Moving to LA...

There's going to be a little downtime and some changes to this blog. I will be joining the law firm of Skousen & Skousen. I will be joining their existing IP department and full service law practice. I start April 12. Check back for more frequent updates towards the end of April.

Jigga not allowed as trademark by USPTO

The U.S. Patent and Trademark Office (USPTO) has rejected a trademark application for "jigga," which was filed by Damon Wayans. Turns out that the USPTO thinks the word "jigga" is scandalous or disparages a particular group. Mr. Wayans had planned on his new hiphop clothing line. You can read more here, but be forewarned that this site uses patent and trademark interchangeably. Readers of this block know that is one of my pet peeves (e.g. there is a difference between patents and trademarks)

According to the USPTO, there are certain words that cannot be used in a trademark. Quoting the Trademark Manual of Examination Procedure (TMEP) Section 1203:

Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it-- (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States.

The TMEP governs how the attorneys at the USPTO examine trademarks.

Let's break down the various automatic rejections comprised in this section, which cannot be overcome (e.g. you will not be able to register the mark).

Immoral or Scandalous Matter

This includes many words, such as fuck and shit, which will offend people. This also includes other less clear-cut terms, such as "jack off" and "dyke." Recently the motorcycle group "Dykes on Bikes" was able to get a registered trademark because they were able to show that lesbians are not insulted by being called dykes (more info). This is where Mr. Wayans ran into trouble (more below).

Deceptive Matter

Instead of explaining this one myself, I quote TMEP Section 1203.02:

The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

(3) If so, is the misdescription likely to affect the decision to purchase?

Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute

This one applies to people and national symbols, so you cannot register "France Sucks." I know it's popular to hate France, but without them, we wouldn't be a country (massive financial aid during the Revolutionary War and a blockade of British troops by French ships allowed Washington to defeat Cornwallis- but I digress). You also claim a false connection (such as registering Paula Abdul for perfume if you do not have her permission) or do something that might bring contempt to a name (some once tried to register "Here's Johnny Toilet Seats," and Mr. Carson did not like that).

This brings us back to Mr. Wayans and his "Jigga" mark. Clearly he's playing on the term "nigga" which is another form of "nigger." Lest anyone think I'm tossing around slurs, I myself am a Mc Pollack nerd. Mr. Wayans's mark appears to be a play on the term "jiggy," which was made popular by Wil Smith. I'm kind of surprised that this mark has not been allowed to go forward, or that Mr. Wayans's attorneys have been able to overcome this rejection. While clearly "nigger" is a term that is scandalous and/or disparages someone, "nigga" is so widely used in popular culture (rap, hiphop, movies, normal people, etc). I think some strong arguments can be made to the USPTO to convince them to allow this mark through, and hopefully Mr. Wayans will eventually "Jigga" registered with the USPTO.

Trademark squatters: Big trouble in little China

An article on CNNMoney.com really caught my attention today. The article, entitled China: Your company name may not be yours, is interesting for several reasons. First and foremost, yours truly was interviewed for this article, and I am quoted in the article. Second of all, it points out how important it is to protect your brand in markets you may not have considered.

Up until recently, China was not a popular country for trademark protection. China was outside of the WTO (World Trade Organization), and infringement of patents, trademarks and copyrights was rampant. There were weak and ineffective laws to enforce IP rights. China had to revamp it laws, and promise more protection to IP holders, as a condition of joining the WTO. While IP violations are rampant still, more avenues are available to holders of legitimate IP rights.

Savvy individuals in China (and elsewhere) have been snapping up the big names, and obtaining registered marks in their country. This effectively blocks the legitimate trademark holder from using their own mark in that country. A notable recent example is the troubles encountered by Starbucks in Russia. These individuals will identify popular brands outside of China, often brands that are just getting started and gaining traction in other markets. They may still belong to small entities without a large budget for trademarks. The individual registers the mark in their country, and then can basically sell it for a nice profit when and if the business wants to expand into China (or the respective country).

I've noticed a trend over the past few years: more people are interested in filing trademarks in China. In some cases the business is already in China, and often the business plans on going into China. I tell people that if they are considering to enter the Chinese market, the cost to file now is much cheaper than going after a trademark squatter later. For around $1000 a trademark application that has the same filing date as your U.S. application can be prepared and filed. I have good contacts with multiple law firms in China and Hong Kong, so we can find the right match for you. We can also help you setup distribution and other agreements for your business interests in China.

Here is what I said in the article:

Owen Smigelski, an intellectual property attorney with San Diego-based Achtel Law firm, recommends U.S. brandholders immediately file their trademark particularly in those countries where trademark squatting is springing up more frequently.

"Over the past couple of years we've certainly have had more clients pursuing trademark issues in southeast Asia versus earlier," Smigelski said. "I think with the Olympics coming up, China is also looking very attractive for lots of international brands and they should be aware of trademark issues."

It's relatively inexpensive to register the trademark, typically under $1,000, he said, while trademark litigation can run into thousands of dollars.

Very true indeed, if I do say so myself. I guess I already did...