Articles and FAQs
This section contains articles drafted by Saper Law Attorneys, links to sites of interest, and answers to frequently asked questions. Feel free to browse through the recent postings below, or use the topics list on the left to search for articles in a specific area of law. Please note that none of this material constitutes legal advice. You should confer with an attorney to discuss legal matters specific to your situation. Check back for updates or use our online form to submit a question.
The American Bar Association publishes Daliah Saper’s article: Designer Jewelry vs Inspired by Jewelry
By Saper Law | February 18, 2010
Daliah Saper’s article titled: “Designer” Jewelry vs. “Inspired-by” Jewelry: Intellectual Property Infringement and Unfair Competition Considerations was recently republished in the ABA’s Winter 2010 issue of the Intellectual Property Law Committee Newsletter.
The article analyzes copyright, trademark, and unfair competition law as applied to “inspired-by” jewelry designs and provides practical tips to avoid legal problems in these areas.
To read the text of the article as it was originally printed in the Journal of the Dupage County Bar Association click here.
Topics: Copyrights, Fashion Industry, Press, Trademarks |
New Saper Law Article: Defamation in Political Campaigns
By Saper Law | February 9, 2010
Defamation in Political Campaigns
With the recent conclusion of the Illinois primaries and statewide elections around the corner, media channels and airwaves have been a breeding ground for assaultive comments and statements between candidates. Television viewers and radio listeners have been bombarded with an onslaught of negative attack campaign ads and political statements that barrage one candidate while heralding the next as a savior. Many people are wondering how politicians and their supporters are able to publish these ads; certainly some of the ads cannot represent the whole truth. But the question then becomes when do such statements rise to the level of actionable defamation?
What is defamation?
To put the scenario in context, it is helpful to have a basic understand of what the concept of defamation is. Defamation is the communication of a false claim or statement of fact about another person that harms that person’s reputation. The statement does not need to be made to a large group of people; you can be liable even if you make the statement to just one other person (other than the person that the statement is about). There are two types of defamation. The first is libel or written defamation, including things written on Internet websites, blogs and message boards. The second is slander or spoken defamation.
What is a “false statement of fact”?
A false statement of fact is a false statement that can be proven true or false – such as “John stole my computer from my house,” or “Mary had an affair with the boss to get her promotion” – and which a reasonable person, in the context provided, would understand as being asserted as a true and verifiable statement. Obviously, if a statement is true, it cannot be defamatory.
What about statements of personal opinion?
Opinions, even if they reflect negatively on someone, are protected by the First Amendment and are not defamatory. However, just calling a false statement of fact an opinion is not enough to gain First Amendment protection. For instance, if you say, “Based on the evidence, in my opinion, it’s clear that John stole my computer from my house,” then a court might determine that, because you were backing up your statement with evidence, that you were actually making a statement of fact. If that statement is false and hurts John’s reputation, then you could still be liable for defamation.
How is this affected by the context of a political campaign?
It is important to keep in mind that claims for defamation are usually balanced against a person’s First Amendment protection on free speech. Importantly, the First Amendment was enacted during a time where government censorship on debate and criticism of the political process were a large concern. Therefore, the First Amendment’s principal guarantee of free speech is perhaps strongest when dealing with public debate on political issues. Thus, in the context of political campaigns, public officials are often required to meet a higher standard of proof than ordinary citizens. Most courts require public officials to prove to that the defamatory statement was made with the person’s actual knowledge of its falsehood or with reckless disregard of whether it was false or not.
When does political “spinning” of statements during an election rise to the level of actionable defamation?
Most courts take the view that when a person runs for public office, he puts his character in issue so far as it relates to his fitness and qualifications for office. Accordingly, the politician’s prior conduct and actions are often fair game for comment. But campaign ads are famous for spinning the truth and such “spinning” of the facts typically walks a fine line to being false.
For example, in the recent Massachusetts race to fill the seat of the late Senator Edward Kennedy, the Massachusetts Democratic Party sent a mailing letter out in opposition to the then Republic Candidate, Scott Brown. The ad stated “1,736 women were raped in Massachusetts in 2008. Scott Brown wants hospitals to turn them all away.” Did Scott Brown ever tell hospitals to turn raped women away? Probably not, but a reader of the four-page mailer might have taken the statement as a fact. In actuality, the ad was referring to an amendment that now U.S. Senator Scott Brown voted in favor of when he was in the Massachusetts Senate. The failed amendment would have allowed highly religious workers at hospitals to avoid providing contraception to rape victims. Is the statement defamatory?
