NEWS
New FishFAQ Trademark video: What is a Trademark?
We have started uploading a new series of FishFAQ videos directed towards Trademarks. This first video starts with the most basic question: What is a Trademark?
It covers the purpose of trademarks, who they are meant to protect, and why the government is interested in doing so; the basic things that can be protected under trademark rights, and the historical beginning of the modern trademark system.
The USPTO’s New Fee Structure for Large Information Disclosure Statement Filings.
The Old Prior Art Wisdom: When in Doubt, Cite It.
“When in doubt, cite it” is the wisdom handed down regarding prior art on the edges of relevance. After all, it didn’t cost much to cite such art by filing an Information Disclosure Statement (IDS). But there was a big potential risk if the art wasn’t cited. That wisdom, however, may cost you now with the new USPTO fees for filing large IDS’s.
The New Prior Art Wisdom: Over Citing Will Cost You
The USPTO is contending that in many instances, these large IDS submissions contain clearly irrelevant, marginally irrelevant, or cumulative information. The PTO has upped the fees to cover the extra time examiners must put in to check so many references. It should also incentivize practitioners to think harder about what information needs to be included. The breakdown is:
$200 for 51-100 items
$500 for 101-200 items
$800 for 201+ items
The PTO says about 5% of applications contain 51-100 items; 4% of applications have 101-200 items; and 4% have over 200 items. This should translate to only about 1 in 8 applications being affected.
How Will It Play Out?
It will be interesting to see how this affects filing. Historically, the choice has been clear. Patent filers have been able to avoid both the extra effort and inherent liability in identifying the most relevant references, by simply citing everything that is even marginally relevant. Are the new fees high enough to discourage that strategy? And seen from a more cynical viewpoint, are the new fees high enough to offset the fees that would otherwise be charged to clients from filing large IDSs. Are they high enough to discourage filers from trying to hide the most relevant references within a mountain of less relevant references?
This change would be implemented in Jan 2025. You can read the notice here: Updated IDS fees
New FishFAQ video: The Patent Process Overview
We have recently added another video to our FishFAQ video series on patents. This one covers a basic overview of the U.S. patent process.
You can find the entire FishFAQ video playlist at our Youtube channel: https://www.youtube.com/@fishiplaw
New FishFAQ video: The History of Patents
We have recently added another video to our FishFAQ video series on patents. This one covers a brief history and development of patents.
You can find the entire FishFAQ video playlist at our Youtube channel: https://www.youtube.com/@fishiplaw
New FishFAQ video: Patent Families
New FishFAQ video: Patent Pending
We have a new FishFAQ™ video explaining the term “patent pending”, when it can be used, and some considerations to keep in mind when using the term.
You can find all the videos in our FishFAQ video series here: https://www.youtube.com/@fishiplaw
TRUMP TOO SMALL Trademark Refusal is not First Amendment Violation
The Supreme Court recently decided, in Vidal v Elster, that the TTAB’s refusal to register the TRUMP TOO SMALL mark, was not a violation of First Amendment rights.
Background of the TRUMP TOO SMALL Trademark Application
USPTO Refusal Under the Lanham Act Names Clause
Back in 2018, Steve Elster sought to register a mark of “TRUMP TOO SMALL” as a t-shirt slogan. This was inspired by an exchange between Trump and Marco Rubio during the 2016 Republican primary. The PTO examiner refused on the grounds that the mark violated the ‘names clause’ of the Lanham Act. That act requires written consent for a mark containing the name of a living individual.
Elster countered that the ‘names clause’ was a violation of his first amendment free-speech rights. The examiner, however, responded that refusing registration doesn’t constitute a restriction on free speech. For reference, the PTO has also refused trademark registrations on “WELCOME PRESIDENT BIDEN”, “I STUMP FOR TRUMP”, and “OBAMA PAJAMA”.
TTAB Affirms Refusal of Registration
So Elster appealed the decision before the Trademark Trials and Appeals Board. But the TTAB affirmed the original decision barring Elster from registering the mark.
Federal Circuit Reversal in Re: Elster (2022)
Elster appealed the TTAB decision before the Federal Circuit. The Court noted that section 2 of the Lanham Act requires the PTO to refuse registration of certain categories of proposed trademarks. But in the last five years, the Supreme Court held two provisions in section 2 unconstitutional.
While the Federal Circuit acknowledged the TTAB’s point that the registration bar doesn’t “prevent Elster from communicating his message, it can legally disadvantage the speech at issue here.”
Political Speech and First Amendment Protections
The Fed Circuit stated that it is one of the prerogatives of American citizenship to criticize public men. In fact, the first amendment has its fullest and most urgent application to speech concerning public officials.
Therefore, suppressing the right to praise or criticize governmental agents can’t be squared with the first amendment.
Public Figures and Trademark Publicity Interests
The TTAB acknowledged this right. But added that the government’s interest in protecting privacy and publicity rights was seen to outweigh it. The Federal court argued here that Trump, as a public political figure can’t expect privacy. It further noted that one of the fundamental reasons for trademarks in the first place is the need to safeguard against the dilution of commercial value of his name, and that was not applicable here either. In summary, the government had no valid publicity interest that could overcome the first amendment protections afforded to the political criticism in Elster’s mark. As such, the Federal Circuit reversed the TTAB’s decision.
Supreme Court Review in Vidal v. Elster (2023–2024)
In 2023, the Supreme court agreed to review the judgment. The point being to resolve whether the Lanham Act’s names clause violates the First Amendment.
Content-Based vs. Viewpoint-Based Trademark Restrictions
The Supreme Court considered the issue as distinguishing between content-based, and content-neutral regulations of speech.
Content-based regulations target speech based on its communicative content and is presumptively unconstitutional. Viewpoint discrimination targets not merely subject matter, but particular views taken by speakers on the subject. Trademark restrictions that discriminate based on viewpoint violate the first amendment.
Because the names clause doesn’t single out a trademark based on the specific motivating ideology or the opinion of the speaker, it doesn’t facially discriminate against any viewpoint. But it may still be found to discriminate on viewpoint in its practical operation. Elster suggested this was the case here. It would be easier to obtain a mark if it flattered rather than mocked a subject. But there are many reasons why a person might want to withhold consent to register a trademark bearing his name.
Historical Limits on Trademarking Personal Names
While the names clause is not viewpoint based, it is content based because it applies to particular speech because of the topic discussed or the message expressed, so it turns on whether the proposed trademark contains a person’s name.
The Supreme Court reasoned that although a content-based regulation of speech is presumptively unconstitutional, it had not decided whether heightened scrutiny extends to a content-based, but viewpoint-neutral, trademark restriction. Trademark rights have always coexisted with the first amendment, and the inherently content-based nature of trademark law has never been a cause for constitutional concern.
Restrictions on trademarking names have historically been grounded in the notion that a person has ownership over his own name, and that he may not be excluded from using that name by another’s trademark. So the court issued a narrow decision that, in this instance, the particular restriction does not violate the first amendment.
You might be interested in this article on Trademarks too: A Tale of Trademark Law, the Rogers Test, and Parody