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Trademark and Copyright Basics for Business Owners

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Trademark and Copyright Basics for Business Owners

This course is an introduction to the basics of trademark and copyright protection for businesses. It will provide attorneys with the information they need to advise clients on what types of protection may be appropriate for their businesses. We will discuss different types of trademarks, the differences between state trademark applications vs. federal applications, the federal application process, and some best practices for counseling clients. We will also briefly discuss copyright protection and copyright notice requirements.

Transcript

Hi, everyone. My name is Keely Herrick. And today we are going to be talking about some trademark and copyright basics for business owners. So, you know, every business has a brand or two or more. So if you have any any clients that are that are starting businesses or have, you know, developed products already, these are things that they're going to need to think about. So we will jump right in. I'm just a little bit about me. As I said, my name is Keely Herrick. I have been practicing in the trademark field for over 20 years, which is both exciting and a little alarming. It's been a long time now. Um, but yeah, so I went to law school at NYU in New York. I went to college and law school there and worked at a large firm there and there. Our practice was largely in the fashion industry, so that was really fun. And then eventually ended up back here in Atlanta where I grew up, and I've had my own firm now for about eight years. And so that's been a whole other adventure. And think running a business now myself, I have a different appreciation for, you know, the the adventures of business owners, my clients. So I think that that gives me a different perspective on, on this whole thing. Um, and my practice, you know, like I said, it's been, I've been in the intellectual property trademark field the entire time. I'm on the transactional side. I don't do much litigation except in the Trademark Trial and Appeal Board. So trademark oppositions cancellation actions, things like that that I do. But other than that, I'm, I'd like to see myself in the role of the counselor advisor. Uh, helping my clients go about the business of their business without too much distraction from, you know, sort of litigations or problems on the trademark side. Um, and, yeah, helping them choose brands that won't get them into trouble and helping them protect the brands that they have. So. Uh, this is just an overview of the big topics we're going to be talking about today. We're going to be talking about, you know, what is a trademark, different types of trademarks, you know, designs, logos, slogans, all that good stuff. You know what actually can be a trademark. And then the differences between state and federal trademark applications, um, the requirements for each, you know, where each is appropriate, which, you know, your clients may want to choose in terms of strategy. And then going into a bit of some changes in trademark law recently, um, in terms of some new developments in the world of obscene or scandalous trademarks. So that's kind of exciting. And then an overview of copyright protection and you know, what is copyright and, you know, what do your clients need to know in terms of protecting themselves? So starting with trademarks, this this is the bulk of what I do. We're going to talk about again, what is a trademark different types of than the trademark application process, the differences in a trademark and a service mark. These are terms that people throw around and they don't always necessarily have or have a real grasp on them. And the ever exciting differences between these symbols, these mystical symbols, the the and the circle are, you know, which ones can can get you into trouble if you use them incorrectly. You know, and when it's appropriate to to use these different symbols. So now. Yes. What is a trademark? Um, you know, it's this. This is one of the things that people like to throw around, you know, in the news they use. They like to use it as a verb, which is not not great. Um, you know, and so what do they actually what do we actually mean when we talk about trademarks? The key concept is a trademark is a brand name. A trademark or service. Mark includes any word, name, symbol, device or any combination of these used or intended to be used to identify and distinguish the goods or services of one seller or provider from those of others, and to indicate the source of the goods and services. This is the definition of the US Patent and Trademark Office, the USPTO, and as is, you know, written by lawyers. So it's a bit inscrutable. But the key concept to keep keep in mind here is you know, it's a brand name, it's a source identifier. So when you see a trademark, you think of the company behind it that is providing those goods or that service. With trademark infringement. So one, you know, one business copying another's trademark. The key concept behind that is that we are trying to protect consumers from purchasing a product. Let's say, um, based on the idea that a certain company stands behind that product. So, you know, this is A11 rather scary example that we'd like to give because, you know, sometimes people think, oh, you know, counterfeit goods, this doesn't hurt anyone. You know, where's where's the harm? Um. If, you know, somebody makes a purchase of a sort of Mickey Mouse pyjamas, right? Pyjamas and Mickey Mouse characters on them. You think that in doing that, that the Disney Company, this this established company is going to stand behind that product and has, you know, a certain quality associated with that product? But, you know, if it is if it is not actually made by Disney, if it's not actually made by a reputable company, you know, these can be flammable. These can be, you know, that can lead to a really tragic situation. And, you know, so you want to. Protect consumers from purchasing something under the false impression that a company is going to stand behind that that product, you know, on the sort of the sort of less scary end of things, you know, it could just you could just be out money, right? You