Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), bars the registration of trademarks that are deemed “immoral” or “scandalous.” “For the past few years, the USPTO has been on a Section 2(a) rampage, and this decision is the latest step in the PTO’s quest to become the commercial morality police,” says law professor Marc Randazza.
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Here’s an interesting article on BobMarley.com discussing the adaptation of the classic reggae anthem “One Love” as the tourism theme for Jamaica.
“One Love,” which adapts several lines from Curtis Mayfield’s “People Get Ready,” was originally recorded in 1965 by Bob alongside fellow Wailers Bunny Wailer and Peter Tosh and was produced by Coxsone Dodd for his legendary Studio One label featuring the jaunty tempo that typified the era’s ska music. However, much better known is the more melodic interpretation of “One Love” that was included on Bob’s 1977 album Exodus (cited as Time magazine’s Album of the Century). With its slower reggae beat and cheerily plunked piano chords, the Exodus rendition of “One Love” was selected by the Jamaican Tourist Board as its theme song in the early 90s and continues to be used by the organization to promote the island within the competitive travel industry.
“One Love” symbolizes the message of Jamaica to the world through tourism as we seek to promote peace and harmony and tolerance of all people,” explains David Shields, Deputy Director of the Jamaica Tourist Board. “The song has been used repeatedly by the tourist board to promote Jamaica and in recent research, our consumers have indicated that not only does the song resonate positively but as a destination Jamaica resonates positively through the song. So Bob Marley’s iconic presence and his music continues to represent Jamaica and our work in a positive way and in all of our campaigns we continue to use ‘One Love’ and reggae as one of our unique selling propositions to the world.”
On a somewhat-related note comes news from a Seattle Trademark Lawyer, reporting on a recent lawsuit filed in the United States by an American rock band called The Wailers. They’ve been performing as “The Wailers” since 1959, and they registered their band name as a trademark in 2003. Now they complain about the registration of the domain name wailers.com and allege that The Wailers in Jamaica have infringed and diluted their trademark for the band name and are causing confusion among music lovers everywhere.
The Wailers was a ska, rocksteady and reggae group formed in Kingston, Jamaica in 1963, consisting of Junior Braithwaite, Beverley Kelso, Bunny Livingston (aka Bunny Wailer), Bob Marley, Peter McIntosh (aka Peter Tosh), and Cherry Smith. They were called variously The Teenagers, The Wailing Rudeboys, The Wailing Wailers, and finally The Wailers.
Hmmm…wonder what Bunny Wailer would think about all this.
What your hands do, it’s your own eyes that ‘ve seen. So, won’t you judge your actions, to make sure the results are clean? It’s your own conscience, that is gonna remind you, that it’s your heart, and nobody else’s, that is gonna judge. So, be not selfish, in your doings, pass it on. Help your brothers, in their needs, pass it on. Live for yourself, you will live in vain. Live for others, you will live again.
Peace. One Love.
The original Billy Goat Tavern location was “born” in 1934 when Greek immigrant, William “Billy Goat” Sianis, purchased the Lincoln Tavern. Billy Goat bought the tavern for $205, with a check that bounced but was later repaid with sales from the first weekend. The tavern was located across from the Chicago Stadium (now United Center) and attracted mainly sports fans. Sianis became known as “Billy Goat,” when a goat fell off a passing truck and wandered inside. Sianis adopted the goat, grew a goatee, acquired the nickname “Billy Goat,” and changed the name of the bar to the Billy Goat Tavern.
Infamously associated with da curse of the Billy Goat, the Billy Goat Tavern is famous now for bringing together some of the biggest names in the trademark lawyer game. Above are Ron Coleman, Marty Schwimmer and John Welch, who got together for a meetup with other trademark law bloggers this week in Chicago. Go Cubs!
Update: John Welch, who grew up in Chicago and is a died-in-the-wool White Sox fan, let us know through Marty Schwimmer that our apparent support for the Cubs really got his goat.
On the Wordlab blog we discussed “trademark bullies” last year, when Leo Stoller sued over the use of the word Stealth as the title of a movie.
At the TTABlog, John Welch continues extensive coverage of the trials and tribulations of Leo Stoller, informing us that a court has recently ordered the cancellation of all the “stealth” trademarks held by companies associated with this infamous trademark licensing entrepreneur. Deeming the case to be “exceptional” the judge awarded costs against the complainants, declared them to be “vexatious litigants” and barred them from instituting “any lawsuit or trademark opposition” without prior leave of the court.
