In re Tam – Simon Tam’s Response to the PTO’s Petition for a Writ of Certiorari and grant of cert news

The Supreme Court granted the PTO’s request for cert in In re Tam (the “Slants case”).  Here’s a good summary of the case and our position by our co-counsel, Eugene Volokh.  Below is the Supreme Court brief his team at the UCLA Supreme Court Clinic helped us write, which I had neglected to share here.

Free “legal” advice — pro bono, that is

PayWhat do you know?  No one can own “pro bono” — regardless of how it’s spelled.  John Welch:

The USPTO refused registration of the mark PROBOKNOW, in standard character form, deeming it merely descriptive of “Operating an online marketplace for providers and consumers of free and affordable legal services.” The PTO maintained that the mark is the phonetic equivalent of “pro bono.”Applicant argued that PROBOKNOW will not be recognized as “pro bono,” but rather as a merely suggestive portmanteau of the terms “pro bono” and “knowledge.” Moreover, said applicant, the mark is a double entendre. How do you think this came out? In re Proboknow, LLC., Serial No. 86790769 (September 14, 2016) [not precedential].

John’s post, of course, gives you what you need to know about this decision.  The only real novelty here was the argument based on the “Pro bono” and “knowledge” melding, which the applicant argued amounted to a clever double-entendre entitled to protection.  Nope:

[A]pplicant’s argument that PROBOKNOW would be perceived as a melding of “pro bono” and “knowledge,” [but] there was no evidence to support that theory, nor is such an interpretation evident from applicant’s manner of use of the mark. Moreover, even if consumers perceive the mark as applicant asserts, the mark would still be descriptive of applicant’s services.

That part is a bit of shame, because it may be that the applicant could have or could develop such evidence.  On the other hand, if it does, it can apply and try its luck again.

On a more general note, however, the opinion sets out a couple of fundamental points of trademark law that are frequently overlooked by non-specialists.

  • Unusual or funny spelling has its place in trademarks, but neither of them can make a silk purse out of a sow’s ear.  The sow here is descriptiveness. “The novel spelling of a mark that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.”
  • Similarly, neither originality nor even exclusivity will make a flawed trademark better than it is.  “[E]ven if applicant is the first and only user of the term PROBOKNOW, it is still merely descriptive of the services, because it immediately describes an essential function, feature or characteristic of the identified services.”

loc-disclaimerHope that was useful to you.  And yes, it was no charge.  But as it says at right (or above this paragraph on your mobile), it wasn’t legal advice.

Mooning off into the sunset

Originally posted 2010-10-12 18:56:07. Republished by Blog Post Promoter

Marlboro Man

A real man's fake cowboy

The lawsuit by the Naked Cowboy against candymaker Mars has been settled. Terms are undisclosed, the filing of a stipulation of dismissal with prejudice a sorry fig leaf over this tawdry affair.

UPDATE:  This Naked Cowboy is seems to be the black-hat kind:  He went and sued some little lady called the Naked Cowgirl.  But according to this thorough treatment by someone’s trademark attorney (with all due respect, not, contrary to his suggestion, mine*), she’s ready, able and willing to shoot back.

*Maybe he should be though, for it says here that among his other unique offerings, he addresses the number-one concern of trademark clients (scroll down):   Respecting the planet, dammit!  “Nearly 100% of our trademark search and trademark registration services consume no paper products whatsoever.”  How does he do it?!  “We accomplish such a feat by communicating with both you and the Trademark Office electronically and over the telephone whenever we can.”
I’d like to see that, let me tell you.  Man. Nearly 100%!!
Anyway, it’s all good. Anyone who goes through the trouble of slamming Legal Zoom in a special dedicated section of his blog can’t be all … green.

Twice as nice in Ohio

Two times twice, really.  Next week I will be presenting in Ohio for the second time, which is nice twice once.

Nice twice twice is that this second presentation is the 26th All Ohio Annual Institute on Intellectual Property (AOAIOIP), being held this September 21-22, 2016 — and the twice there is that we do the program twice, two days in a row:  First in Cleveland and second in Cincinnati!

Nice!  Here’s the program (PDF).

You can register for Cleveland (Sept. 21) by clicking here.  You can register for Cincinnati (Sept. 22) by clicking here.


Covering your assets.

Originally posted 2013-09-24 16:02:50. Republished by Blog Post Promoter

Over the weekend, all the nerdiest news outlets reported that Volpin Props—a company that makes props and replicas “mostly videogame related,” according to the outfit’s Facebook page, “but anything goes!”)—received a cease-and-desist letter from Couristan, Inc., a rug and carpeting concern… for possibly the nerdiest/coolest reason imaginable (under the circumstances): Volpin had made for two attendees of the recent DragonCon—held at the Atlanta Marriott Marquis, a hotel with a wide variety of some very, very busy carpeting—custom camouflage outfits in the same pattern as one of the busier carpets at the venue. See a terrific photo here.