The first consideration is whether the statement is objectively verifiable as false. This statement clearly walks a fine line. On one hand, Sen. Brown did vote in favor of a bill that may allow hospital workers to refuse to provide contraception to rape victims. However, did this bill affect “all” of the 1,736 women as claimed by the ad? The answer is no. To further make the situation difficult, the ad’s language “Brown wants” may be seen as referring to Sen. Brown’s state of mind. Recall that the public official is required to prove knowledge or reckless disregard for the truthfulness of the statement. Therefore, even if the ad is viewed as a false statement a fact, the politician would still have to overcome these hurdles at trial.
Ok, so a statement is a “false statement of fact,” what other legal challenges does a public official face?
In addition to the heighted knowledge requirement for statements made against public officials, the politician is hard pressed to fit political statements under the basic defamation framework. Statements made during political campaign receive the best chance of falling into one or more of the five categories of statements considered defamatory per se. Defamatory per se statements are those from which it is clear from the statement itself that it is defamatory. The per se categories most likely to encompass political attack ads are the categories for words that imply an inability to perform duties of office or employment, or statements implying a lack of ability in the person’s trade, profession or business. However, even these categories present unique challenges to a politician claiming that he has been defamed by a political statement. Political defamation cases often require courts to determine whether a political campaign can be considered the politician’s “profession” or “business.” Court positions can vary widely on this topic from state to state and it is important to consult an attorney for state specific advice.
If political defamation lawsuits are so hard to prove, why bring them?
It is important to keep in mind that there is no typical defamation case. The statements involved and the ability to prove their veracity will necessarily vary. In some cases, conduct may be so outrageous, that it may be relatively easier to recover damages. On the other hand, there may be a strategic element involved to a political defamation case. Defamation suits can be used to scare various media sources from originally publishing ads or may prevent further dissemination of attack ads. Defamation law suits may even be used as a way to publicly challenge the offensive allegations in a campaign ad. At the end of the day, when the public official’s image is on the line, filing suit may be a strategic victory.
If you have further questions about defamation law, as it applies to political campaigns or public figures, feel free to contact our offices: 312.527.4100.
Topics: Defamation |
Register Now for February’s Seminar at Saper Law: Negotiating a License Agreement
By Saper Law | February 3, 2010
Does your company license or want to license trademarks, copyrights, patents or other Intellectual Property (IP) assets?
Are you unsure of the important legal concepts and monetary risks associated with your licensing activities?
Would you like to have some fun and participate in an exercise whereby you can learn how to effectively negotiate a license agreement?
February’s seminar at Saper Law focuses on the topic of Negotiating A License Agreement. Daliah Saper, Principal Attorney at Saper Law, and David Harkavy, Executive Consultant at Robinwood Consulting LLC, will lead the presentation. Daliah’s discussion will address the Legal Dos and Don’ts associated with IP licensing. David’s discussion will address the valuation methodologies used by licensors and licensees when negotiating an IP license.
The group of attendees will then divide into teams for a trademark licensing exercise. Some teams will play the role of a trademark licensor, while other teams will play the role of trademark licensee. Given a set of facts and circumstances, teams will negotiate certain terms of a trademark license agreement and then present their results.
Details:
Thursday, February 18, 2010
Saper Law Offices, LLC
500 N. Dearborn, Suite 1200
Chicago, IL 60654
Time: 11:30 am – 1:30 pm
Cost $15 with online registration: http://licensingseminar.eventbrite.com
$25 at the door
Lunch will be provided
Topics: Seminars at Saper Law |
Register Now for January Seminar at Saper Law: Key Provisions of a Sales Rep Agreement
By Saper Law | January 15, 2010
Register now for January’s Seminar at Saper Law: Key Provisions in a Sales Rep. Agreement
Does your company manufacture, distribute, or sell products and/or services by utilizing a sales force?Are you a sales professional, selling for a company on either a base salary plus commission basis or as an independent contractor?
Not sure what terms you should be negotiating in your sales representative agreements?
Concerned that your agreement is not comprehensive enough in case there is a dispute?
January’s seminar at Saper Law focuses on the topic of Sales Representative Agreements. Daliah Saper, Principal Attorney at Saper Law, will lead the presentation using case studies and sample contracts. Her discussion will address payment and commission structures, non-compete and confidentiality agreements, territorial and geographical boundaries, intellectual property ownership, as well as the Illinois Sales Representative Act.Details:Thursday January 28, 2010Saper Law Offices, LLC500 N. Dearborn, Suite 1200Chicago, IL 60654Time: 11:30 am – 1:30 pmCost $15 with online registration: http://salesrep.eventbrite.com
$25 at the door
Lunch will be provided
$4.99 to watch the live webcast Follow these instructions to register:
January’s seminar at Saper Law is a must-attend for any company or individual involved in sales. Sign up today before space runs out!
