I’ve taken a closer look at the trademark office action. Palin actually claims two classes of services:
• Class 35: “Information about political elections; Providing a website featuring information about political issues,” and
• Class 41: “Educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business and values.”
The PTO found that she had offered sufficient evidence of use in commerce for the second one – it was a page from the website of the Washington Speakers Bureau, which handles her private speaking engagements.
It’s only in the first class that she hasn’t offered sufficient evidence of use in commerce. I suspect she’s going to have to convert that application to a bona-fide intent to use application, because so far as I can tell, she isn’t actually yet using her name as a brand for those services. (Her evidence was a Fox News story that she had accepted an offer to be an on-air contributor and a printout of her Facebook home page.)
I also suspect that her lawyer didn’t know what he was doing, because the evidence submitted with the Bristol Palin application was nothing but a printout of her name on an otherwise blank page.
If she manages to find a competent lawyer, she should be able to resubmit evidence or convert it to an ITU application.
If, as Prelude to Fascination says, this is bona fide, then we should expect to see Palin set up something similar to the Huffington Post under her own name, because that’s essentially what she seems to be claiming under Class 35.
I’d like to offer a caution about the term “trademarked.” It creates a misleading impression about how the law works.
Palin is not trying to “trademark” her name. She’s trying to “register her name as a trademark.”
The important thing to remember is that you don’t have to register your mark in order to accumulate trademark rights. All you have to do is use the mark. Palin actually doesn’t have to do any of this, and I don’t think registering her name is going to give her very much in terms of practical benefits. She would get the benefit of certain kinds of presumptions, but overall, I don’t see why she should really bother.
For example, somebody is currently trying to register the mark “Sarah Palin’s Going Rogue Rouge” for some kind of cosmetic goods. The PTO has already issued a refusal based on the finding that it seems to imply a false connection with a living person.
For Sarah Palin to hold trademark rights in the term “Sarah Palin” for services related to “information about political elections; Providing a website featuring information about political issues,” all she has to do is start using her name as a mark. Indeed, that’s what the PTO wants proof of.
That was Apple Records, the Beatles’ record company. They did and continue to sue Apple Computer regularly over anything sound/music related in their hardware or software. They sometimes win and get a settlement. Apple Computer isn’t too worried about it. Some long time Mac users probably remember one of the first “system sounds” for the Mac was named “Sosumi” that was a phonetic expression of their response to Apple Records when making the decision to add sound to the computers.
It’s been a bit since I’ve done hard core trademark law, but it’s how I started. ascenray did am excellent job with his posts but I thought I would make some clarifications:
. What I used to tell clients is that registering a trademark is like getting a driver’s license. The trademark, like the license, is the state acknowledging that you have claimed your right to drive (do commerce under a certain name).
it’s true that without formal registration some rights and protections are available under the common law, but federal registration provides so much more in terms of protection and remedy than the common law allows, the least of which is an assumption of protection in all states and not just one state or certain locality. The big one is that after 5 years and proper maintenance, the mark holder has a much stronger mark and has a much larger presumption of weight vs other competing marks.
Probably the majority of businesses started out with the owner’s name on them, and then grew. Sears, Macys, Tiffanies, Sinclair Oil, Morgan Bank, Ford Motors, Chrysler Motors, McDonalds, etc.
(I have an investor friend who claims that when a company changes its name, to either remove the connection to the original founder, or to remove any connection to what business the company does and change to a made-up generic name, it’s a bad sign – service will soon go downhill, and the asset value will also fall. He takes that as a sign to sell stocks in the company. He claims that this has saved him a lot of investment losses over the years.)
She’s the only one of them doing anything out in the public eye really, so I don’t know how any of the others would (currently) have any need of a trademark, assuming that even Bristol has need of one. Maybe when they get older.
Bolding mine. So I understand, what you’re saying is it’s not too dissimilar than copyright, correct? I’m not a lawyer, but I understand that the act of creation gives one copyright protection, but registering the work gives the copyright holder more and stronger rights under the law. From what you’re saying, trademark regulations work in somewhat the same way.
And not intending to hijack the thread further, but I’ve read one can use the “T
M” symbol without registering for a trademark, but the R in a circle means it has been registered and therefore has full legal rights, correct?
If that’s right, could Palin (or anyone, for that matter) legally use the small TM after their name, but once registered, use the R in a circle?
I would say that this is true, but it is also dependent upon annindividual business’s circumstances. For example, if a business has no intent to ever offer services beyond a certain geographic area, it’s often not worth it. This is especially true of mom-and-pop operations, such as dry cleaners, diners, plumbers, car mechanics, etc. If the business’s plans change at a later date, then it might be advisable to establish a mark that can be defended nationally.