know, you buy a fake Rolex watch, um, and it breaks the next day. Then you've, you know, you've wasted your money and you don't have anyone to go to because if it's not a legitimate product, the Rolex company is not going to reimburse you, Right? Make you whole. Um, so that that is, is sort of the, the key concept in trademark law and trademark infringement is that we are trying to protect consumers from falsely purchasing something that is that seems to be produced by by a company when it is not, um, in reliance on, you know, the standards that are associated with that company. So what different types of trademarks are there? Um, you can there are trademark can be in what we say standard characters. So that also is referred to as just a word mark. So the example I have here is, you know, the Mark Inkwell, which is registered for um, a real estate apartment rental services. So if you register a mark in just standard characters as a word, Mark. The advantage of that is that it gives you the opportunity to use the mark in whatever stylization or logo you would choose down the line and still maintain the registration. So that's that's what we think of as the broadest form of protection, right? It doesn't tie you to any. Color format logo or anything like that. So as long as you keep using the mark, however you want to know in connection with the goods that is registered on. You can keep renewing the registration. You can also have, you know, a stylized mark. So the examples I have here are, you know, this is this fanciful A and B supplements mark that's registered for for vitamins and then relaxed, which is a clothing line that has a fishing theme, you know, so as you can see from the rod and reel and the fish tail on the mark there. So. With something like this. You know, both of those marks, when you see them, you know, you're like, okay, that's that's something that it makes sense that those brand owners would want to protect because those are unique. Stylizations that you could see someone, another business trying to copy, right? You know, because they're, they're very appealing and and different. And so the benefit of registering a mark in that stylized form is that then you can have some protection against someone using a similar stylization, even if it's perhaps not exactly the same word. Mark You know, so if you were going to go for the broadest type of protection, you know, if budget is not an issue at all, you know, you might want to file both ways. Uh, so. Um. Mark and also have no verbiage, no words in it at all like the, the Nike swoosh we have pictured here. Um. Which, you know, as as it has taken on sort of mystical properties over the years. But, you know, you look at it, it's really just a check mark. You know, it doesn't it's a good example of a design trademark because there is it's really not fancy. You know, it's not elaborate. It's pretty much just a check mark. Um, but through years of investment by Nike in marketing and, you know, promotion, consumers when they see this mark used in connection with athletic apparel or, you know, any sort of sporting goods, you know, that the Nike company stands behind that product, you know, that that is a Nike product. So, um, and also, I often get a question particularly from, you know, sort of startup businesses about slogans. You know, can a slogan be a trademark? Yes, definitely it can. And my example here is family law for the Modern Family. That's a registered slogan, trademark of a family law attorney. Um, I also I have my own for my firm. We have a slogan that I've registered. It's your name is our business for for our legal services. So. Yes, a slogan can be a trademark. You just have to be using it as you use any other type of trademark in connection with the sale of the goods or services. So, you know, and again, the idea should be that when you see this slogan, like you think in terms of Nike, you think of a phrase, just do it right. That's a slogan. When you see that used on clothing or, you know, you do think of the Nike company, you recognize that that those products are coming from Nike. Um, the the thing you want to look out for with something like a slogan or, you know, a stylized or design mark is that it does have to be used as a trademark and not just in an ornamental fashion. So not just as a design that's put onto clothing, for example, but actually on the labels or hang tags, you know, so that it does again, function as a source identifier and is not just an ornamental, um, graphic. When is it appropriate to file a state trademark application versus filing a federal trademark application? These are two different options. Sometimes a combination of both might work as a strategy, but it depends. For state trademark applications. They may be appropriate if your client's business is truly a local business. They're not selling anything online. They. Um, don't operate in more than one state. They don't have a lot of customers that come from out of state to purchase their goods or services. So if it really is just like, you know, a local business within the state and they're not concerned about people outside of the state using a similar mark, then a state trademark application might be the way to go. The advantage is it's less expensive. So, you know, everybody likes that. You often and this is a horrifying concept, but they often might not even need an attorney to file the trademark application because it's you do it through, you know, the secretary of state. It's pretty user friendly. Um, there's not a lot of back and forth with, with the secretary of State over a state trademark application pretty much if you, if you fill out the form the correct way, then you're likely going to get your registration. And like I say, it's a simple process. Um, you do need to be using the mark in commerce in that state in before you can file the application, uh, as opposed to a federal application which you can file based on your intent to use the mark in the future. You don't have to be using it at the time you file. So that's, that's one difference. But it's basically, you know, simpler process, less expensive, might not even need an attorney. But of course the rights are much more limited to within that state. Now federal applications. That is a large part of my business. But do you have to be