Controversy Surrounding Trademarks, the Washington Redskins, and an Asian-American Rock Band

Most people are familiar with the decades-long controversy surrounding the Washington Redskins’ name and the cancellation of its trademark registrations on the ground that the term REDSKINS is disparaging. One of the issues in that case questions the constitutionality of the prohibition against registration against disparaging terms. Although the Washington Redskins case has most famously addressed this issue, a recent decision involving a fairly unknown Asian American rock band, THE SLANTS, may prove to be the game changer.

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What does the term "redskins" mean to you?

Learn more about Trademark Management.

In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas.  He also co-founded Project K, a charity devoted to changing the world one random act of kindness at a time.  Click to read more about Darin Klemchuk's practice as an intellectual property lawyer.

More About Incontestable Trademarks

Despite the label, incontestable marks can still be contested. An accused infringer can always argue that they are not actually infringing the mark at all due to the respective mark differences, the differences in use or commercial impression, etc. However, there are also a variety of ways that a challenger can invalidate the incontestable mark. One method of contesting these sorts of marks is through a functionality argument. A functionality argument states that the putative mark actually serves some functional purpose with regard to the good being sold, and that letting someone trademark the functional item puts competitors at a disadvantage.

What is a "functionality argument," and how could it put you at a disadvantage when contesting Trademarks?

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Learn more about Trademark Protection.

In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas.  He also co-founded Project K, a charity devoted to changing the world one random act of kindness at a time.  Click to read more about Darin Klemchuk's practice as an intellectual property lawyer.

NAACP Trademark’s Claim Is No Match for Free Speech

In a recent decision, the Fourth Circuit decided that an organization’s online article criticizing the NAACP, titled “National Association for the Abortion of Colored People,” did not infringe on the NAACP’s trademark. Though the title and the article were harshly critical of the organization, trademark law generally only applies to commercial advertising, and consumers were unlikely to be confused over the article’s “source and sponsorship.” The decision, which overturned the district court’s ruling, was widely viewed as a First Amendment victory.

Trademark law and politics do not always mix. 

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Learn more about Trademark Litigation.

In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas.  He also co-founded Project K, a charity devoted to changing the world one random act of kindness at a time.  Click to read more about Darin Klemchuk's practice as an intellectual property lawyer.

Brand Protection Basics

For entrepreneurs and companies alike, building a brand and protecting your brand is integral to becoming successful.  As such, brands and trademarks become extremely valuable assets of a company or entrepreneur, and should normally be properly managed, registered, and protected.  The use of trademarks in print and electronic media should be consistent.

Protecting Your Brand: Basic Trademark Guidelines

Trademark guidelines do not merely apply to a brand owner or the company itself.  Any customers, licensees, consultants, outside vendors, or other third parties should also be required to properly depict the trademark.  Brand owners should police and enforce uniform trademark use guidelines among third parties. This is important in protecting your brand.

For instance, when using the trademark, parties should use proper marking.  If the trademark is federally registered with the United States Patent and Trademark Office, use the ®.  If the trademarks are pending trademarks or not registered, use TM in superscript.  This should be consistent in printed and electronic media.

Read more about protecting your brand.  

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In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas.  He also co-founded Project K, a charity devoted to changing the world one random act of kindness at a time.  Click to read more about Darin Klemchuk's practice as an intellectual property lawyer. 

Italian Brothers Win Right to Use "STEVE JOBS" over Apple's Objections

Italian brothers Vincenzo and Giacomo Barbato won a trademark battle against Apple to call their company "Steve Jobs," the name of Apple's founder, who passed away in October 2011.  

The trademark dispute started in 2012.  The brothers started a clothing line and accessory company and decided "Steve Jobs" would be the perfect name for the new company.  Apple and Steve Jobs' heirs apparently did not register trademarks on the "Steve Jobs" name and mark.  

This decision highlights the importance of exploring foreign trademark protections for key trademarks and trade names.  This case also suggests that Italian law does not recognize a claim for misappropriation of likeness or celebrity, which protects the goodwill of a public figure and generally prevents third parties from commercializing the likeness for gain.  Misappropriation of likeness is sometimes referred to as right of publicity.  Recent cases have involved NCAA athletes and deceased actors that re-appear in films through CGI.  

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In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas.  He also co-founded Project K, a charity devoted to changing the world one random act of kindness at a time.  Click to read more about Darin Klemchuk's practice as an intellectual property lawyer.