Topics: Seminars at Saper Law |
Daliah Saper quoted in FORUM Magazine in article titled “Open the Door to Social Media”
By Saper Law | December 3, 2009
Daliah Saper was recently quoted as a Social Media Law expert in Elizabeth Leonard’s article for FORUM magazine. The full text of the article is reprinted with permission below. To read the article online go to: http://www.associationforum.org/resources/digital-forum.asp
A pdf’ed version may be accessed by clicking here: forum-magazine-articleOPEN THE DOOR TO SOCIAL MEDIA
BY ELIZABETH BORRE LEONARD
NOVEMBER/DECEMBER 2009 FORUM 55
As many association professionals know, nonprofits often restrict employee access to social networking sites and sometimes prohibit it altogether. Never mind that popular sites like Facebook, MySpace, YouTube, Flickr and Twitter already have become staples in the modern mainstream marketing mix; many nonprofit executives continue to question the value of social media, worrying about the potential impact of hypothetical misinformation when it’s spread via social networks. As the Metropolitan Chicago Healthcare Council recently discovered, the risks are real. But so are the rewards.
THE PROBLEM WITH SOCIAL MEDIA
During the first half of 2009, media reports of social media blunders became all too common. Some people have even lost their jobs over short — but not so sweet — tweets. There was a woman in California, for instance, who unintentionally sabotaged a job offer when she carelessly tweeted about getting a new job with a “fatty paycheck,” then lamented over the longer commute and admitted to “hating the work.” In the end, the company rescinded its job offer.
Daliah Saper of Saper Law, a Chicago-based firm that practices social media and Internet law, warns that while social networks may seem harmless to employees, their employers must beware. That’s because evolving workplace ethics and — in some industries, such as health care, where there are rules like the Health Insurance Portability and Accountability Act (HIPAA) governing communications — legal mandates have shed a new spotlight on employee correspondence, even when that correspondence takes place on social networks.
“Simple actions such as complaining about a long day at the office have taken on an Internet-based tint,” Saper says. “Those status updates published to hundreds of connected people about the trials of the day could get you in trouble.”
The problem isn’t only with employees, according to Saper; it’s also with the social networks themselves, as there is no one on the other end of a typical social network policing improper or illegal activity. “If [a health care employee] posts a photo of a patient, Facebook certainly won’t instruct them to take it down,” Saper says. “If you are not aware of the problem and you haven’t correctly trained your employees, you could be liable for a number of claims resulting from your employees’ postings.”
MCHC, a membership and service association representing more than 140 hospitals and health care organizations in northern Illinois, has been studying social media for many years. In 2007, at the request of its member hospitals, MCHC hosted a blogging session to address a topic still considered taboo by hospitals: executive blogging. The question hospitals were asking them — and are still asking today — was, “Should we be participating in health care discussions on blogs?”MCHC took the plunge this summer when its president and CEO, Kevin Scanlan, began blogging about health care reform and its impact on hospitals in the Chicagoland area. “We knew that what was headed our way in terms of health care reform via the Obama administration was going to come down the pike at a fast and furious pace,” Scanlan says. “We also knew that our member hospitals were looking to us to get messages out into the community on how reform might impact their local hospital.”
In June, Scanlan and the public affairs team at MCHC launched a con-sumer-focused Web site, called Support-OurHospitals.com, and spent much of the summer blogging about health care reform and how the recession was negatively impacting hospitals.
OPEN SESAME
Julie Pesch, director of public affairs and communications for Children’s Memorial Hospital in Chicago and immediate past chairwoman of MCHC’s Public Affairs Committee, recalls how social media engulfed nearly every committee meeting she chaired from 2007 to 2009. “Blogging was the main focus early on, but by the end of 2008 Twit-ter and Facebook conversations seemed to be everywhere,” Pesch says. “And while many of us preferred e-mail and phone to reach out to the media, all of a sudden we were pushed in a new direction by health reporters toward sites like LinkedIn and Twitter.”
In early 2009, MCHC’s Public Affairs Committee noticed that its members were consistently running into a single obstacle: They were being denied access to social networking sites by their employers. Because they couldn’t log onto Facebook, YouTube or Twitter from their workstations, some committee members began using their smart phones to sign into their personal social networking accounts and communicate with reporters.
For its members’ sake, MCHC’s Public Affairs Committee knew it needed to substantiate the value of social media while finding ways to mitigate its risks. Deborah Song, associate director of media relations for Rush University Medical Center and current chair of MCHC’s Public Affairs Committee, inherited this conundrum from Pesch and faced the even bigger task of establishing template guidelines that committee members could share with human resources executives to begin the process of opening social networks to employees at work.
“We were aware of why hospitals were preventing their employees from getting on these sites, but we also knew that they were doing it anyway without sanction from their organization,” Song says. “We wanted to provide a roadmap for employees and their hospital organizations that would allow members to take their social media strategies to the next level.”