doing business in interstate commerce in order to get the registration? This is there's there's another type of application if you're filing based on a foreign registration. But for purposes of this presentation, I'm not going to get too far into the weeds on that. But the in terms of basic federal trademark applications, you can, as I said, file based on your intention to use the mark in the future. But there's a step, then the final step before you get a registration is you will have to show that you're using the mark in interstate commerce. Typically that means that you are selling these days, it means you're selling your products or your services online that people can purchase them online so that that constitutes interstate commerce. Like said or if you have businesses in more than one state. Um, you know, physical businesses or if you have a large sort of clientele that comes from other out of state. So you have more than, you know, customers in more than one state that could also count as interstate commerce use. The advantage is that, of course, this protects you throughout the United States. So that's you know, that's a much broader protection than the state application. Um, it takes, you know, these days the USPTO is quite backed up. So, um, it can be even like up to ten months from filing your application to even hear from them regarding their initial, their initial evaluation of the application. So it's a, it's a bit of a hurry up and wait situation. So and it can take the whole registration process can take significantly longer than that. So it's not quick. You know, the state application process is much faster. Um, and you know, you are not required to have an attorney, but I would recommend it. I would not recommend trying to do this on your own because there's a lot of strategy involved. And, you know, it's a long process. There are deadlines. It's it's complicated. And there can be some legal arguments you need to make if the business applicant is actually a foreign out of the country business, then there is a requirement that you do have a US attorney handling. So. And this is so this slide just shows the Uspto.gov website is is pretty helpful and they have links here to all of the different state websites that provide you information about filing applications in those states. Um, you know, it might be that that you don't think that you would be able to get a federal registration for this particular mark. You know, maybe there's a conflict in 1 or 2 states, but your client has like 3 or 4 other states where where they're pretty confident that they want to do business and can get rights to the mark. So, you know, that's that's another reason you might file in several states versus filing a federal registration. Now, as I said, the federal application process is it's a journey. It's a journey we like to go on with our clients. You know, it's not quick. Um, and but in other countries it can take longer. So, you know, there's that we're ahead of some on this, but, um. So you generally start with doing a trademark search. So once you know what mark and goods your client wants to use, you do a search of the USPTO records and make sure that there is not someone who already owns an application or a registration for the identical mark or a similar mark. You know, there's again, there can be strategy in terms of well, if it's if it's a mark that we consider to be diluted, if there are a bunch of people that have, you know, if it's a crowded field where there are a bunch of people that have some sort of similar marks, you might then use a design element to distinguish your mark from these and give some uniqueness to to your client's mark so the search can reveal either impediments that might make you advise your client to choose a different mark. Or they can they can give you some guidance on, you know, how to best proceed with with the chosen mark. Then we file the application. Um, then we wait and wait. We wait and we wait. Uh, the, the initial examination by the US examining attorney at the USPTO will either, you know, if they don't find any issues, then great. And then we move along. But they may issue what is called an office action and. Those. Are the the issues that are raised by the examining attorney. There can be something very simple like maybe they just wanted you to disclaim a descriptive term in the mark. So if I filed for Keeley clothing, you know, for shirts, they would ask me to disclaim the word clothing because that's a descriptive word and I can't own that word. Um, so it can be something that is, you know, or just clarify, you know, some sort of information in the applicant's. Address or, you know, easy things like that can be resolved rather quickly. And, you know, even occasionally with what they call an examiner's amendment, they may they may send you an email and then you do a little exchange there and then they don't even have to issue the office action. So there there can be things that like that that are that are relatively quick to resolve. Or it can be that even though you didn't find anything in your search, um, they have a different opinion than you do. And the examining attorney cites a mark that they think is confusingly similar to your client's mark. So in that case, then, you know, you would have to submit a more substantive argument in response. So until recently, this is another recent change here. You always had a period of six months to respond to these office actions. Um, of course, the quicker you respond, the quicker the process can move along. But these days now the the has it has changed recently so that you typically will now have three months to respond. Or you can pay a fee and then get that that extra three months back extending it to six months. So. That's that's a newer change. You know, it doesn't really seem to be speeding up the whole process because I don't think that the delay was was on the attorney end. But. It is it is. A new development in the last year or so. You get an initial office action. If your arguments are not accepted, then you may get a final office action. And then you have to either, you know, respond to that or appeal. But if your response is accepted. Then that's great. Hurray! We move on to the next step in the application process, which is publication. So at this point, the