Does not wear carpet.

Does not wear carpet.

This probably would have been fine. That is, making custom carpet-camouflage costumes for a couple of conventioneers likely would not have gotten Volpin on Couristan’s radar. Or maybe it would have garnered Volpin praise from the carpeter. But Volpin didn’t just make the costumes; it reportedly put the fabric up for sale at, a site that sells fabrics, wallpapers, decals, gift wrap, etc. And that got Couristan’s attention—and Volpin got a C&D letter.

Because of course. And I mean that: Assuming that Couristan holds the copyright to the carpet pattern—and, man, what a pattern it is!—then Volpin can’t sell a fabric with that same pattern, else it infringe on Couristan’s intellectual property rights. And, to Volpin’s credit, the company’s principal—Harrison Krix, himself of Atlanta—has asked (on Facebook, where much of the public commentary has been posted) that people “not send Courtisan [sic] Inc or Marriott any nasty messages concerning this. I’m in complete agreement with their decision.”

(If you have three or four hours free, you might read the nearly 500 comments on Volpin’s Facebook posts about carpet-flage-gate. Then check out photos of all the carpeting at the Atlanta Marriott Marquis.)


Official, municipal and trademarkable

Originally posted 2012-07-23 14:01:30. Republished by Blog Post Promoter

A long time ago I asked this question about the aggressive IP — or quasi-IP — enforcement policy of New York’s Metropolitan Transit Authority:

[T]he libertarians remind us constantly, and accurately, that when something is everyone’s property, it is ultimately treated like no one’s property at all — which “everyone” ends up paying for. Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant NYC Subway Token 300x300 Taking the IP Trainexternalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

Since then I have twisted and turned on this issue, and above all concluded that the MTA’s policies were more opportunistic and inconsistent than anything else.

John Welch raises a related issue, reporting a decision at the Trademark Trial and Appeal Board:

 Facing an issue of first impression in two separate cases, the Board, in well-reasoned decisions, affirmed the PTO’s refusals to register the two design marks shown below on the ground that each mark comprises a governmental insignia that is barred from registration by Section 2(b) of the Trademark Act.

In re The Government of the District of Columbia, 101 USPQ2d 1588 (TTAB 2012) [precedential]. The Board affirmed a refusal to register the official seal of the District of Columbia for various goods, including clocks, cufflinks, memo pads, pens and pencils, cups and mugs, and various clothing items.

Section 2(b) prohibits registration of any mark that “consists of or comprises 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.” Here there was no dispute that the applied for mark was the official seal, nor that the District of Columbia qualifies as a “municipality” under the statute.

The Board found the language of Section 2(b) to be “plain and clear on its face.” The text of the statute provides for no exception to the ban on registration, even when a governmental entity is the applicant. . . .

Applicant . . .  maintained that Section 2(b) is ambiguous, as evidenced by the PTO’s issuance of three third-party registrations for governmental insignia, as well as by the TTAB’s decision in In re U.S. Dep’t of the Interior, 142 USPQ 506 (TTAB 1964), where the Board reversed a refusal to register a logo of the National Park Service. The Board observed, however, that in the Interior case it concluded that the involved logo was not the type of mark prohibited by Section 2(b) because it was not an official insignia of national authority. In other words, Section 2(b) does not bar a government body from registration of any and all marks, just insignia “of the same class as the flag or coats of arms of the United States.”

So that would seem to neatly cover my train insignia question, though, as I have pointed out in other posts, the MTA has arguably seriously undercut any claim it may have with respect to their exclusive use as identifiers of specific transit services by indiscriminate licensing.  That’s what makes this part of John’s post about the decision interesting:

Relying on certain language in In re U.S. Dep’t of the Interior, Applicant urged that it sought registration of its seal not as a “symbol of authority,” but rather in connection with specific municipal services, and therefore its application falls outside the Section 2(b) bar. The Board, however, found that interpretation to be a misreading of Interior because that case does not support the contention that the nature of the involved goods or services is a factor in determining whether Section 2(b) prohibits registration.

An interesting issue.

Talking a leak

Originally posted 2013-11-03 23:05:02. Republished by Blog Post Promoter

Want to know the difference between a leaker and whistle-blower? Johnny Dollar posits the distinction.

Louis Vuitton — the big IP player that keeps on giving

Ah hah!  Two of my favorite subjects, like peanut butter and chocolate, in one candy bar:

From the “On the Case” Reuters post by Alison Frankel:

To just about everyone but Louis Vuitton, the joke is obvious. Inexpensive canvas totes decorated with cartoon versions of famously expensive, iconic designer handbags? That’s funny – especially because the name of the company that makes the totes is My Other Bag, a play on the “My other car is a ” bumper stickers people used to paste on beat-up cars. To highlight the humor, the company name appears in large, loopy script on the other side of the tote bags. No one with even the faintest sense of irony would confuse My Other Bag’s $35 tote bags with actual Louis Vuitton (or Chanel, Hermes or Fendi) pocketbooks.