GUIDELINES TO THE RESCUE
Over a three-month period, MCHC assembled a subcommittee of member public relations professionals to research and develop a sample guidebook for use in teaching employees to effectively use social media. Additionally, MCHC recruited Saper to provide legal advice. The result was MCHC’s Guide to Social Computing, a template of suggested language for organizations to use when they’re building internal policies regulating the use of social media, or outlining consequences for employees who violate that policy.
MCHC gave its members a written social media resource, but it also took advantage of the opportunity to lead by example, using the guidelines it devel-oped for members to develop its own inter-nal policy for MCHC employees. Mary Anne Kelly, MCHC’s vice president of human resources and work force development, used that policy to give employ-ees a framework for appropriately using social media to the benefit of the association, and for understanding what is inappropriate use.
MCHC’s own policy also expanded on the Guide to Social Computing with additional language spelling out MCHC’s right to monitor at any time all elec-tronic communications and social media postings to ensure that staff is engaged in a reasonable use of social media during work hours.
REWARDS VS. RISKS
The debate over social media continues at associations across the country, begging the question: Is the reward worth the risk?
To answer that question, MCHC advises associations and their members to take a slow and balanced approach to implementing social media. “Once we studied the issue and created guidelines to steer staff in the right direction, we realized that we still needed to assess our strengths and weaknesses in this area and make sure our team was well positioned to handle these sites,” says Caryn Stancik, MCHC’s vice president of communications.
To that end, MCHC organized its staff on a linear continuum of social media familiarity. On one end, it identified younger employees who grew up with Facebook and MySpace and could navigate the Internet with ease. Members of this group, it decided, needed clear direction on how to keep their private lives separate from their professional lives. On the other side of the continuum were MCHC’s more experienced employees, who typically arrived to the social media party one or two generations too late. Because they had little use for social networks in their personal lives and were less familiar — and sometimes had no experience at all — with these sites, members of this group needed basic education about what social networks are and how they work. Finally, both groups needed training to teach them the positive impact that social media can have on their work.
To give employees the social media training they need, MCHC’s public affairs department is currently revamping its internal training workshops — once targeted toward traditional media training — to effectively address social media strategy. The goal by year’s end is to create a team of brand agents that will advocate on behalf of MCHC’s member hospitals in metro Chicago.
Elizabeth Borre Leonard is director of the Metro-politan Chicago Healthcare Council’s public affairs department. She may be reached at (312) 906-6142 or eleonard@mchc.com.
56 FORUM NOVEMBER/DECEMBER 2009
Topics: Internet Law, Press |
Saper Law publishes article in Dupage County Bar Journal: How to Avoid and Respond to Trademark Office Actions
By Saper Law | September 14, 2009
The Dupage County Bar Association recently published an article by Saper Law Attorney, Shannon Bond, in its October 2009 issue. The article discusses trademark office actions, specifically: “How to Avoid and Respond to Trademark Office Actions.”
HOW TO AVOID AND RESPOND TO TRADEMARK OFFICE ACTIONS
You must file an application with the U.S Patent and Trademark Office (USPTO) to federally register your client’s trademark. If the USPTO Examining Attorney assigned to your client’s application objects to the application, he or she will issue an Office Action. When you disagree with the Examiner’s objection, you must submit arguments in favor of your position. Your chance of success is dependent, at least in part, on the individual Examining Attorney assigned to the trademark application. But, you can increase your chances of overcoming the Office Action by addressing certain issues that show you know and understand what the Examining Attorney wants from you.
This article will cover (1) various reasons an Examining Attorney may issue an Office Action, (2) how you should respond, and (3) how you can reduce the chances of receiving an Office Action.
Lack of Sufficient Distinctiveness
There is a lack of sufficient distinctiveness when the mark describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods/services.[i] A slogan may lack sufficient distinctiveness when the slogan is simply informational. Usually, a statement is merely informational when it is a statement ordinarily used in business or in a particular trade or industry.[ii]
To illustrate, the mark “LEMON CLEAN SCENT” was found to lack sufficient distinctiveness when applied to dish detergent.[iii] And a phrase like “think outside the box” would not be registrable for consulting services.
To overcome an Office Action, you can either argue that the mark is distinctive or that it has acquired distinctiveness. Case law, dictionary definitions, and common sense should support your position that the mark is distinctive when looking at the mark in its entirety and in the context of the goods/services offered.
You may prove that the mark has acquired distinctiveness, by showing that it has acquired a secondary meaning that makes it distinctive. A mark has achieved secondary meaning when a significant portion of the public has come to understand that the mark refers exclusively to the mark owner.