application is published in the US Patent and Trademark Office Gazette. This starts a 30 day period. Call the Speak Now or Forever Hold Your Peace time where third parties that claim to have rights in the mark may be by common law. Maybe they've just been using or, you know, their application wasn't cited, but they think that they have prior rights. They can oppose the application at that time, or they can file either an opposition or request for an extension of time to oppose the the application. One thing you want to look out for here is that. This is a time where also your client may receive a spam email or letter indicating that. They have to pay some additional fee to have their application published in. Some sort of miscellaneous gazette That is not the Gazette. This is a common scam. The USPTO knows about it. It's on their website. But think it's just a game of whack a mole for them. You know, if they try and shut any of these down, they pop up again under a different name. So. It's something to advise your client about because they're the applicant. Information is public, so the scammers can easily find their information, and the correspondence they send out is very convincing. And the, you know, the business may have it in their head like, yes, of course, you know, there is this publication part of the process. Um, but there's not a fee um, yet from the trademark office for, for having for the publication part. There's, there's no additional fee from that. And I usually tell my clients, I'm like, you know. Uh, I'm handling the fees. You know, pay me, you know. Should not. You should not be getting a bill from some other service regarding this trademark application. But it's actually the bigger businesses I find that can fall prey to this because, you know, it can be. Somebody different who is processing the bills versus, you know, who is communicating with you. You know, so. The smaller businesses tend to be like, Hey, what is this fee? And they tend to get tricked by it less, I think. But yeah, so that that is something to to warn people about that at the publication step in the process that often flushes out these scammers so. And like I said, they can be very convincing. Yeah. But so then, okay, if you know, and if there is an opposition filed, these can be exciting for us as as trademark attorneys but not exciting for the businesses, for the applicants. They can they typically tend to resolve themselves pretty quickly, particularly if the application is based on intent to use. And and business has not already expended a lot of time, energy and money in developing a brand. Then then they may you know, they may just abandon the application or, you know, you can often get a coexistence agreement where everyone will stay in their own lane and do different, um, you know, sort of handle use their marks for, for different businesses or use them in different stylizations that they're both comfortable with. So, you know, there are ways you can resolve an opposition, but it also is a process that can be lengthy and time consuming and disruptive to the business. So if there is an opposition then. That's you know, that's a point, of course, at which you want to have a real discussion with your client about whether or not they want to continue to invest in this process or they want to start over with a different mark. You know, if they think it's somebody that, you know, unfortunately can either outspend them or, you know, is just really committed to going the the length of the process of the opposition process. So. Um, but if that does not happen, if you do not have any oppositions filed, if you filed your application based on use, if you are already using the mark, then hooray, you get a registration. If you had filed based on your intention to use the mark, then at this point you would get what's called a notice of allowance. Um, meaning that this is the last step you have to now is when you have to show that you're using the mark in commerce. So, you know, but but even then, it's not a rush because you can file you get six months from getting the notice of allowance and you can file up to five extension requests, and each of those extensions can be six months. So. The reason for that, you know, that this time is built into the process is that, you know, some businesses the most conservative course of action. Is to wait to get your application past these hurdles, you know, to flush out any problems that might exist. And then once you've gotten through and nobody's opposed your application, then you can be pretty confident. And then they might want to start, you know, marketing, developing and putting products out there. So then they might wait, um, you know, and, and spend the time at that point. So you might need extensions, um, these days, you know, with how long the initial examination part of the process takes, you know, it is often not practical for a business to wait that long. But previously, when it was, you know, a matter of like three months versus ten months, um, and, you know, maybe you would have waited. But even so, you still have this time built in that you can take at that point to actually put the put the goods or services out into commerce so that clients can purchase it. So once you get a registration, Hey, this is great. Then you you know, trademark registrations are a unique asset in that they can be maintained forever. They can live forever. You just have to periodically file a statement with the USPTO showing that you're continuing to use the mark in commerce. So and of course, these require a fee. But so the first one is is within the. Fifth and sixth year anniversaries of registration. So 5 or 6 year between the fifth and sixth year after you get a registration or six months after that, if you pay an additional grace period fee. And then after that, it's just it's just every ten years after registration, you have to just keep showing that you're using the mark. And this makes sense. I mean, the reason for that is that we want a mark to be available for other people to use. If you're no longer if a business is no longer using it, then it should be available. But if you are continuing to use it, then then great, you should be able to to keep the registration. So and here is just, you know, another example. From our helpful