The internet started out as a vast free speech zone, where Americans were protected by the First Amendment. The same internet is also the backbone to a $700 billion dollar e-commerce economy in the United States. Today, online shoppers can buy virtually anything. Trademarks operate at the junction of these competing pressures by constraining certain speech as it relates to products. Trademarks limit which words can be used with which products, the intention being to protect consumers by providing certainty as to the origin and quality of the goods they buy.

If you sell a branded product or service online, then a trademark attorney will likely urge you to secure a federal trademark registration with the United States Patent and Trademark Office (USPTO). In fact, Amazon now requires vendors to have a federal registration to enroll in Amazon’s free Brand Registry, which helps to prevent online fraud and counterfeit products.

The United States Supreme Court has recently taken a renewed interest in the proper boundaries of trademark law, offering landmark decisions in 2017 and 2019 that required trademark law to be viewpoint-neutral and prohibited trademark law from restricting the moral content of proposed trademarks. This is a short recap of how we got there.

Federal trademark law prior to 2017.

The original intent of Federal trademark regulations was to safeguard not only the integrity of brands, but also the moral sensibilities of the public. The trademark laws, at 15 U.S.C. § 1052(a), precluded federal registration of any trademark that “consists of or comprises immoral, deceptive, or scandalous matter.” This law denied registration for marks having religious connotations, drug references, sexual innuendos, and real or perceived obscenities. However, as the moral norms of society evolved, the tension between the freedoms expected under the First Amendment and the speech restrictions of the trademark laws increased.

The process of registering your trademark is usually straightforward. You apply with the USPTO, and an Examining Attorney decides if your trademark meets the requirements. However, prior to 2019, the Examining Attorney would deny your trademark registration if they believed your branding was immoral, deceptive, or scandalous. You could potentially miss valuable federal trademark benefits and rights based on the moral compass of your randomly assigned Examining Attorney.

As you might imagine, this morality standard was not consistently applied. Take for example the trademark application for “MADONNA” as a brand for wine. The Examining Attorney rejected the mark as too scandalous an association of our Virgin Mary with alcohol. Conversely, a different Examining Attorney approved registration of “AMISH” as a brand of cigars. 

The unfairness evident in the unequal application of the morality standard brought attention to a much more fundamental underlying problem: whether morality restrictions—applied uniformly or not—themselves violated the constitutionally protected rights of free speech and expression. 

Matal v. Tam, 2017

The Supreme Court began to walk back the ability of trademark laws to limit the First Amendment in Matal v. Tam. Tam is a musician of Asian-American decent. He sought—and was initially refused—a trademark registration for his band’s name “THE SLANTS.” Tam acknowledged that “slants” is a derogatory term for Asian persons, and he intentionally chose the name to lessen its derogatory force. The USPTO denied his application under § 1052(a) for disparaging or bringing into contempt or disrepute any persons living or dead.

In Tam, the Court held that trademark registration criteria must be viewpoint-neutral to be valid. Which is just a fancy way to say the First Amendment does not allow speech to be restricted based on the ideas or perspectives that speech expresses. Writing for the majority, Justice Alito stated, “giving offense is a viewpoint . . . the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”

Iancu v. Brunetti, 2019

Building on Tam, the Supreme Court made another big change to trademark law in 2019 with its decision in Iancu v. Brunetti. Here, the Court struck down a provision that precluded federal registration of any trademark that “consists of or comprises immoral, deceptive, or scandalous matter.” 

In Brunetti, the Examining Attorney refused registration of the trademark for “FUCT,” which Brunetti asserted was the acronym for the slogan “Friends U Can’t Trust.” Arguing before the Supreme Court, Brunetti claimed it is not the government’s job to decide what is “immoral, deceptive, or scandalous.” 

The International Trademark Association, along with many other powerful voices in the law, joined the fight on behalf of striking down the morality provisions. The American Intellectual Property Law Association, having 13,500 attorney-members, also submitted a brief arguing the morality provision was unconstitutional.

Notably, even Americans for Prosperity, a group known for their support of conservative values, submitted briefs urging the Supreme Court to strike the morality provision as violative of the First Amendment. 

In defense of the challenged provision, the USPTO argued it was an appropriate function of trademark law to permit the registration of only those trademarks that are suitable for all audiences, including children.

In finding the provision unconstitutional, the Court reaffirmed that the government cannot offer or deny protections based merely on whether the government agrees with the speech. Applying that fundamental principle to the trademark provision at issue, the Court held that the registration decision cannot be based on whether the speech accords with society’s sense of decency, propriety, rectitude, or morality. 

Trademark registration today

The Supreme Court’s renewed interest in the scope of the First Amendment’s protections has significantly reduced the justifications by which the USPTO can reject an application. Henry Law can help you evaluate your potential marks in light of the evolving legal standards governing registration.

