Thanks for tuning in again for part two of my story from Benjamin Franklin Inn of Court meeting. This time, we turn to functionality. In short, you can’t trademark something that is functional. For example, you can’t trademark the color yellow gold for gold jewelry, because gold is naturally yellow gold.
There are two types of functionality:
Utilitarian Functionality: A product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. This comes from a landmark Supreme Court case, TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). Basically, what this is saying is if you have a product feature that is functional, patent it; don’t trademark it.
The other night, I attended Benjamin Franklin Inn of Court meeting and I really liked it. Like, really liked it. We discussed two things about trademarks: tacking; and functionality. Let’s talk tacking first, but stay tuned for part two of this article covering functionality.
Tacking works like this. You have a registered trademark and one day you decide to make it a little hip. Now you want to register your new trademark, and when you’re asked for the priority date, you use the priority date of the registered trademark. Why can you do this you ask? Well because the presumption is, your registered trademark and your new trademark are similar enough that the consumers will think of the two marks as the same mark.
By now I've worked with individual clients, small businesses, large institutions, and everyone in between. But recently, I've been surrounding myself with small businesses, and many of them ask me, “What general advice (in the realm of intellectual property law) do you have for small businesses or start up companies?” So, I decided to come up with a few things that you can keep in mind if you're a small business or a start up.
I've come across many many many strange patent applications, and hence strange inventions, over my career as a patent attorney. And that's saying a lot, because I still have a long ways to go until retirement.
Well, it's only January, but I already came across what could likely be the “patent (application) of the year.” The title of this application is “Planar Waveguide Apparatus with Diffraction Element(s) and System Employing Same,” and it is assigned to Magic Leap, Inc. Apparently, Google lead a $542 million round of funding for Magic Leap to work on augmented reality glasses that can create digital objects that appear to exist in the world around you. Are you impressed?
I’ve been seeing a lot of celebs wear Brian Lichtenberg stuff lately and I’m thinking about snagging a few of these myself. If you don’t know who Brian Lichtenberg is, he is a fashion designer who is known for designing and selling parody wear. Kind of like “Weird Al” of the fashion world, if you will. Take a quick look at his t-shirts and you will do a double take. Homiès (Hermès), Féline (Céline), Brianel (Chanel), and Bucci (Gucci) are some of my favs.
I guess the title of this post is revealing of my age. Anyways, I stumbled upon this article on Huffington Post today and I decided to talk about it because it relates to trademark/trade dress even though it doesn't really seem like it.
But first, I have to say that Huffington Post is so damn good at coming up with catchy titles. And sometimes I know they're trying to sucker me in, but I fall for it anyways. One can only be so strong. Articles having titles like, “Justin Bieber Doesn't Look Like This Anymore,” “10 Things That You Must Do Now!” or “Watch This Video of Adorable Puppies” are definitely a must read.
I hope you haven't forgotten about me! I've been working on an article for another blog and well, you know.
Anyhow, I saw this article on Huffington Post the other day. The article is about a trademark application that was rejected because the USPTO deemed it "vulgar." The trademark was "COMFYBALLS" for men's underwear, which has a special pouch to cradle the male genitals.
If you're not aware, not everything can be a federally registered trademark. According to Section 1203.01 of TMEP, or Section 2(a) of the Trademark Act, there is an absolute bar to the registration of immoral or scandalous matter. Sounds harsh.
How do you determine if something is scandalous? You look to its ordinary and common meaning. In re Riverbank Canning Co., 95 F.2d 327, 328 (CCPA 1938). This may be established by referring to court decisions, decisions of the TTAB, (and I love this one) dictionary definitions (does urban dictionary count?). In re McGinley, 660 F.2d 481, 485 (CCPA 1981). Whatever the ordinary and common meaning, it must be shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. Id at 486. AND, the meaning must be determined in the context of the current attitudes of the day. In re Mavety Media Group Ltd., 33 F.3d 1367 (Fed. Cir. 1994).
Whenever I file trademark applications, my clients all seem to misunderstand what a trademark or "trademarking" actually means.
Many people think they can trademark the name of their company, or their company logo. But that's not exactly the case.
If you're confused by the title of this article, good. You should be. As you might have guessed, applying for a patent is a completely different and separate process from applying for a trademark. However, I run into questions every now and then about the title of the invention.
Most clients come up with catchy names for their invention. (Usually it's a trademark for a good that is included in the patent application.) While clients come up with catchy names with the intent to market or sell their invention using these names, these names are not suitable for use as the title of the invention in a patent application.