Uspto.gov website giving an overlay, an overview Q and A of, you know, different, different FAQs about the application process. And they also they also have help line, you know, if you have general questions about the process that can be that can be helpful. So get this question sometimes. Um. You know, really, this is this is a huge pain. Why? You know, I just want to go about my business. I don't really think I'm going to have a problem. What's the point? You know, this is going to take so long and and all of that. So. So why bother? There are some offensive and defensive reasons for obtaining a federal trademark registration. Um. Offensively, if somebody does sort of copy your mark and you want to go after them, you could send a cease and desist letter based on what we call your common law rights, meaning that you've been using the mark, you haven't registered it, but you know, just using the mark in commerce gives you some common law rights, but the person is going to take you much more seriously. If you have a federal trademark registration or even a state registration to back up your letter, your cease and desist letter. That's just a fact. It'll show that you've you've spent the time and money and you've been, you know, thinking about this for a while and. And they'll it'll just make you seem more serious. Also, even filing an application provides notice to potential infringers. Being that, you know, like I said, part of the process is that we do a search. So if I see an application for or a registration for a mark that's similar to the one my client wants to use, then, you know, typically I would tell them, Hey, don't do that. So just having the application on file can is is a way of of putting other parties on notice that this is your mark. And as I said, you know, trademarks can live forever. This is this is a really important asset to your business. Your brand is important. So, um, you know, taking steps to protect it is, is a good idea from a defensive perspective. It again, it protects your investment in the brand. You're going to be, you know, spending time money, you know, and your emotions. People get very emotionally attached to their brands, believe me. Um, so you're going to be spending all of that energy into, you know, developing logos and, and things like that. Um. And it's it's a good idea to protect that investment. The best way you can. And in the scheme of things, it's not, you know, it's not that expensive. Um, it also helps to defend against a potential claim of infringement from an unregistered party. You know, if if somebody. Tries to come after you and says, you know, that you're that they have rights in the mark. You know, having a trademark registration can often stop that, stop that conversation cold and let you go about your business. And it can give you confidence as you are expanding your brand. So if you're, you know, maybe you just were in 1 or 2 states, but then you want to open, you know, businesses in other states. This, you know, this this will really help you to be like, okay, we've we've got this protection already established. You know, this should be we should we should be good to go. You know, we don't have to worry. We don't have to choose a new brand at this point. Um, you know, now that we're, we're going bigger, so. Um, that's those are those are some defensive. Reasons that registration is generally a good idea. Now, the these mystical symbols, the TM, the SM and the circle are. What do these mean? When do we use them? Why? Um, so use the designation with unregistered trademarks. Use the SM designation with unregistered service marks and use the circle R only with currently registered marks. So what's a trademark? What's a service mark? The trademark. A trademark is when the mark is used in connection with goods, tangible goods and a service. Mark is a is a designation that's appropriate when it's used with a service. So the easiest way find these example find to explain this is McDonald's is both a trademark and a service mark. When you see it used on wrappers for French fries, hamburgers, things like that, then it is a trademark because those are goods. Those are physical goods. When you see it used on the restaurant signage, then it is a service mark because restaurant services are what they are providing there. So that's it's you know, it's somewhat of a of a fine distinction, but. Again, if this is an area you want to be practicing in, then you should know the difference so you can know what you're talking about and press people at parties, all of that. Um, and again, the Circle R is, is really the one that can get you into trouble because you are only to use that when you have a current registration for that mark use in connection with those goods, Right. Um, so if I, again, if I have Keeley clothing and I have a current registration for clothing, but then I start using that in connection with handbags, I should not use the circle R when I use the mark in connection with handbags. Um, if I don't have a registration that covers that, that that would technically be fraud and we want to avoid that. Um. Yeah. So, you know, the it's the default generally. I would say go to a or an if you're if you're unsure of the status, you know you won't get in trouble for using a or an even if the mark is already registered and you're not required to use any of these. But the reason to do it is because to put third parties on notice that this is, you know, especially if you have something that's sort of more on the descriptive end of the spectrum. It's a good idea to use them to show that, yes, I consider this a brand. I consider this a trademark. I consider this my intellectual property. This is not just a descriptive phrase. This is something that's meant to be a brand for me. And if and using the circle R mean. Heck, you've gone through the whole process, right? You've made it to the end. You've gotten your registration. You might as well, you know, show it off. And and, you know, also put people on notice that, you know, yes, I have a registration for this mark. So, you know. Back off. Right? All right now. I just want to discuss some some best practices. Get a trademark search before you're going to launch a new product or service and before investing in a logo design. As I mentioned before, a business owner can