Artist painting subject in an art studio.

Types of Intellectual Property

Every single business uses, monetizes, or becomes involved in a legal dispute concerning some sort of intellectual property ("IP") during its lifetime. Thus, small businesses cannot afford to not have a basic knowledge of the various types of IP. Below is a high level overview each type.

Trademark

  • Protection of brand names, logos, slogans, or devices used to signify the source of goods and services.
  • Trade Dress, which is the packaging, configuration, design or even decor of a product or service, is a type of trademark.
  • Legal protection is provided by federal and state law.

Copyright

  • Protection of literary and artistic works.
  • Legal protection is provided by federal law.

Trade Secret

  • Protection of information, such as a formula, pattern, compilation, program, device, method, technique, or process that is economically valuable and not generally known or ascertainable by the public.
  • Legal protection is provided by federal and state law.

Right of Publicity

  • Protection of a person's name and likeness, prohibiting the public use of a person's name, photo, or likeness in trade, or for any commercial or advertising purpose, without the person's permission.
  • Legal protection is provided by state law.

Patent

  • Protection of useful and non-obvious technologies and inventions.
  • Legal protection is provided by federal law.

Greenway Law Firm, P.A. handles IP matters involving trademarks, copyright, trade secret, and rights of publicity. If you or your business are in need our legal assistance, please do not hesitate to contact our office.


Why Trademarks Matter: Part II

Read Part I of the series here, where I discuss the origins of the use of trademarks.

Part II: Trademark Laws & Federal Registration

The laws of the United States originated from the English common law system. English criminal and civil laws were either: 1) adopted by U.S. state and federal judges; or 2) English laws were codified into U.S. state and federal statutes. Our trademark laws were adopted in the same way. American trademark law began with the English Bakers’ Marking Law, evolved and expanded with the times, and was imported into the American colonies – just like the English black tea I enjoy every morning.

Historically, the majority of merchants operated locally, and sold a limited number of closely related goods. That all changed in the United States during the Industrial Revolution of the 19th century. As businesses invested more in developing a brand identity, diversifying its product offerings, and expanding geographically, they demanded that trademark laws expand its scope of protection. State and federal common law (or, judge-made law), and state statutes were not broad enough to protect businesses from the unauthorized use of their marks.

The trademark’s road to codified federal protection was a bumpy and winding one. However, I will not go into detail about the development of the federal statutory trademark system. Suffice it to say that the federal government’s international trade interests prompted Congress to enact federal laws on the subject of trademarks. Under the current trademark law system, the federal government gets its power to regulate trademarks from the U.S. Constitution. The Constitution provides that “Congress shall have the power… [t]o regulate commerce with foreign nations, and among the several states, and with the Indian Tribes….” U.S. Const. art. I, § 8, cl. 2 (emphasis added).

How are trademarks related to the regulation of commerce?

Trademarks are related to the regulation of commerce because a valid trademark must be used in commerce. According to the Lanham Act (the “Act”), which is the federal statute that governs trademarks, use in commerce “means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127 (2020). The Act provides examples of the proper “use” of a mark in connection with goods and services. For example, the Act states that a mark is used in commerce on services when the mark is displayed in the sale or advertising of the services, and the services are rendered in commerce.

In the last paragraph alone, I used the word “commerce” five times. So what is commerce? Black’s Law Dictionary defines commerce as “the exchange of goods and services, especially on a large scale involving transportation between cities, states, and nations.” Black’s Law Dictionary 285 (8th ed. 2004). Clearly, business that is transacted electronically and over the Internet, better known as e-commerce, falls into this definition of commerce.

Now that I have outlined why and how federal law regulates trademarks, we can explore the purpose of federal trademark registration. Before the development of statutory federal trademark laws, in a trademark infringement lawsuit, establishing ownership of a mark was an arduous and expensive process. Thus, a uniform registry that established trademark ownership was needed. A registry was also needed to protect marks used in international commerce.

The United States Patent & Trademark Office (“USPTO”), which manages the registration of trademarks, lists the benefits of trademark registration:

  1. A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  2. Public notice of your claim of ownership of the mark;
  3. Listing in the USPTO’s online databases;
  4. The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
  5. The right to use the federal registration symbol “®”;
  6. The ability to sue another regarding the trademark in federal court; and
  7. The use of the U.S. registration as a basis to obtain registration in foreign countries.

Protecting Your Trademark: Enhancing Your Rights Through Federal Registration, U.S. Patent & Trademark Office, 11-12 (2020), https://www.uspto.gov/sites/default /files/documents/BasicFacts.pdf.

The first benefit listed above is important because the difficulty trademark litigants faced in establishing mark ownership is boiled down to a legal presumption. Additionally, the primary reason why anyone or any business registers a trademark on the federal register is to obtain the exclusive right to use the mark nationwide. The second benefit in the list above is significant because with a federal registration, you are putting every other person, company, and entity in the U.S. on notice that you are the owner of the trademark, and anyone who infringes upon your mark should expect enforcement and potential litigation.

It is important to note that registration with the USPTO is not required to establish rights in a trademark. Registration provides the benefits listed above, but state laws and common law rights still exist to protect the use of trademarks on a state and geographically restricted level.

Finally, I want to end by stressing the importance of trademark use. As I previously defined, use in commerce “means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127 (2020) (emphasis added). This definition reveals that trademark law does not exist to keep someone else from using a mark that you have created. Simply put, if you do not use it, you lose it.