Secondary meaning can be easily established, if the mark has been in use for at least five years. Once five years have passed, Examining Attorneys assume a mark has acquired distinctiveness.[iv]
Otherwise, you would present actual evidence showing the mark distinguishes the goods/services. Actual evidence could include large advertising expenditures, affidavits from customers or retailers, and surveys, market research, and consumer reaction studies.[v]
The final possibility would be to prove that the mark was previously registered on the Principal Register for goods/services. If the goods/services were the same as, or related to, those in the current application, then the evidence will be accepted as proof that the mark is distinctive.[vi] That means, if the current application is for a restaurant and the previous registration was for a restaurant, then it would likely be accepted as proof that the mark is distinctive.
If a lack of distinctiveness can not be overcome, the mark may still be registrable on the Supplemental Register, as long as it is not an “intent to use” application. (An intent to use application is not based on current use of the mark in commerce. Evidence of current use of the mark in commerce is provided later.) The Supplemental Register does not provide as much protection as the Principal Register, but it is better than having no federal registration at all.[vii] And, after the mark has been in use for five years, it may then be moved to the Principal Register.
Mark is Merely Functional
A functional mark is exactly what it sounds like it is: A mark that merely serves a function. To be a trademark, a mark must be an identifier. A mark is an identifier when it tells a consumer where the goods/services originate and helps consumers recognize the goods/services that the consumer wants. When a mark is functional rather than an identifier the mark is not registerable.[viii].
A clearly functional mark would be one that tells web site viewers to perform an action. But, at times, determining whether a mark is merely functional can be difficult. For example, a color, product shape, or sound may not be considered functional and may be registrable. Why? A mark that is not strictly functional is registrable, so long as it acts as an identifier and has acquired secondary meaning.[ix]
So, when responding to an Office Action, your argument should either be that the mark is not functional or that it is an identifier that has acquired secondary meaning.
Mark is Generic
A mark is generic when it employs a term that identifies products and services.[x] Such a term can not be an identifier and is unregistrable. Examples of generic marks include “computer software” or “facial tissues.”
A truly generic mark can not be registered, because no manufacturer or service provider will be given exclusive rights to a mere good/service term. To overcome an Office Action on the grounds that the mark is generic, you must present arguments and evidence, if any, showing that the mark is not generic.
It should also be noted that a registered trademark can become generic. Aspirin was trademarked by Bayer, dry ice was trademarked by the Dry Ice Corp. of America, escalator was trademarked by Otis Elevator Co., trampoline was trademarked by George Nissen, and videotape was trademarked by Ampex Corp. All of those trademarks are now considered generic terms—and they are only a few examples. When a trademark becomes generic the owner of the mark looses their exclusive right to use the mark and all other trademark protection.
Disclaimer Requirement
A disclaimer is required when words or phrases within a mark are generic or descriptive of the goods/services in the application or otherwise unregisterable.[xi] When you disclaim words or phrases in the mark, you are saying the mark owner does not have the exclusive right to use those words or phrases other than within the mark.
Making a disclaimer is not likely to have a big impact on your ability to protect the mark, if the portion disclaimed is small or insignificant in relation to the undisclaimed portions of the mark. But, other marks are almost completely disclaimed, and some are disclaimed in their entirety. When that happens, preventing others from using a similar mark becomes very difficult. In that case, it is worthwhile to, at least attempt to, convince an Examiner that the required disclaimer is overreaching and unnecessary. If successful, you may be required to only disclaim a small portion of the mark.
An applicant may make a disclaimer in the original application at the time it is filed, but it is not necessary to make a disclaimer until an Examiner requests one. If you file a disclaimer up front you may be giving away registerable portions of the mark. There is little advantage to bringing up the issue unnecessarily.
Likelihood of Confusion with a Registered Mark
Likelihood of confusion means your client’s mark is so similar to another mark that consumers will most likely be confused, mistaken, or deceived about the source of the goods/services.[xii] For example, the mark P.R.I.D.E.[xiii] (Promoting Real Identities and Developing Esteem in Me) is considered confusingly similar to P.R.I.D.E.[xiv]
The less similar the goods/services, the less likely confusion will result. You can bolster your argument by citing relevant factors from the list in TMEP §1207.01.[xv] If the factors weigh in favor of the marks not causing confusion because they are dissimilar, an Examiner may be persuaded to agree with you. Even identical marks may be registered when the goods/services provided under the marks are dissimilar.[xvi] In contrast, if the goods/services are virtually identical, an Examiner will probably not be persuaded by any argument you make.
Misdescriptive Marks
A mark is misdescriptive when a term misdescribes the character, quality, function, composition, or use of the goods/services.[xvii] Misdescriptive marks include those that imply goods/services originate in one geographic location when, actually, they originate in another. The trademark SILVER BIRCH for skin care goods was deemed misdescriptive, because the ingredients did not appear to include silver birch.[xviii] And, the trademarks HAVANA RESORT & CASINO and ROYAL HAVANA RESORT & CASINO were deemed misdescriptive for apparel, beauty products, and perfume that did not originate in Havana, Cuba.[xix]
The analysis in your argument to overcome an Office Action will be similar to that for a lack of sufficient distinctiveness. Your goal will be to convince an Examiner that the mark is not deceptive when examined in its entirety and in the context of the goods/services offered. If the mark is not likely to deceive a substantial portion of the intended audience, your chances of success will dramatically increase.
