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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
FREQUENTLY ASKED QUESTIONS
Ths month, I’m responding to three of many “frequently asked questions,” The first is about those much publically used marks, used by the U.S. government or international organization and which have become so well known that they are thought of as generic and up for grabs for anyone’s use. The second question concerns the wages of misusing a trademark, especially where the use is innocent and the alleged violator is acting in the best of “good faith.” The third is the “provisional patent,” and the use of “patent pending,” and what it achieves, and what it doesn’t.
UNSELECTING TRADEMARKS
Contrary to popular perception, the appearance of marks as seen in regular use by governments and international organization, do not reduce the protection given these marks. It is because this type of mark is so well known, and so popular with the public, that various federal statutes and regulations have been enacted to prohibit or restrict the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals and characters adopted by the United States government or particular national and international organizations. These designations are reserved for the specific purposes prescribed in the relevant statute and are protected for use in the prescribed manner.
For the United States, there are about 70 statutes that grant exclusive rights to use certain designations to federally created private corporations and organizations. While trademark violations are civil and money damages are subject to the equity jurisdiction of the court, violation of some of these statutes may be a criminal offense, e.g., 18 U.S.C. §§705 (regarding badges, medals, emblems or other insignia of veterans’ organizations); 706 (“Red Cross,” “Geneva Cross,” and emblem of Greek red cross); 707 (4_H Club); 708 (coat of arms of the Swiss Confederation); 711 (“Smokey Bear”); and 711a (“Woodsy Owl” and slogan, “Give a Hoot, Don’t Pollute”). Other statutes provide for civil enforcement, e.g., 36 U.S.C. §§153104 (National Society of the Daughters of the American Revolution); 30905 (Boy Scouts); 80305 (Girl Scouts); 130506 (Little League); and 21904 (The American National Theater and Academy).
The statutory right is not absolute. While the use of the Greek red cross other than by the American National Red Cross is proscribed by statute and use of the coat of arms of the Swiss Confederation for trade or commercial purposes is proscribed by statute, where a health maintenance organization used as a mark, a dark cross with legs of equal length on which a caduceus is symmetrically imposed (with the representation of caduceus disclaimed), the mark was found to be readily distinguishable from the Greek red cross (on white background) and the Swiss confederation coat of arms (white cross on red background) and registratable.
The Olympic symbol, often thought of as available for general use, is protected under Section 110 of the Amateur Sports Act of 1978, 36 U.S.C. §220506, protecting various designations associated with the Olympics. Under 36 U.S.C. §220506(a), the United States Olympic Committee has the exclusive right to use the name “United States Olympic Committee,” its symbol and emblem, and the words “Olympic,” “Olympiad,” “Citius Altius Fortius,” “Pan American,” “Paralympiad,” “America Espirito Sport Fraternite,” or any combination thereof. Olympic is particularly troubling because it has a general or generic usage and its restriction touches upon free speech. Nevertheless. the United States Supreme Court has held that the grant by Congress to the United States Olympic Committee of the exclusive right to use the word “Olympic” does not violate the First Amendment, and 36 U.S.C. §220506(c), would make any person Olympic or any simulation of the words “Olympic,” “Olympiad” or “Citius Altius Fortius” liable. For example, “Gay Olympic Games,” would be proscribed.
Like marks thought of as belonging to the “public,” people we know well, living and deceased are protected. Section 2(c) of the Trademark Act, 15 U.S.C. §1052(c), bars the registration of a name, portrait or signature that identifies a particular living individual, or a deceased United States president during the life of his widow, except by the written consent of the individual or the president’s widow. Clearly, the right of a living person to protect their privacy is undisputed. For the deceased, the question is whether the deceased person had established a public recognition to, and value in, their name or portrait, during their lifetime and which has become a proprietary right in their estate. That explanation should be enough to satisfy any aspirant to “Elvis,” cough drops. “Baby Ruth,” we are told, however, was the name of President Cleveland’s daughter and not an adoption of “The Babe,” as in “Babe Ruth.”
However, surnames usually make good marks, are always tempting and sometimes cannot be resisted, take “Chef Boyardee,” and “Heinz,” for example. (Although in truth, Chef Boyardee is a fanciful version of a real chef named Boiardi, but I am told “Heinz,” is real.
The Wages Of Violating a Trademark
While federal and state statues cry out for money damages, in compensation for lost profits and for up to three times actual damages and even for attorney fees, courts are constrained by the rules of equity to use discretion and generally show themselves to be reluctant in awarding money damages except for what has come to be known as egregious trademark violations. Egregious would be a violator acting willfully with full knowledge of the trademark right violated or acting fraudulently and in bad faith.
Examples which might serve as illustrations only of what could possibly be viewed as non-egregious behavior would include misusing a common law trademark used by its owner without any symbol, sign, or appearance, which would reasonably indicate the mark is intended to be used as a trademark. Because rights are established in common law when a mark is used in intra state and interstate commerce, the public would be held hostage to an minimally arguably assertable common law right masquerading as a quasi descriptive term and which is unleashed on the public for the purpose of collecting money damages from an innocent good faith user. Accordingly, most commercial uses of a common law trademark are with us a sub or super script “tm,” somewhere with the goods or containers or in an ad or display, to claim the mark as a proprietary right.
However, a word of caution. While the federal trademark law is made equitable by its wording, the same word “equity,” is omitted from the Florida Trademark Act and a court considering a violation of a state registration, although ordered to give great weight to the decisions of the federal courts, may not view the federal equitable damages provisions as necessary comparable.
Provisional Patents and Patent Pending.
Provisional patents are just what the name implies. The patents are a grant of provisional rights made subject to a term of one year and without any rights of enforcability. Its grant is intended to secure the provisional right to the application’s filing date, subject to the filing of a full utility patent application made within one year.
There are those who would use “patent pending,” in an effort to dissuade others from using an idea viewed as proprietary. Use of “patent pending, with a provisional application, can be nothing more than a rather low level attempt to defraud, as the “provisional,” patent by itself is a statement there are no rights capable of being violated. On the other hand, the use of “patent pending”, in most cases is found with a filed utility patent application which has not yet issued as a valid patent. Because no patent rights exist at all until a patent issues, that use would be like intimidation rather than actual fraud.
In any event, when filing a provisional patent application, consider it as seriously as a full utility application with claims to be added later, and rather than threatening with a “patent pending,” notice, use the application with all of he claims deleted, to turn a potential infringer into a prospective licensee.
Stay Tuned for Next Month's Article!
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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