Trademark Law Basics for Adult Webmasters and Content Producers
By J. D. Obenberger, Attorney at Law
© MMII J. D. Obenberger, All Rights Reserved
Written as an informative article for smart laymen, this article introduces the key concepts behind Trademark law and it makes no pretense that it will teach you how to prosecute a trademark application through the US Patent and Trademark Office, to defend it against an objection in the USTAB, or how to proceed against an infringer. But before you hire anyone to do those things, or try to do them yourself, you will need some foundational underpinnings about the subject of Trademarks.
Trademark law is different from Copyright and Patent Law because, first of all, it emerged more out of the law's desire for the protection of consumers in the marketplace than from a desire to protect manufacturers and the providers of service; it surely performs that latter role, too, and there are cases a-plenty now that describe Trademark as a property right. But you will never grasp all the key concepts without knowing the fundamental purpose that drove its origin in the law.
First and foremost, Trademark law exists to protect the public from goods and services whose origin is counterfeit, which confuse the public about who is behind the product or service in commerce.
It would make no sense at all to limit a Patent or Copyright to a local state or jurisdiction or area; it makes eminent sense for a law designed to protect the public against phonies to limit the protection of Trademark to the area where the mark is in use. Trademark law can protect "Joe the Plumber" in Denver and permit another operator to run "Joe the Plumber" in Detroit, and in fact that's exactly how "common law" trademark law, administered by states, works. A trademark is usually limited to a geographic area and to a particular branch of commerce. Because, unlike copyright and patent, the US Constitution does not give the federal government the exclusive power to grant trademarks, both the federal and state systems do get involved; the federal government regulates trademarks under its power generally to regulate interstate commerce, and one of the chief differences between the trademarks acquired under state law and those acquired under federal law, is that a federally registered trademark operates coast to coast, nationwide, while a state common law trademark only affords its owner rights in the geographic territory in which it is used in commerce.
Also, unlike Patents and Copyrights, trademarks are acquired only by their use in commerce. While one can apply for federal trademark protection with only an intent to use the mark in commerce, it cannot actually be granted until the mark is in use in the category of commerce in which registration is sought. Here, you can see a remnant of the first concept mentioned in this article, that it is above all else the desire to protect the public from source confusion that drives trademark law.
When one applies for trademark registration, one must apply in one or more discrete areas of commerce which are described by a scheme of international classes, each class possessing a number, and describing a closely allied goup of commercial endeavors. If you plan both to operate a website and to publish a hard copy magazine, you will apply in at least two classes of commcerce, and you will pay an additional fee for each class in which you apply.
Now, as is usually the case, there is a bit of an exception to what I've just written. If a mark is truly famous and meets certain legal tests for fame, it becomes so powerful a mark that its owner can enforce it against anyone who uses it in any kind of commerce. For example, it's surely the case that PANASONIC is a famous mark, and there are not many persons on the face of our planet who are unfamiliar with this giant's name and products. One will think of electronic devices at first, because those products are best known, though PANASONIC manufactures a great deal more than radios and cameras and TV's and the like; for example, I have a PANASONIC pencil sharpener on the same desk at which I am writing this. That being the case, were someone to bring some PANASONIC eyeglass frames to market, even if PANSONIC has never been in that line of commerce and has not staked out its claim by even an intent-to-use application at the USPTO, PANASONIC, as the owner of a famous mark would have a strong claim against the eyeglass frame company. This is because it is so famous that the public will take the frames to originate from that industrial giant, and assume that it possesses the same high quality which usually is found in its products. There are other reasons for this doctrine and the statute that introduced it to US law about twenty years ago, but protection of the public marketplace is among the important reasons that sold it to Congress.
The application for trademark registration is made these days online and the fees are paid online using protocols first developed by the adult internet, the real pioneers of online transactions. Eventually, your application will come to the attention of an Examiner. You are unlikely to have ever encountered such a detail-oriented person in your life. They define precision. It is their duty to act as vanguards and watchmen to enforce the trademark laws. They will examine your mark to determine whether it infringes any existing registered marks or tends to confuse, that being the first role of trademark law in the first place. They will also consider whether the mark is "merely descriptive", because a mark that is merely descriptive cannot be lawfully acquired or registered; it would serve only to limit the fair use of the English language. If you are a pornmeister, you must also be concerned that they will determine your mark to be "scandalous or immoral" because the Copyright Act explicitly denies registration to these kinds of marks; the Office loosely applies this standard with some recourse to evidence of what the societal judgment will be. Weapons of Ass Destruction has been registered, but others with more colorful language have been denied registration.
There are many prohibitions in the law which can foreclose registration or which qualify registrability; for example, a mark using the name of a living person may be granted only with the consent of that person. Circulars describing the limitations are available online at the Trademark Office website, and of course the Trademark Act itself can be consulted online as well.
A mark of the nature we are describing comes in two flavors, a "word mark" application for all uses of the mark in standard characters or a "design mark" that shows a particular font or includes a graphic design or both. It is not uncommon to apply for both at the same time to cover the waterfront of protectibility. If you cease using one design, don't forget to file a new application for your new logo.