Ornamental Marks
Ornamental marks are merely decorative and do not serve as identifiers.[xx] For example, the wording YOU ARE SPECIAL TODAY on ceramic plates was considered decorative and not an identifier.[xxi]
Here’s a good tip to avoid an Office Action for an ornamental mark: remember that the larger the display of the mark relative to the size of the goods, the more likely it will not qualify as a trademark. In practice, your client may make shirts with their mark splashed across the front in big letters and shirts with the mark merely on the label. You should recognize that the latter makes the best specimen, because it is more likely than the former to be approved. When the mark is used on a shirt tag, it is more likely to be seen as a source identifier. Whereas, when the mark is displayed in big letters across a shirt, it is more likely to be seen as an ornamental design.
Disparagement or False Connection
Disparaging marks or marks implying a false connection may involve a person, institution, belief, or national symbol.[xxii] Marks that demean a competitor or falsely imply endorsement by a celebrity are not uncommon. When an Examiner recognizes the disparagement or connection, an Office Action is issued.
If an Examiner issues an Office Action on the grounds that the mark is disparaging, you should argue that the mark is not disparaging or is not directed at someone or something in particular. If an Examiner says a mark makes a false connection, you should argue that most consumers would not recognize the connection that the Examiner alleges.
Arguments about the lack of confusion caused by a mark are not effective to overcome an Office Action based on false connection or disparagement. Here, confusion isn’t a factor. An Examiner will issue an Office Action for marks that are disparaging or make a false connection to avoid violating a right of privacy or right of a publicity—not to protect consumers from confusingly similar marks.
Name, Portrait, or Signature
A name, portrait, or signature of a living individual is not registrable without the written consent of the individual. This protects an individual’s right of privacy or right of publicity.[xxiii] To overcome an Office Action, you may argue that the mark is not a name, portrait, or signature; that the individual is no longer living; or simply submit the individual’s written consent.
Surnames
Marks that are merely surnames are treated the same as marks that lack distinctiveness.[xxiv] For example, BOND LAW OFFICES for a law firm would not be registrable, when the applicant’s surname is Bond.
To overcome an Office Action, you could try to argue that the mark is not a surname, but that is not likely to succeed. Usually, an Examiner includes evidence that identifies the mark as a surname rather conclusively. It is unlikely you would be able to refute that evidence. Your only real argument is that the mark has achieved secondary meaning through extensive advertising or use for at least five years.
Title of a Single Creative Work
A mark that is the title of a single creative work will be issued an Office Action. A single creative work includes books, DVDs, films, CDs, and theatrical performances.[xxv] For example, a mark that is the name of a feature film, like “Away We Go,” will not be registrable. Such titles can not be an identifier, and accordingly they can not be trademarks.
In contrast, a mark for a series would be registrable, as long as it does not simply identify a character.[xxvi] A mark for a television series, book series, movie series, series of live performances, or a continuing radio program is registrable.[xxvii] If the mark is for a series, to overcome the Office Action, you would submit a specimen proving the existence of the series and the use of the mark in identifying the series.
Trade Names
When a mark is not employed as an identifier of the source of the goods/services, although it could be, then it may be merely a trade name.[xxviii] The best way to explain this concept is by example. If the mark is the name of a company, but is not attached to the goods’ labels or tags or displayed on the service advertisements, then it is a trade name. For that reason, a proper specimen is the best evidence that the mark is really a trademark, and not a trade name.
Domain Name
To register a domain name as a trademark, the domain name must serve as an identifier. The complete mark, as provided on the application, must be included in advertisements of the services or on labels or tags of the goods. Otherwise, the mark will not be registrable. Submitting screen shots of the web site with the mark visible in the page content or photographs of the mark on the label or tag of the goods would be excellent proof that the mark is a trademark.
Immoral or Scandalous
An immoral or scandalous mark will receive an Office Action. A mark is immoral or scandalous when it has an ordinary and common meaning that is “shocking to the sense of propriety, offensive to the conscience or moral feelings, or calling out for condemnation.”[xxix]
What does that mean? Commonly, sexually explicit marks and marks with profanity are considered immoral or scandalous. To convince an Examiner that a mark is not immoral or scandalous, you could argue that the meaning is not currently shocking or offensive. Or, you could argue that, in the context of the goods/services, the mark has a meaning that would not be immoral or scandalous to most consumers.
Mitigate The Risk
You can mitigate the risk of receiving an Office Action, by encouraging clients to only apply for trademark status when their marks are fanciful, arbitrary, or suggestive and act as identifiers of their goods/services.