get very emotionally attached to to their brand. And, you know, the more time you spend, you know, with this with this brand in mind and, you know, particularly if you spend money developing, you know, a logo that's that's elaborate that you love, that looks great. Um, then if you do a search later on and you realize that, oh, you know, too bad somebody already owns that. Um, that's much more upsetting than if you can, you know, crush those dreams right at the beginning. Um, again. Or, you know, I'm joking, but. Or if you you can find another strategy for how to use the mark sometimes that, you know, you can avoid a problem. Um, so it might be that it is available but just in a different, in a in a different format. So the earlier you get you get involved helping your client, you know, steering them towards the right direction, uh, the, the less investment that they will have of, you know, of course money, you know, time, emotions, all of that. So. And you know, best practice to use use the appropriate or circle symbols, you know, again, avoiding fraud. That's great. Putting other parties on notice. Also good looking like you know what you're talking about. Also good you know, also more, you know, the or the, you know, help people to take you seriously. You know, say, all right, I know. I know what I'm doing here. This is a business that understands their intellectual property. Keeping records of use of the mark for applications and for infringement actions. This is an important tip for your clients because, like I said, you are going to have to show you're going to have to demonstrate the using the mark in order to get a registration. So that's one thing. But then also, if someone does come out of the woodwork at some point and claims that you're infringing upon their rights, it is it is good to have these records of your use easily, easily obtainable, easily at hand, so that you can respond to them and say, well, no, you know, look, I've spent, you know, X amount of dollars in marketing. I've been using the mark for X years. And, you know, here's, you know, images of it, you know, and all these different, you know, trade publications or, you know, here's conferences where I've spoken and, you know, use the mark and all of that. So. It's easier to think keep records of that as you're going along than to try and go back later and find them. Particularly, you know, keeping like screenshots of websites or things like that that might not be available, you know, or having to use wayback, you know, and to find them that way it's easier to do that as you're going along and just make that part of your business practice. And also it's a good idea to engage a watch service to monitor third party use of marks. So. As I said, you know, if you think about you may want to oppose somebody else's application. Right? So typically, you know, trademark attorneys will engage a service, you know, where we do our trademark searching, you know, there's there's software for that. And those companies typically also have a what's called a watch service. So that is something that goes through the Gazette when it is printed, when it's when it's distributed. And they will then send you a, you know, periodic however often you want it, um, listing of marks that might be a problem. And then you can go through, you know, or the if there's, you know, often like a paralegal at the, at the business if it's a larger business might want to be reviewing this and see you know is is there something that you might want to take an action against, you know, that you might want to oppose? So, um, otherwise, you know, it's very easy that 30 day period can go very quickly. Um, you know, so it's, it's very easy to miss that opportunity. So the watch service is something that's not usually a very big fee, but, you know, is a good idea to do. And yes, here's some more. Another sort of screenshot from the USPTO website. As said things like the scam issue that I mentioned earlier, They can they will be posted. On the website, you know, developments in fees and other things like that. It's a good idea to regularly check in with them and see and see what they've got going on. Now here we're just going to I'm just going to do a bit of a quick discussion here of some recent changes in trademark practice regarding obscene marks, which is, you know, you could do it. I could do an entire hour discussing this topic alone, but it's something to be aware of. That from our perspective as trademark lawyers is pretty exciting because there's a whole new world of of words that's available that are available to, to use in trademarks now, um, whereas I think that sometimes, you know, have, have empathy that my clients may think that I'm telling them, well you know, all the words are taken and you can only use a series of bleeps and beeps as your brand. But here, you know, well now you can use a whole lot of four letter words there. Those are in play now. Um. The first big case in this area was in 2017 as Madhavi Tam. That was regarding use of the name The Slants for a band. And previously there had been a the USPTO would not allow registration of material that they considered to be disparaging. But the Supreme Court held that that was unconstitutional. So now you know. Uh, now that's in play. Those sorts of terms are in play. And then. Yankee versus Brunetti in 2019. The the mark was fucked. Fucked. And the rule had been that the USPTO would not allow registration of immoral or scandalous material. But the Supreme Court said, no, you're not going to make that decision anymore either. So the interesting thing here is that there's been a real shift in moral responsibility from the USPTO, which is the government entity monitoring this to consumers. So now the idea is that if consumers believe that a brand is is scandalous or offensive, they shouldn't purchase the products. And so the brand will fail. We don't want. You know, according to these decisions, we don't want the government, the trademark office, to be making the determination what is disparaging, what is scandalous, what is immoral in terms of a brand. We are leaving that in the hands of consumers. You know, if they think. That seeing on you know as a brand of clothing is is scandalous and they shouldn't buy that clothing and then you know. The idea is that that