Henry Law Firm is Your Trademark Authority™

You’ve taken the effort to register your trademark and you are using it to offer a product of which you are proud. Maybe you have an innovative product; maybe your quality or customer service set you apart in a crowded field. Whatever the basis of your trademark’s reputation, moving forward you have to “police” your mark.

Policing your mark

The intended purpose of a trademark is to offer a quick, reliable indication to the consumer of the origin and quality of the good or service carrying the mark. The United States Patent and Trademark Office (USPTO) refers to this as “source designation.” What this means in practical terms is this: if the same mark is being used simultaneously on goods or services that have different sources or qualities, the mark is no longer a source identifier. When a mark loses that function, it becomes invalid and unenforceable. You lose your trademark.

If you are good at what you do, there will always be others who will try to take advantage of your reputation. In today’s world, a vast amount of commerce is conducted on the internet. One of the ways you can police your mark is to list it on the free Amazon Brand Registry. Once registered, Amazon itself will help make sure no false goods carry your mark.

What the Amazon Brand Registry does

Amazon intends for its Amazon Brand Registry to give sellers greater influence and control over their brand’s product listings on the Amazon Marketplace. Enrolled brands gain access to a suite of tools including: 

• Automated protections that use information about your brand to proactively remove suspected infringing or inaccurate content.

• Global word and image searches to find and report potential infringers;

• The ability to review and remove potential infringers from the Amazon Marketplace;

• The ability to identify and remove product listings that aren’t for your brand but use your brand name, or identify images that contain your logo but are not your products;

• The ability to identify sellers shipping products from countries in which you do not manufacture or distribute your brand; and 

• The ability to identify product listings created with your brand name when you have already listed your full product catalog on Amazon marketplace.

What is required to register

In order to be eligible to register, Amazon requires:

• An active registered trademark in each country where you wish to enroll, or have a pending trademark application filed through Amazon IP Accelerator​.

• The trademark must be in the form of a text-based mark (word mark) or an image-based mark with words, letters, or numbers (design mark).

• The trademarks must have been issued by government trademark offices in the United States, Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Turkey, Singapore, Spain, Netherlands, Saudi Arabia, the United Kingdom, Sweden, the European Union, or the United Arab Emirates.

• The trademark text must match the brand name on the application. If your trademark is an image-based mark with words, letters, or numbers, you must upload a copy of the image exactly as it appears on your trademark record.

• The trademark you submit must also appear on your products or packaging.

• You must submit the trademark registration number provided by the issuing Intellectual Property office. An application number provided by an Intellectual Property office can only be provided if you are enrolling with a trademark pending registration.

• A list of product categories (such as apparel, sporting goods, or electronics) in which your brand should be listed.

From registering with the USPTO to registering with the Brand Registry, we can help

Henry Law will help you gain your registration with the USPTO. With that in hand, we can help you leverage your trademark in many ways, including taking advantage of the Amazon Brand Registry. Making you aware of free, automated tools to assist in policing your marks is just one of the ways we monitor developments in the field to help you derive the maximum advantage from your trademark registration.

Henry Law Firm is Your Trademark Authority™

The U.S. Patent and Trademark Office (USPTO) has issued warnings about the rising incidences of trademark scams. As a current or prospective trademark owner, you should be aware of the danger so that you can avoid falling victim.

What is the scam?

Trademark registrations are a matter of public record. This public availability is generally a good thing: it allows other potential users to determine in advance if their contemplated mark is already in use. This knowledge can streamline a new registration where appropriate, as well as help avoid unintentional infringement where the mark is already in use. But the ready access to information—including to whom the trademark was issued, when the mark was issued, and when it is due for renewals—provides an opportunity for unscrupulous parties to try to leverage this publicly available information to the detriment of the rightful trademark owners.

The USPTO informs us that scammers have been using this information to send solicitations to trademark applicants and owners. Often, these solicitations appear official. Some solicitations offer what appear to be legitimate services such as responding to Office Actions. Other solicitations offer what appears to be a simple method of paying fees. Still other solicitations offer entirely fraudulent services, such as offering to register your mark on a “private registry” that does not exist or offer any legal protection to your mark. And, of course, solicitations come with a request for fees for their services in addition to any (often inflated) fees due the USPTO.

However, money sent to scammers may not be appropriately forwarded to the USPTO, or the services offered may be incompetent—which can result in serious consequences to your mark, including abandonment!

How do you avoid falling victim?

The first thing to know is that official correspondence about a trademark application or registration will be from the “United States Patent and Trademark Office” in Alexandria, Virginia. All official emails will be from the domain “@uspto.gov.” So step one in avoiding becoming a victim is verifying the correspondence is real. Besides verifying the domain of email, you can look up your mark in the Trademark Electronic Search System—also known as TESS. There you will find the current status of your mark, as well as any documentation (including correspondence) from the USPTO that relates to your mark. If the solicitation you received is not shown in the official file, it is not an official correspondence.

