Trademarks are legally protected brand names or images that allow commercial identification of goods in the marketplace. For example, Coca-Cola ® is one of the most famous trademarks.
A registered trademark is identified by this symbol: ® . One that is in the process of being registered is often given as (TM).
Trademark Duration: Trademarks are renewable indefinitely, however, trademarks must be used or they may be considered abandoned. Aspirin, cellophane, cornflakes, yo-yo, linoleum, and escalator are examples of abandoned trademarks.
Trademarks are regulated on the federal level under the Lanham Act of 1946 but states also have concurrent jurisdiction. Trademarks are administered by the US Patent and Trademarks Office, and major controversy is unusual.
Controversial advertising & trademark issues:
The Trump “too small” case – Vidal v. Elster
The Supreme Court heard arguments Nov. 1, 2023 regarding claims that a trademark was improperly denied for a t-shirt that made political comments about Donald Trump. A decision in the case would come towards the end of the term in the spring of 2024.
Both conservative and liberal members of the court were skeptical about Elster’s claims. If there is no viewpoint discrimination, there is no First Amendment issue, some justices said. Others justices noted the long history of allowing people to control the use of their names in commercial settings.
Trademark controversies have largely been settled in recent years by Matal v Tam (2017). and Iancu v Brunetti (2019).
In Tam, a unanimous court struck down part of the trademark law forbidding marks that disparage people, living or dead, along with “institutions, beliefs or national symbols.” The theory was that a government-issued trademark was the government speaking, and the government should not disparage. However, the court said that trademark registration did not imply government speech.
In the Iancu case, the same theory was struck down but as regarding registration of “immoral” or “scandalous” trademarks. That case involved a line of clothing labeled FUCT. The New York Times said:
When the case was argued, Mr. Stewart told the justices that the term was “the equivalent of the past participle form of the paradigmatic profane word in our culture.”
The Redskins case
Sometimes a dispute see-saws back and forth for decades until public opinion changes and makes the legal issues moot. In the case of the Washington Commanders football team formerly known as the “Redskins,” battles over the status of the disparaging trademark took nearly 30 years to resolve.
The case of the Redskins football team involved controversy over racial stereotyping and laws prohibiting disparagement in copyrights.
Under the Lanham Act, trademark registrations cannot be “disparaging, scandalous, contemptuous, or disreputable.” The controversy over the Redskins American football team had been brewing since 1992, when Suzan Harjo and other Native American activists petitioned the US Patent and Trademark Office to cancel the registrations owned by the Redskins’ corporate entity of Pro-Football, Inc. They asserted that the trademark “disparages Native Americans and may bring them into contempt or disrepute.”
A second lawsuit was filed in 2006. (See this link for a full list of filings and motions). Responding to this second suit, on June 18, 2015, the Trademark Trial & Appeal Board of the Federal Patent and Trademarks Office agreed with the contention that the term “redskins” is disparaging. That decision was upheld by a federal appeals court in 2016
However, in a related 2017 case Matal v Tam, the US Supreme Court reversed the appeals court, overturned the section of the Lanham Act that prohibited disparagement, and reversed the underlying doctrine assuming that a trademark approval was in effect a function of governmental speech which could not be disparaging.
In 2019, a similar case, Iancu v Brunetti, allowed trademark registration of a clothing line called “Fuct.”
USA Today said: “Legally speaking, the team won. Culturally speaking, Native American petitioners believe they did.” Amanda Blackhorse said: “We said the term ‘Redskins’ is disparaging and the courts agreed with us. It’s just that now the Supreme Court says it’s OK to register a disparaging term.”
The Iancu and Matal cases would have allowed the Redskins to retain their original name. However, in 2021, the Washington DC football team decided that the controversy had damaged their reputation, and changed their name to the Commanders. This brought “a sense of closure” to the Native American groups who had been seeking a legal change to the trademark.
DOMAIN NAMES
A domain name is in effect a trademark for your company or your work. As a consumer, you can register an internet domain names through a variety of internet service providers (ISPs) and web hosts. Disputes over domain names, are now decided by the World Intellectual Property Organization, an outgrowth of the Berne international copyright convention based in Switzerland.
Under US law, especially the Lanham Act, a trademark can’t be used by someone offering a similar product or service. The law covers domain names as well as other forms of advertising.
When the web first came along in the 1990s, five top level domain names — com, .org, .gov, .edu, .mil. — were intended to serve US and English-speaking countries. There were also dozens of country codes — .uk for United Kingdom, .ca for Canada, and so on.
The web quickly outgrew the original system, and an Internet Corporation for Assigned Names and Numbers (ICANN) was established in the US in 1998. Its technical functions continued for the US and other countries as the Internet Assigned Numbers Authority (IANA), and new generic top level domains (gTLDs) were introduced in 2013. These included .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and travel.
However, as the job became increasingly complex and internationally oriented, its oversight and dispute resolution were transferred to WIPO in 2016.