company would choose a different brand. So this is a different approach than many other countries take. You know, I've talked to attorneys in other countries who are whose minds are just blown by by this change. You know, that they're like, oh, no, we would never and there's there's legitimate reasons for that, especially on the you know, on the side of, of the disparagement, um, that, you know, they just don't they're not going to leave that up to the public. But so this is this is the new change and an interesting development. That it has had a little bit of an impact on trademark practice. So I found this pretty funny in just in in the area of candles, right? What you think of like what's a you know, what's a more innocuous kind of harmless product than than scented candles. But these are just some of the. The trademarks that have been recently allowed or registered for use in connection with candles. So Lizzo has, you know, I'm 100% that bitch. And there's also. Registrations for spiritual bitch. It smells like shit in here. Pretend to give a shit. Festive is fucked. Memphis is fuck. Fuck, boy. And my last book. Oh, look. It's on fire. Burn, bitch, Burn. Um, so, you know, I just thought it was kind of funny that the candle industry was, like, going so hard in connection with, you know, with, with, with obscene or, you know, with obscene language here. But those are, those are all options now. Um. As in terms of trademark practice. You know, there has been a high volume of of now that these words are available, there's more opportunity to to register some some new marks. Um, and you know is, is this part of what's causing the USPTO processing time to take longer. This this new I mean there's found over 500 filings for shit or fuck marks, you know so the I don't know that that number is that significant in the in the overall scheme of things. I think what might actually sort of, you know, make these particular applications take longer is that they're often filed pro se. You know, they're often filed without an attorney. Um, which just in general should mean that the application is, you know, something that might get a lot more rejections on the technical side of things and that might take longer or take more resources. So in, in terms of that, it's not like because of the words, but it's just because you know, of who is who is filing these, that that it might you know, it might drain the resources, it might impact trademark practice that way, might make the USPTO go a little bit more slowly because they have to deal with all these. So there's that, as is the practical advice. If your clients are looking to jazz things up with some obscene marks. The key thing. To watch out for here is ornamental use versus trademark use. As I mentioned earlier, but particularly here, people can think that putting, you know, one of these phrases on the front of a t shirt is trademark use. It's not likely going to be you know, that's going to be something that will be considered ornamental use. It really has to be. For use, particularly in connection with clothing, which is a lot of what this is going to be. You know, it needs to be on the labels, on the hang tags, on the packaging. It doesn't it needs to function as a brand and not just be, you know, some silly, you know, graphic that you're putting on the front of a of a shirt. Um. Again, no use is required for registration. So just filing an application does not mean that you have won the day and a trademark registration does not create a monopoly in conversation. Again, as these things are, this this sort of got some press. And so I think there's some, you know. Uh, excitement and confusion. You know, it doesn't mean that, you know, if you if you own, you know, if you eventually were to get a registration for, you know, the phrase fuck you, for example, that doesn't mean that you're the only one who's allowed to say it. And and some of these applicants might have some confusion around that. Um. The failure to function rejection is going to be a common one. Um, this was, this was sort of interesting. You know, this Brunetti company applied for the actual word for use on clothing, bags, jewelry and accessories. But the USPTO rejected the application, saying that it failed. This mark failed to identify the source of the product. So saying this can't be a brand because it's such a commonplace message or term. Um, I don't know what that says. You know, they think that this is something that's that's so commonly used in connection with these products that it can't it can't function as a brand. Um. You know, that's that's something. But that is that is a rejection that's happening. And there was an appeal, you know, to, you know, the about that. So we'll see how that goes. Um, and this may be something where, you know, if your client has wants to use one of these phrases, this may be something where you can just go ahead and use it without registering it. If it's if it is something that's going to be ornamental, if it's something that's going to be only used for like a season, that's not, you know, not not going to be a long term brand that they need to protect. You know, that might be something they can just go ahead and use. Um, again, depending on results of a search and all that. Um, and you know, the same sort of benefits of registration apply here. Um, as you know, with other types of registrations that we discussed earlier in terms of enforcement and defense. So now we'll just do a very quick little discussion of copyright because there's not a lot to handle for an attorney on the prosecution side of copyright. So the excitement here is in litigation, but just for businesses, some concepts to keep in mind. Copyright protects the expression. It does not protect the idea. So this is why when, you know, somebody says like, oh, this, this, you know, film company, they stole my idea for this movie, I'm going to sue them. They tend to lose unless that company has actually copied the, you know, the language that's in a script. You know, the dialogue, the characters, you know, the actual expressed content, Not just the concepts, not just the ideas. So we say something like, you know, Gone with the Wind. What's protectable in that novel is not the idea of a romance set in the civil war in Atlanta. It is the actual language