In Part III of my blog series, Why Trademarks Matter, I will discuss the value of trademarks in today’s business landscape, and the importance of trademark enforcement.

 


Why Trademarks Matter: Part I

The Trademark's Origin Story

If you are a business owner, you most likely deal with an extensive portfolio of trademarks, or at the very least, have a faint understanding of what a trademark is. But why are trademarks a valuable business asset, worthy of protection? Why do trademarks even matter?

I have watched enough Marvel® and DC Comics® movies to appreciate a good origin story. You really get a sense of who the character is, and why they do the things they do once you watch their origin story movie. So, I thought, in order to get a better understanding of the purpose and significance of trademarks, we must look to its origin story.

The use of trademarks began in the Stone Age, when livestock was branded to indicate ownership. Trademarks were also used in ancient times, when craftsmen and tradesmen would affix their name or symbol to their goods. Several sources cite the use of marks in trade by the ancient Egyptians, Greeks and Chinese. For example, pottery found and traced back to the Greek period reveal that potters carved marks, such as letters or numbers, in their pottery to identify themselves as the creator. Each of these trademarks simply indicated ownership, and distinguished one good from another.

Base of a Greek cup displaying a potter's mark.
The base of a Greek cup displaying the potter's mark.

Soon, as trade expanded, using a mark to indicate ownership and the source of goods became especially important to merchants whose goods moved in transit, as their goods were often at risk of being lost or stolen.

Even still, the purpose of using trademarks evolved from simply identifying the source of the goods, to protecting merchants from the unauthorized replication, or imitation, of their products.

The rapid growth of trade required the regulation of trademarks, as tradesmen required more protection against competitors trying to pass off their goods as that of another tradesman. Passing off ones goods as the goods of another deprives the true producer of its customers, business relationships, and reputation that he or she has built over time.

Thus, the very first documented trademark law was enacted by the English in 1266. The Bakers’ Marking Law required every baker to place a mark on the bread he baked. The provisions of the Bakers’ Marking Law made it easier for royal food regulators to track the source of bread that violated its quality and pricing rules. The law also allowed bakers to distinguish their bread from another baker’s bread. At this point in medieval times, the trademark started to hold intrinsic value, and so laws began to sprout up across Europe to protect that value.

In Part II of Why Trademarks Matter, I outline the background and purpose of the trademark laws.

 


We Have Moved to a New Office!

This past February, we moved our office from Temple Terrace to Downtown Tampa, Florida. We are excited to be in the hustle and bustle of downtown.

Our New Address:

501 E. Kennedy Boulevard

Suite 1400

Tampa, FL 33602

If you are coming to visit, please meet us on the 14th floor.

We have already unpacked, stocked the bookshelves, and are now ready to serve our clients in our new space. Come by and see us!

 


U.S. Supreme Court Allows Registration of "Immoral and Scandalous" Trademarks

Case: Iancu v. Brunetti, 139 S. Ct. 2294 (2019)

Decided on June 24, 2019

The Facts

Erik Brunetti, an artist and entrepreneur, filed a federal application to register his trademark FUCT as the brand name for his clothing line. The U.S. Patent & Trademark Office’s (USPTO) examining attorney denied his application, because the mark was “vulgar”. Brunetti appealed the examining attorney’s decision to the Trademark Trial & Appeal Board (TTAB). The TTAB also refused registration, finding that FUCT had “negative sexual connotations” and was “extremely offensive”. Brunetti challenged the TTAB’s decision, stating that it was a violation of the First Amendment of the U.S. Constitution.

The Law

  • The Lanham Act is a federal statute that governs the federal registration of trademarks. Section 1052(a) of the Lanham Act prohibits the registration of marks that consist of or comprise immoral or scandalous matter.
  • The First Amendment does not allow the government to discriminate against speech based on the ideas or opinions that speech conveys. Further, the government cannot discriminate against offensive ideas. This type of unconstitutional discrimination is called view-point discrimination.

The Reasoning

The government (USPTO) argued that the Lanham Act’s prohibition of the registration of immoral or scandalous marks was not view-point discrimination, but was actually viewpoint-neutral. The Court did not agree. The Court considered the dictionary definitions of “immoral” and “scandalous”, and reasoned that the Lanham Act allows the registration of marks when they are in line with, and do not defy, mainstream society’s sense of decency and morality.

The Court gave examples of how the USPTO applied this rule. The USPTO denied applications that seemed to approve of drug use (KO KANE and MARIJUANA COLA for beverages), but allowed the registration of marks that disapproved of drug use (D.A.R.E. TO RESIST DRUGS AND VIOLENCE). KO KANE and MARIJUANA COLA were marks that the USPTO deemed scandalous, as they seemed to glamorize drug abuse.

The government further argued that the Court should interpret Section 1052(a) of the Lanham Act in such a way so that it remains constitutional. The government wanted the Court to limit the application of the “immoral or scandalous” provision to marks that are offensive or shocking to the public because of their mode of expression (and not solely because of the views they express). More specifically, the government wanted the Court to limit the provision to marks that are lewd, vulgar or sexually explicit.

The Court refused to interpret the statute in the way the government suggested, as the Lanham Act’s prohibition did not provide such a limitation, but covered any mark considered immoral or scandalous. This was clear view-point discrimination.

The Ruling

Section 1052(a) of the Lanham Act, prohibiting the registration of marks deemed immoral and scandalous, violates the First Amendment.