Subject to the inevitable appeal by Leo Stoller’s trademark companies, or their trustee in bankruptcy as the case may be, that probably shoots down his case against Sony Pictures, too.
It’s been a while since we discussed lawyer names on the Wordlab blog in a post titled Dewey, Cheatham & Howe, where we wrote:
Law firms that take a unique surname of a founder, and add an s to that name, create a brand built upon the law firm’s tradition, and establish an identity that is distinctive yet consistent with how the firm is often well-known in the profession and the community: Torys, and Gowlings, and Mallesons, and Blakes for examples.
Business-minded lawyers name their law firms with their customers in mind–not to assuage the partners–and thereby protect their investments in the business. Better to have a partnership interest in a law firm with a strong brand than to have one’s own name listed with many other partners on a “shingle” few customers can remember. The classic parody of traditional law firm naming is Jerry Seinfeld trying desperately to remember the name of the firm where the beautiful lawyer, Vanessa, works; repeating the mantra “Simon, Bennett, Robbins, Oppenheim & Taft” over and over.
Smart lawyers approach law firm naming from a customer-facing point of view, rather than a partnership perspective. Many leading law firms are building lasting brands with great individual names with respect to their own legal traditions, such as Skadden, and Osler, and Venable, and Stroock, each with a memorable domain name and a remarkable website.
Noteworthy amongst the Nifty Fifty recognized by Internet Marketing Attorney is Morrison & Foerster, better known by the moniker MoFo, with an award-winning website that communicates the distinctive and memorable brand of this outstanding law firm.
Incidental to those branding concerns, the legal issues of lawyer names as trademarks have come up in a few lawsuits between lawyers recently.
In an article on Law.com, we learned of the recent case where an individual attorney sued his former partners to prevent them from continuing to use his name in connection with the firm. Senior U.S. District Judge Norma L. Shapiro found that prominent intellectual property attorney M. Kelly Tillery was not entitled to an injunction, and not likely to succeed at trial, in a dispute with his former firm that would have forced the firm to completely eliminate all uses of the departing lawyer’s name and all mention of his court victories.
Specifically, Shapiro found that Tillery’s name is not entitled to trademark protection because it has not acquired any “secondary meaning.”
“The recognition of individual lawyers’ names as trademarks without a strong showing of secondary meaning could hinder the creation of new law firms (since, unlike other businesses, law firms are traditionally identified by personal names and not fanciful trade names) and the ability of individuals to practice law in their chosen field without changing their names,” Shapiro wrote.
Tillery, she said, “has cited no precedent granting trademark status to a lawyer’s personal name, used only in connection with his individual legal services, and the court could find none.”
Although a person’s name may serve as a trademark, Shapiro found that “they are considered ‘descriptive,’ not inherently distinctive marks, so they are treated as protectable trademarks only upon a showing of distinctiveness and secondary meaning.”
Tillery, she said, failed to meet the test for showing that his name deserves trademark protection.
“Although Tillery has used ‘Tillery’ as his personal last name all his life, it does not appear from the record that it was ever used in connection with a business or a product except as part of the name of law firms with which he was associated since his third year of practice, i.e., Leonard Tillery & Davison and then Leonard Tillery & Sciolla,” Shapiro wrote.
“There is no evidence that he commanded a particularly large share of the market, or that he made substantial efforts to advertise his own legal services separately from the law firms’,” Shapiro wrote.
DuPont: From the Banks of the Brandywine to Miracles of Science is a lovely coffee-table book commissioned by E. I. du Pont de Nemours and Company to commemorate its 200th anniversary. It’s a study rich in American corporate history, and a treasure trove of naming and branding.
Countless brand names and trademarks have been developed by DuPont in the past couple of centuries. Many of its trademarked products are global brands, like Corian® and Kevlar®. But the book has some lesser-known stories about well-known products that the DuPont Company has made into household words. Words like neoprene, and nylon.
There’s an interesting graphic in the book, depicting this announcement:
EFFECTIVE AT ONCE
WE ARE ADOPTING THE NAME
to describe our chloroprene rubber which has previously been sold under the trade mark “DuPrene.”
The product itself has not been changed in any way and is exactly the same as that previously sold under the trade mark “DuPrene.”