A fanciful mark is the strongest type a client can have. It is a made up word with no meaning other than as your client’s mark.[xxx] Fanciful marks are the strongest of all marks, because they are the easiest to protect and the most likely to be registered. STARBUCKS, VERIZON, LEGO, and XEROX are all fanciful trademarks.
Arbitrary marks are also strong. They use actual words that have meaning, but the words have no correlation to the goods/services themselves.[xxxi] NICKELODION has no correlation with television. LOTUS has no correlation with software. CANON has no correlation with technology. BLUE BELL has no correlation with ice cream. They are all arbitrary trademarks.
Suggestive marks are as strong as arbitrary marks. They are related to the nature of the goods/services.[xxxii] Yet, they do not describe that nature. Instead, consumers must use their imagination to identify the relationship. Well-known suggestive trademarks are BLU-RAY DISK, PLAYBOY, JAGUAR, and 7-ELEVEN.
There are various reasons an Examining Attorney may issue an Office Action, but you can respond appropriately and, just as importantly, reduce the chances of receiving an Office Action at all. Clients may resist your best advice, but they will appreciate your knowledge and skill.
[i] TMEP §1209.01(b) (2008).
[ii] TMEP §1209.03(s).
[iii] U.S. Trademark Application Serial No.78688817.
[iv] TMEP § 1212.05.
[v] TMEP § 1212.06.
[vi] TMEP §1212, 1212.06.
[vii] See 15 U.S.C. §1094 (2008)
[viii] TMEP §1202.02(a).
[ix] See TMEP §1202.02(a)(i), 1202.05.
[x] TMEP § 1215.05.
[xi] 15 U.S.C. §1056(a); TMEP §1213, 1213.03(a).
[xii] 15 U.S.C. §1052(d); TMEP §1207.01.
[xiii] U.S. Trademark Application Serial No.77439472.
[xiv] U.S. Trademark Application Serial No. 78437875.
[xv] See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).
[xvi] TMEP §1207.01(a)(i).
[xvii] TMEP §1203.02.
[xviii] U.S. Trademark Application Serial No. 78245283.
[xix] In re Boyd Gaming Corp., 57 USPQ2d 1944 (TTAB 2000).
[xx] TMEP §1202.03.
[xxi] U.S. Trademark Application Serial No. 73402520
[xxii] TMEP §1203.03.
[xxiii] TMEP §1206.
[xxiv] See TMEP §1211.
[xxv] TMEP §1202.08.
[xxvi] Id.
[xxvii] TMEP §1203.02.
[xxviii] See TMEP §1202.01.
[xxix] TMEP §1203.01.
[xxx] TMEP §1209.01(a).
[xxxi] Id.
[xxxii] Id.
Topics: Press |
Spotlight on Saper Law’s Media Practice
By Saper Law | August 19, 2009
Saper Law’s Media Practice
Are you a publisher, producer, or reporter? Or, are you a business utilizing television, film, music, or any type of digital media? Do you have a blog or do you report any type of news or gossip online? Are you concerned about your legal rights or legal liabilities? If yes, then you may have a media law issue, and Saper Law can help.
Topics: Advertising Law, Internet Law |
Daliah Saper Profiled in Law Bulletin article re: Lawyers using Social Media
By Saper Law | June 9, 2009
June 09, 2009 Volume: 155 Issue: 112
Reprinted by permission from Law Bulletin Publishing Co: http://www.chicagolawbulletin.comLawyers flock to social media sites to subtly pitch their services
By Jerry Crimmins
Law Bulletin staff writer
Facebook, Twitter, LinkedIn and blogs continue to blossom as marketing tools, several Chicago lawyers say, while the publisher of the Yellow Pages files for bankruptcy.
For example:
“I’m Evan Brown, an Intellectual Property and Technology Attorney in Chicago, Illinois … follow me on Twitter or call me at …” says the first page of Evan D. Brown’s blog at InternetCases.com.
“I’m also on Facebook and LinkedIn,” Brown’s blog states. Brown, at Hinshaw & Culbertson LLP, is 34.
“Welcome to Saper Law Offices. Follow us on LinkedIn, Facebook, Twitter,” says the home page of Saper Law Offices. The principal, Daliah Saper, is 28.
Lawyer Kevin A. Thompson, who practices trademark, copyright and Internet law at Davis, McGrath LLC, has his profile on LinkedIn and posts on Twitter as a form of legal marketing. He, too, writes a blog.
“10 Years of the [Digital Millennium Copyright Act], a look at current trends in Web site operator liability,” is the lead item on Thompson’s CyberlawCentral blog.
It links to his May 15 speech at the Chicago Bar Association.
“I do have a Facebook profile,” Thompson added, “but I try to keep that personal.”