Louis Vuitton, of course, is famous for its inability to tolerate any ribbing, however gentle, that involves its classic toile monogram. In 2014, the company sued My Other Bag in federal court in Manhattan for trademark dilution and copyright and trademark infringement. U.S. District Judge Jesse Furman granted summary judgment to My Other Bag on all of Louis Vuitton’s claims last January, writing (with his own cheekiness) that the handbag maker “is perhaps unfamiliar with the ‘my other car’ trope. Or maybe it just cannot take a joke.” . . .

Proving that it has absolutely no sense of humor (in the unlikely event more evidence were needed), Louis Vuitton appealed the summary judgment ruling to the 2nd U.S. Circuit Court of Appeals, arguing that Judge Furman misapplied the law.

That’s when things got interesting: The case blew up into a full-fledged constitutional inquiry into the intersection of trademark law and the First Amendment.

Cool, right?  And here come the profs: Read More…

Avvo ranks us

Originally posted 2011-09-07 23:59:22. Republished by Blog Post Promoter

From the Avvo Blog:

[W]e threw together this auto-updating list of over 300 legal blogs ordered by their Alexa traffic ranking.

Now you can:

– Know who has the most popular legal blog based on objective, third-party data.

– Understand why blogs rank where they do.

– Track changes every weekday.

OK, I might skip a weekday or two.  But it is an interesting list.  They listed 369 law blogs and acknowledge that some are left out because they resolve to sub-domains, which confuses Alexis.

Oh, sure, LIKELIHOOD OF CONFUSION® is on the list.  Silly.  Of course.

Oh, you want to know the rank?  Oh, 75th.  Come on, no one cares. I think among IP blogs this one is probably in the top 10 on that list ok?  Right in that sweet spot, no problem.

Hey, there are some very interesting blogs on that list, too.  And… hmm.

You know, I’m always particularly interested in really slick, well-designed law firm blogs with the contact phone number right up top that rank really close to mine… yeah, they have blogrolls… and don’t link to a single law blog you ever heard of.  Almost as if they only link to blogs that are also customers of the consultant that really “does” their blog– let’s say, for example, an outfit such as Justia Legal Marketing Solutions. Or something. Which is entirely their right to do, and hey, look at that Alexis ranking!  Of course it’s our right not to link to such prepackaged presentations, too, no matter what they say, but who cares about the spirit of the Internet and all that — it’s every man for himself!

Interesting.  Hey, great list.  Alexis rankings, cool!

Universal Declaration of American Rights

Originally posted 2005-09-05 20:23:57. Republished by Blog Post Promoter

Derek Slater of the EFF’s Deep Links blog is unhappy — hat tip to Donna Wentwirth — about “general search warrants” being issued in India to bring the file-sharing crusade to those ruddy-golden shores:

These kinds of warrants are ripe for abuse. That’s why they’re prohibited in this country under the Fourth Amendment, which was prompted by British abuses of power during colonial times. The MPA has the right to go after those suspected of infringment all around the globe, but it should be ashamed of using tactics that ignore basic civil liberties.

Really? From what I read, since a few years ago India has been a sovereign country with its own laws and constitution, and a democracy as well. For some reason, in its wisdom India decided not to replicate the U.S. Constitution. It’s astonishing to me that anyone would suggest that anyone with a legal beef in India should unilaterally adhere to abstract principles of “basic civil liberties,” or those enshrined in the constitutions of other countries, as part of its legal strategy. It’s also quite a dollop of legal ethnocentrism.

It’s really not as complicated as all that, however. Slater simply doesn’t like the plaintiff in these cases — the Motion Pictures Association — nor its litigation goals. That’s what is called “outcome-based” legal argumentation — I don’t like the result so I’ll cook up a new pseudo-principle of law to get me an better one. I hope you’ll excuse me for assuming that no one is about to suggest, in adherence to this new international legal principle, that “the defendants in the Indian MPA litigation should volunteer to comply with the voluntary disclosure rules of Federal Rule of Civil Procedure 26(e), which was enacted because Congress and the Supreme Court believed there was excessive gamesmanship in the discovery process.”

But Ron, there’s a difference between the Federal Rules of Civil Procedure and the Fourth Amendment, for heaven’s sake!

Not in India there isn’t!

Now, there are plenty of real issues to argue about, and I tend to agree that the MPA is going about this all wrong. But fuzzy-headed simulations of legal or constitutional arguments are not going to win the day with anyone.