that is used in the book. You're not required to register copyright in order to protect it. You know, you do have copyright from the time in which the work is fixed in a tangible medium, but it is required in order to file a copyright infringement lawsuit. So and there are benefits. The main benefit of of doing a timely registration is that you can have access to statutory damages. And that is where the money is in this area of law. If you think about, you know, discuss this with photographers, people who are, you know, regularly selling their photographs. If you register, I think it's within three months of publication of the image. If you register the copyright, then you'd be able to sue for statutory damages. Otherwise you'd be interested in having to sue for actual damages. So if somebody takes your photo and they sell it on. They sell prints or they sell it on mugs or t shirts, you know, stuff like that, then you would be suing for the actual profits that they have made off of these items, which could be not a lot and typically would not be enough to merit the expense of in particular a federal. Copyright lawsuit. So. It's a good idea to sort of, you know, if you are particularly photographers, somebody like that, to get in the process of regularly registering the copyright in your work. Um, yes. Then one other thing is that within the last few years or the last year, sorry, there is a new option which is a small claims copyright. Um. It's relatively untried at this point because it you know, it's been less than a year since it's been in existence. So. That it's unseen, how beneficial this will be. But the idea is that it's supposed to be an avenue for. Smaller businesses because federal copyright lawsuits are so expensive and difficult to to go through. So one of the things to look out for if you are, you know, are a business. Is that if you do receive notice of a claim filed against you in the small claims court for copyright. You don't want to ignore that mean in general, of course you wouldn't want to ignore something. You know, related to a litigation, but you might think, oh, small claims is not a big deal. It could be. It could be a big deal. It's not you know, it's not that small of an amount. And. There is a procedure built into the small claims copyright process wherein you can opt out and you can say, you know, it becomes a bit of a game of chicken, right? You know, you can say, oh, well, okay, I'm not going to participate in the small claims process. You have to go after me in file and file a federal claim. Um, if you, you know, if the business doesn't think that the, the claimant will go ahead and do that, then, you know, they might want to opt out. But so. That is something that you want to keep an eye out for and you know, you might want to do that. The idea behind the you know, also behind the small claims process is that it might be a way for businesses to resolve something. Um, you know, maybe you would want to go ahead and settle something that you think could be a legitimate claim. Um, and so you might be able to do it more efficiently through this process than otherwise. So. And so, like I said, this is a very new procedure, but it's something to be aware of. And it might be something that you that you want to try. Now, what is this copyright notice that you see? Um, it's not required, but again, recommended. Like the other types of notice that we were talking about earlier, the and the, and the circle are, you know, you don't have to do this, but it's a good idea to put people on notice that that you consider this your property so. An example that, you know, that I could use, like with respect to this presentation is I could say, you know, see in the Circle 2023 Herrick, LLC. All rights reserved. The elements that you want to include are either the C in the circle, the word copyright or something. You know, one of those. The year in which the work was first published. So this version of the work, you know, um, which is why when you see this notice on websites, you know, companies have it on websites, then it's typically, you know, says whatever the current year is, right? Because they've, you know, you update websites pretty frequently the owner of the copyright so that's why you know would say like and then the phrase all rights reserved. Um so again not that hard to do a good idea to do it. Um. And those are those are the basic elements that you want to include. All right. So this. This is pretty good, I think. Um. We're we're at the end here now. So there are if you have any questions, you feel free to reach out to me at my firm. Keely Herrick at Herrick, Law.com. This is meant to be, like I said, a sort of brief overview of some of the intellectual property issues on the trademark and copyright side that your clients who are businesses, may want to think about. Every business has a brand, you know, whether it is the name of the business itself or the name of a particular product or service that they are offering. You know, businesses can certainly have many brands. So and these are important assets that you definitely want to protect as you're going through going going about establishing your business. It's a good thing to do at the beginning of when you are launching a product or a service, you know, it's a lot easier to make these decisions before you've invested a lot of time, money and, you know, emotional energy in developing a brand, developing a logo, all of that. So it's it's a good idea to get trademark lawyers involved earlier in the process than later. It's much less expensive to to do on the earlier side of things then later on if they're you know, if there's a problem. So again, I really love what I do. I see myself as, you know, someone that can help businesses go about their business and not be distracted too often by the expense of of a trademark infringement lawsuit or of having to rebrand. You know, those those those are things that no business really wants to deal with. So hopefully what I do helps them be able to go about their their lives and and not have to think about me that much. So that's the goal. Um, so yeah, guess that's it. If you, if you have any questions, like I said, I'm, you know, happy to discuss. All right. Thank you for your attention.

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