Thompson is 38.
While the Yellow Pages loses popularity, younger attorneys seek ways to get their names on the Internet in as many, positive mentions as possible.
“One big advantage of these social media tools or writing a blog,” states Brown of Hinshaw, is that “you can put information about yourself, your expertise, about your practice that’s available to people not in your immediate space, but to anyone who’s looking online for that information.”
Thus it’s a free form of advertising that can be out there for a long time where a potential client may stumble across it.
Brown writes for two blogs, his own InternetCases, which he said he does on his own time, and PracticalEDiscovery.com, operated by his law firm. He contributes to the latter on company time.
Facebook, Brown explained, is “a way to stay in the minds of those people who are in my personal network.”
“If I’m headed over to the Chicago Bar Association to give a talk about copyright law, I’ll be sure to mention that on my Facebook page so my friends on Facebook are reminded I’m a lawyer; I practice copyright law; I’m passionate enough about it to undertake speaking engagements on the topic.”
“I’ve been using Twitter since May of 2007,” Brown added. “It’s making its way into our modern, everyday awareness.”
He said major news networks and Oprah now use Twitter.
Thompson describes Twitter as a “micro-blogging platform. Your posts are very short. Each Tweet, as they call it, can only be 140 characters, maybe two sentences.
“There is a certain number of people you follow” who post messages on Twitter, “and a certain number of people that follow you back,” Thompson said.
These lawyers say they post links to interesting articles on Twitter, perhaps articles they themselves wrote, or they comment on something someone else has written. They also tell others what they’re up to, or search for what others have written on a given subject to see what’s talked about.
The business purpose, Thompson stated, is “getting better known within a certain group of people as an expert in your particular field. It’s more reputational enhancement, if used properly.”
“Perhaps,” Thompson said, someone you talk to on Twitter “will trust you more the next time they actually need help on an issue.”’
For other business marketing, Thompson said he prefers LinkedIn over Facebook.
“LinkedIn is much more professional-based” and business oriented, in Thompson’s view.
Individual profiles that people post on LinkedIn are more like resumes, Thompson said.
“If you need to get hold of somebody in ABC company, and you don’t know anybody directly, but perhaps one of your friends does,” you can introduce yourself indirectly through LinkedIn.com, Thompson said.
Saper offers her own PowerPoint presentation on her Saper Law Offices Web site on the problems social internet media cause for employers. It’s entitled, “Introduction to Legal Implications Surrounding Social Media.”
But she is a big user of it.
“For my business,” said Saper, “the best has been Facebook and Twitter,” although she also uses LinkedIn.
“Twitter is a great way to connect with other people in my industry,” Saper said. “My practice areas are heavily related to social networking, new media, intellectual property, Web based businesses.”
Her office Web site has the general appearance of an active legal blog.
One day recently, the Saper office’s Web site displayed a string of recent Twitter messages related to the firm, quick shorthand, similar to telephone text messages. The headline said, “Follow Saper Law On Twitter!”
Saper said she spends about an hour a day on social media, partly through her Blackberry.
The Chicago Lawyer Network is a brand new, professional networking site from Law Bulletin Publishing Company and the Chicago Lawyer Magazine. Unlike LinkedIn, Facebook, and Twitter, this new service is for lawyers only, and non-lawyers are not permitted to join. It offers groups, forums, events and blogs.
Martindale-Hubbell Connected is another networking site, which that firm says is also “designed exclusively for legal professionals.”
Martindale-Hubbell Connected “requires you to be a member. There is some cost associated with that,” Brown noted. “Your ability to use it is based on the level of your membership. Facebook, MySpace, LinkedIn, and Twitter are all free.”
Does online social networking work? Thompson said he got a client through his blog, and Saper said she recently got a client through Twitter.
The Chicago Lawyer Network is also free. Inquiries can be made to 312-644-7008 or to info@chicagolawyermagazine.com.
Topics: Press |
Saper Law presentation at Flourish 2009 Open Source Conference available here
By Saper Law | April 6, 2009
Daliah’s presentation to Flourish Conference attendees on Saturday April 4, 2009 is available for viewing here. All copyrights reserved.
oss-presentation
Topics: Copyrights, Software Development |
Daliah’s Presentation on “Inspired-by” Jewelry Can be accessed here
By Saper Law | December 3, 2008
If you missed Daliah’s presentation to the YLS Intellectual Property Law Committee today, you may access her powerpoint here: CBA Presentation 12.3.08
Daliah’s presentation was titled: ”Designer” Jewelry vs. “Inspired-By”Jewelry: Intellectual Property Infringement and Unfair Competition Considerations . In her talk, Daliah provided an overview of copyright, trademark, and unfair competition laws as they are applied in cases concerning jewelry.
Topics: Copyrights, Fashion Industry, Trademarks |