And it’s also questionable in a case like Palin’s, when she doesn’t seem to actually trading under her name (as of yet, anyway). It’s just extremely unlikely that she will need anything more than her right of publicity rights or Section 43(a) rights in order to go after any likely shenanigans. Bit all this remains to be seen Who know what the actually have in mind.
In the case of Harlan Ellison, I don’t really think he’s getting much benefit from the trademark thing. Knowing what I know about his personality, I’m guessing there’s a heavy component of jackassery involved.
Yes, but the question is why you would be doing it. Unless you are actually using your name as a trademark, there’s no point. Also, note that whatever rights you think you have in your name or mark, you can’t make anyone else use those symbols.
You have no idea what you’re talking about, says someone who personally knows Harlan and his lawyer. I would ask you to apologize but I understand how ridiculously futile that would be.
In any case, I wouldn’t apologize from stating an opinion derived from what seems to me reasonable deductions based on my perceptions of how a public figure presents himself in public.
From a layman’s perspective, yes, it’s not too dissimilar. There are technical differences that relate to timing that can have more of an impact at the trademark level, depending on the facts at hand. Also, because of the way people do business and geographic locations, the infringement analysis is slightly different.
Depending on the location, “TM” might not actually mean anything or carry little weight. As with ascenray’s mom and pop/local business examples, you don’t see “TM” at the end of every restaurant name, hair salon, or dry cleaner.
However, when I was in private practice, it was SOP (the same for every one-stop shop large law firm) to tell every business to trademark the name, no matter what. I have one client on my side firm that didn’t take that advice to heart (I didn’t blame him at the time). That client owns a couple of comic book stores. Long story short, he entered into a partnership to expand on even more comic book stores, and after a short time that deal went south. His former partners are now trading on that name. They both have internet presences and they both show up to the same comic book and sci-fi/toys conventions. $5k 10 years ago would’ve saved him the $30k+ in legal fees he’s paying now.
Not exactly. Again, refer to ascenray’s posts. In order to register, one has to use it in commerce, or have a bona fide intent to use (1(a) vs. 1(b) application for those of you playing at home). Even the “tm” has that requirement (for those jurisdictions that recognize it). Also, using the R-symbol without actually having it will have dire consequences in the PTO.
You may be right, as I have yet to actually look at Palin’s application. But, one can argue that she is trading on her name when she goes to speaking engagements. Likewise, after 5 years or when her mark achieves famousness (yeah, I know it’s not a word, i.e. famous and distinctive), she will have a lot of presumptive weight of law on her side. Additionally, she can sue for real damages for trademark infringement and dilution, the latter being the bigger of the two, in that she doesn’t have to prove likelihood of confusion and it doesn’t matter if dilution come from a good or service dissimilar to her mark. Additionally, if she can register her name as a web site, and the mark becomes famous, she has a lot of options to would-be parodies and anti-Palin web sites, including shutting down such web sites for tm infringement. Yeah, I know free speech and all…, but these actions put the would-be infringer on the defensive, making him shell out $300/hr to defend his right to keep up his web site.
That’s the part of the application that the PTO okayed the specimen for (Class 41). It’s the other part of the application (Class 35) for which use in commerce hasn’t been demonstrated.
I think you’re mixing up two different things here. After five years, a registered mark becomes “uncontestible,” which means that in a legal proceeding, the other party won’t be able to argue that the mark is not distinctive (in other words, that it’s generic or descriptive). But that’s not likely to be a serious argument anyway in the case of a mark like “Sarah Palin.”
The issue of famousness (and it’s a word now, because we needed one) is a different one, and has nothing to do with the five-year thing. It’s very, very, very unlikely that a personal name like “Sarah Palin” is going to achieve the degree of unique association that famousness requires. Famous marks are usually coined terms (Xerox, Kodak, etc.), but even when they aren’t coined terms, the standard is pretty strict and a mark that is nothing but a person’s name is going to be very difficult to get over that bar.
In any case, the point I was trying to make was not that there are no advantages to registration. My point, rather, was that the kind of infringement that Sarah Palin’s registration would help her in court with isn’t likely to happen.
Not really. Complaint (“sucks”) sites have routinely been able to survive infringement and dilution claims, so long as the domain name itself isn’t confusing. (In other words, sarahpalinsucks.com is okay for a complaint site, but sarahpalin.com might not be.)
A person like Sarah Palin can make someone hurt with unlikely litigation no matter what.
I’m not expert, but this seems wrong. A driver’s license is not the state acknowledging something a person already does. If you drive without a license, or get your license revoked, you are subject to penalties. There are no penalties accessed against an individual for using his own name as a marketing label without registering it as a TM.