Typically, you will be informed of this preliminary examination by an Office Action, and often, you will be invited to make changes which are, in the opinion of the examiner, necessary for registration. Sometimes, in fact often, they are hypertechnical but easily cured, once you can wrap your mind around the nature of the problem, and in fact, sometimes an Examiner will, with your consent, help you out with an "Examiner's Amendment". Other times, there is not much one can do to modify the application in line with the Examiner's findings to conform it to the law as the Examiner sees it. However, sometimes some polite arguing does achieve significant results to achieve registration; an examiner may require what seems like an unnecessary amendment, however, in what seems like a paper shuffle to save face after these polite discussions. If no amendment is possible and he won't budge, you can formally ask him to reconsider, and if that's refused, you can fight by taking a formal appeal. It is at this point that most nonlawyers get frustrated and simply abandon the process, causing the application to die after certain time limits are passed. If you are assisted by a lawyer, it is easier to deal with the situation, any you may find yourself taking an appeal to the USTAB that has competence to re-examine a refusal and reverse the Office.
If and when you make it past the Examiner's desk, your application will be published; the public will have thirty days to object; many commercial interests subscribe to services that monitor these publications and which alert them when marks coming close to their existing marks are being applied for. If an application draws an objection, it can be resolved before the USTAB by adjudication or the parties may agree among themselves as to limitations that will give use to the applicant and protection to the existing mark owner.
It is because of the potential of drawing objections from existing users of the mark that many applicants will pay a private service to conduct a "common law search" for uses of the mark in commerce. While it's easy to search through the online database of federally registered trademarks, it's not so easy to find all the existing marks used in commerce that are not registered federally; since you are applying for coast to coast coverage, and you cannot put out of business the valid use of a mark that predates yours, you will want to know who may be using the mark you seek or another mark confusingly similar to it. These searches are not cheap, but they are not crazy expensive either. Budget about $1,000.00 and you'll usually be well within budget.
If you filed with an "intent" to use the mark in commerce but have not done so, you will be given a period of time to put the mark in commerce, and this will be extended for good cause. Once it's in use, you will file an affidavit of use and if all is in good order, you will receive your certificate of registration with a gold seal. Or a simulated gold seal printed in yellow ink.
Then, you will be entitled to use the Registered Trademark Symbol, the internationally-protected symbol you see next to XXXLAW at the top of this page; to use this symbol without actual federal registration is a crime. If you cannot qualify for and obtain federal registration or choose not to do so, or while your application is pending, you may use the "SM" for Service Mark or "TM" for Trademark if you can do so in good faith; it announces to the world your belief that you have common law trademark protection, under state law, for your use of the mark in your category of commerce.
But even if registration is granted, you are not done. Between the fourth and fifth years of registration, you must file another affidavit showing that you continue to use the mark in commerce or it will be considered abandoned; you must also make a filing at that time to make your mark "inconstestable" against most common claims that may invalidate it. Before that is done, an action may be commenced to revoke your application. Then, between the ninth and tenth years, you must file for renewal, and if you fail to do so, your mark will also be deemed to have become abandoned.
Another important point needs to be interjected: though there is seldom any active investigation by the Trademark Office into the veracity of your allegations and statements under oath, it is a crime to lie. Just as important, if the registration ever blows up into active litigation between you and another contending party, it will look all of your statements to the Trademark Office with a fine tooth comb looking for lies, and if it finds any colorable lies, it will argue for the revocation of your registration on that basis; the opponent will have a strong motivation to investigate and discover any misstatements; this challenge may come years after registration, after you have heavily invested in the business protected by the registration and using the mark exclusively, and the results can be catastrophic. Remember the Scout Law. Be Honest. Someone may catch you if you are less than honest.
Trademarks can also be granted for ship's hulls and other strange stuff, but that's not aimed at my target audience, so I will save that for another day and another website.
It is important to remember, that while a domain name may include a trademark, a domain name itself is not a trademark. You should develop your mark before you name your site and do that with an eye to whether the mark you plan is likely to be granted registration; in other words, you should do searches online and through a common law search and examine the database online at the USPTO. You should then test the mark for whether a statutory grounds for denial exists, including whether it is likely to be "scandalous or immoral", but forgetting none of the less stimulating grounds for denial, such as "merely descriptive".
I would be remiss if I did not remind the reader that we provide assistance in doing all of the things described in this short introduction.
This article is written to generally inform the public and does not provide legal advice nor does it establish an attorney-client relationship. If you have a legal issue or question, contact a lawyer. If you are arrested, make no statement and contact a lawyer immediately, but offer no physical resistance. All matters presented here are subject to the fine print set out elsewhere on this website.
Joe Obenberger is a Chicago Loop lawyer concentrating in the law of free expression and liberty under the United States Constitution, and his firm has represented many owners, employees, and customers of adult-oriented businesses, both online and in the real world. He can be reached in the office at 312 558-6420. His e-mail address is firstname.lastname@example.org