The second thing to know is that the USPTO does not require trademark applicants or owners to use any specific service. If the solicitation implies that the company is the only or preferred method to fulfill requirements at the USPTO, it is a scam. While trademark owners are allowed to use representatives—including attorneys—to interact with the USPTO, the use of any particular representative is not required. And there is no preferential treatment available to any owner or applicant by virtue of who they use to interact with the USPTO.

Finally, the USPTO has made the following request regarding trademark scams: If you receive a trademark-related offer or notice that you believe is misleading, file a consumer complaint with the Federal Trade Commission (FTC) immediately. Keep the suspected offer or notice as well as its envelope. Any or all of these may be requested later. Although the FTC does not resolve individual consumer complaints, as the nation's consumer protection agency it may begin investigations and prosecutions based on widespread complaints about particular companies or business practices. The USPTO also encourages you to contact your state consumer protection authorities. Many states, if not all, have the authority to issue investigative subpoenas and file complaints against companies engaged in misleading practices directed toward state residents.

We make avoiding scams easier

Henry Law stays on top of the deadlines and requirements of our trademark clients. We will let you know when actions or fees are required, and we can help you evaluate any correspondence you receive in relation to your trademark. But regardless of whether you choose to use our services or not, it is imperative that you view any correspondence related to your mark with a critical eye before accepting offers or paying fees.

Henry Law Firm is Your Trademark Authority™

In July 2020, the parties to the trademark lawsuit filed in the Western District of Arkansas resolved their claims of trademark infringement. Client Happy Trails Trailer Sales sued Happy Trailer Sales for trademark infringement and sought a permanent injunction to prohibit the Texas based defendant from using a confusingly similar branding as applied to the identical goods. Because the case involved the sales of identical goods, the issues involved a determination of trademark branding and use over a geographic region as a function of time. One compelling piece of evidence was the national scope of our Client’s use over time. Creating a map of all sales compelled a favorable outcome for our client. We use technology to efficiently present our client’s strongest case.

Henry Law Firm is Your Trademark Authority™

South Dakota Board of Regents v. James Fevold, Fevold Farm Service, Fevold Seed Farm, and John Does 1-50, N.D. Iowa, 3:18-CV-3005 LTS.

Representing the South Dakota Board of Regents, we obtained a series of judgments stemming from an illegal seed operator in Iowa, and also secured a permanent injunction against the continued unauthorized use of our client’s proprietary seed technology. The Fevold defendants agreed they “intentionally, willfully and maliciously infringed” our client’s intellectual property, having illegally sold more than 85,000 bushels of oat seed that was federally protected in commerce as delivered and sold to downstream farmers and seed distributors. In at least one instance, the lack of quality control led to a complete crop loss.

The Judgment Declaring

“It is further ORDERED, ADJUDGED, and DECREED that Fevold Defendants shall be liable to Plaintiff for damages in the amount of Two Million, Nine Hundred Seventy-Five Thousand Dollars and No Cents ($2,975,000.00) for the purpose of rectifying the harm to Plaintiff caused by Fevold Defendants, and such amount shall accrue interest at the maximum rate allowed under the law.”

Walmart v. Cuker Interactive, LLC. W.D. Ark. No. 5:14-cv-5262-TLB. 

After two weeks of a jury trial in federal court in Fayetteville, Arkansas, a unanimous jury returned a $12.4 million dollar verdict in favor of our client, Cuker Interactive, LLC on claims of misappropriation of trade secrets and computer coding know-how. The case began with a breach of contract claim filed by Walmart in the retailer’s hometown of Bentonville, Arkansas. The original contract was for Cuker to redesign and bring cutting-edge "responsive" website technology to a multi-million dollar grocery website operated by Walmart's division in the United Kingdom known as ASDA. Cuker was required to design only 13 templates but bent under extreme pressure by Walmart's project managers to produce nearly 60 templates. Several witnesses testified that Walmart's employee secretly downloaded computer code while at Cuker's headquarters without authority and later sent much of Cuker's trade secrets to various locations across the globe, including India for quick insertion into training programs. The jury took less than one full day to return a verdict finding Walmart's behavior constituted "willful and malicious" trade secret misappropriation.  

Arkansasbusiness.com Reporting

"Last month a federal jury in Fayetteville ordered Wal-Mart to pay $12.4 million for damages that included willful and malicious misappropriation of Cuker's confidential information and trade secrets. The verdict didn't end the dispute. Last week, one of Cuker's attorneys, Mark M. Henry of Fayetteville, asked the judge to prevent Wal-Mart from using Cuker's code in any of its websites. Henry is also seeking sanctions against Wal-Mart's attorneys for what he alleges was abuse of the discovery process."