classification now recognizes seven new items of services in Class 3509 covering “retail and wholesale services for pharmaceutical, veterinary and hygienic preparations and goods for pharmaceutical purposes.” These new service specifications will protect the sale of pharmaceutical, veterinary, and hygienic preparations across all points of sale, including traditional “brick and mortar” stores as well as online retailers.
By James Stewart
In an exciting development for the international trademark field, the Thai Parliament has issued its approval to move forward with Thailand’s proposed admission to the Madrid Protocol. The Thai Parliament must now amend its trademark laws to conform with the Madrid Protocol. Thailand’s Trademark Office has drafted these amendments which are currently under review. Upon completion of the review period, these revisions must be approved by the legislature. This revision and approval process will take approximately six months.
A recent decision of the Wenzhou Intermediate People’s Court in China should put Western brand owners on their guard when being sued in China. It also provides yet another reminder of the importance to Western brand owners of filing first in China.
“Real World” MTV reality star Johnny Devenanzio has allegedly threatened to sue producers of the popular HBO show “Entourage,” claiming that they stole his nickname “Johnny Bananas” without his permission. Devenanzio claims that he has diligently developed the nickname over the course of five years on television through his “jerk-off” antics on various MTV reality shows.
Under U.S. trademark law, personal names are often considered “merely descriptive” and, thus, are generally not protectable trademarks absent a showing of acquired distinctiveness. Acquired distinctiveness (also known as “secondary meaning”) is evidence that the proposed mark, which in this case is “Johnny Bananas”, has become distinctive as applied to the specified goods or services through exclusive and continuous use in commerce for at least five years.
In this instance, does Devenanzio have a valid claim of acquired distinctiveness in his nickname “Johnny Bananas” in connection with, perhaps, entertainment and/or television-related goods and services based on his alleged five-years use in commerce?