In addition to providing a short generic name for polymerized chloroprene, NEOPRENE can be used to describe the products made from it which display its many distinctive characteristics.E.I. DUPONT DE NEMOURS & CO. INC.
Rubber Chemicals Division
DECEMBER 16, 1936
DuPont dropped its DuPrene trademark in 1936 and referred to its synthetic rubber afterwards as “neoprene.” DuPont made only the material itself and not the many products, such as insulated electrical wire, hoses and shoe soles, made by the manufacturers who purchased DuPrene and then shaped it for their own uses.
DuPont marketers such as Ernest Bridgwater feared that the company would not be able to control the quality of the actual end-product that reached consumers. Under those circumstances, the generic term “neoprene” was more appropriate to DuPont’s role.
A more colorful reason for withdrawing the trademark, according to the Organic Chemical Department’s Oliver M. Hayden, was the complaint by a West Coast entertainer that DuPont was infringing on her stage name, Duprene. “Perhaps she thought DuPont would buy her off,” Hayden speculated. By that time, however, DuPont had already withdrawn the trademark.
Around the same time, in the mid 1930s, DuPont eschewed trademark protection and embraced market awareness for one of the company’s most popular products ever.
DuPont decided not to make “nylon” a trademark but to keep it as a generic product name. Just two years earlier the company had lost a lawsuit against the Sylvania company, which referred to its own moisture-proof wrap as “cellophane.” DuPont was unable to persuade the court that it had taken sufficient pains to protect “cellophane” as a trademark; instead, it had allowed the name to pass into common usage, as King-Seeley had done with “thermos” and Bayer with “aspirin.” Indeed, the term “nylons” so quickly became the popular way to refer to women’s hosiery that retaining the name as a trademark would have meant enormous effort and expense for DuPont, with no assurance of final success in the courts.
But there is no story about the naming of a DuPont product that resonates with experienced naming and branding professionals more than this anecdote about nylon.
DuPont expected great things from Fiber 66. Eager to give the product a catchy name, the company appointed a special committee to screen suggestions. The Rayon Department’s Dr. Ernest Gladding must have had tongue in cheek when he offered “Duparooh,” for “DuPont Pulls A Rabbit Out Of the Hat.” Other ideas were “Wacara,” a tribute to Wallace Carothers; “Delawear,” Lammot du Pont’s favorite; and 350 other creations, like Dusilk, Moursheen, Rayamide and Silkex. After Gladding’s second suggestion, “norun,” was rejected because the new fabric did run, the naming committee, composed of Gladding, general manager Leonard Yerkes, and his assistant Benjamin May, settled on the prefix “nu.” The second syllable, however, remained a problem. “Nuron,” a flip-flop of “norun,” sounded too much like neuroanatomy. The determined Gladding then struck out the “u” and the “r” and substituted an “i” and an “l.” But “nilon” could sound like “neelon” or “nillon,” so “y” went in for “i” and nylon emerged as the winning name of what DuPont was sure would be a prodigy in its product line.
DuPont’s new tagline “The miracles of science™” replaces the company’s famous motto “Better Things for Better Living through Chemistry™” the inspiration for this post’s headline.
You might enjoy this year’s Blawg Review Awards for law bloggers and everyone interested in the best blawg brands. It’s a surprisingly entertaining read, not just for lawyers but for everyone interested in law. And there’s lots of good stuff for anyone interested in naming and branding, too.
Overlawyered got the award for Best Name for a legally-oriented blog, but it looks like there’s competition heating up in this category as the Greatest American Lawyer and the Ruthless Lawyer are looking to establish domain name dominance.
This year’s Blawg Review Awards are judged and decided solely by Themis. You may agree or disagree with her decisions, and we trust that some of you might have a lot to say about these Blawg Review Awards on your own blogs. If you would like to acknowledge other award-worthy blawgs, by all means don’t hesitate to invent some new award categories and wield your authority like a law blogger by giving awards to your personal favorites—maybe even giving yourself the award you deserve.
In other news for lawyers, and naming and branding specialists, the Trademark Trial and Appeal Board recently denied Lawyers.com its application for trademark of that domain name. Apparently, it took twenty-nine pages to explain this seemingly inevitable result, but you can read a nice short post summarizing the decision on the TTABlog. Get it?
On a related note, Professor Bainbridge (whose eponymous law blog ProfessorBainbridge.com® picked up a Blawg Review Award for Best Eclectic Blog) recently announced that his blog name is now a registered service mark. So watch out.