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Someone Stole My Board Game! (Part IV)

Part IV of a four-part series of blog posts covering intellectual property and board games.

Okay I have my patent and my intellectual property clearance, am I good to go?

In cases where a board gamer designer steals intellectual property from another designer, they need to be taken to task, held financially responsible for their theft, and enjoined from continued infringement. Patents, as well as copyright and trademark registrations make it easier to determine the exact scope of intellectual property protection a board game has. This makes it easier for other game designers to gain inspiration while avoiding infringement and for owners of the intellectual property to stop infringers. But here are more things to consider than just patents, copyrights, and trademarks.

What is protectable and what is not?

Intellectual property laws define the metes and bounds of what parts of new board games developers are allowed to protect and which parts they are not allowed to protect. Some elements that are not protectable include: items in the public domain, bare ideas, broad themes, obvious concepts, and simple phrases. One benefit of obtaining intellectual property protection on a board game is that it clearly lays out the scope of what is protected, like a specific game mechanic. It lets competitors know how far away from your board game design they have to be to avoid intellectual property infringement. The more ground-breaking your board game, the greater the intellectual property protection you have available.

Beyond the law

So you have protected the intellectual property in your board game with patents, copyrights, trademarks, etc. And you have taken steps to avoid infringing the intellectual property rights of any other board game developers. Are you in the clear? No. Even if you have crossed all of the “t”s and dotted all of the “i”s on your board game from a legal standpoint, that does not mean you no longer need to keep your eyes and ears open for theft issues. Just because you and your patent lawyer have a solid understanding of intellectual property issues as applied to board games does not mean the rest of the intent does as well. Failure to quickly address allegations of intellectual property infringement, even if unfounded, may lead to catastrophic consequences. The same social media that makes it easier for board game developers to introduce new games and reach new markets also makes it easier for misguided third-parties to rally millions of angry board gamers against you over even the smallest perceived slight, regardless of whether that slight is real or imagined.

Being right may not be enough

Part of the problem is that many board game developers do not understand the scope and limitations of intellectual property protection. Just because another board game make look like your game, or use a similar mechanic or theme does not mean that the developers of that game stole anything from you or infringe any of your intellectual property. A board game developer may see a similar board game online and claim that the second developer stole the board game idea, when in reality the designer of the similar board game may never have even have seen the first board game. It may just be a case of parallel thinking. Even if the second board game developer did obtain inspiration from the first game, nearly every board game is inspired to some extent by games that have gone before. Unfortunately, online reporters may pick up the story, and put it in front of millions of eyeballs without ever checking to see whether the second board game developer has even done anything wrong, either legally or morally. Other situations might involve a beloved co-developer of board game being dropped from a re-release of the game without a detailed explanation of why. This may lead to a needless boycott of the re-release, when the dropped co-developer actually supports the re-release.

The three-step strategy

The key is to not only get your legal ducks in a row, but to be sensitive and responsive to online issues, many of which involve social media. Even if you are right, and you did not steal anyone else’s intellectual property, taking a hard line approach toward disgruntled game board players may not be the best approach. A better approach is often to: 1) present the facts as fairly as possible; 2) encourage dialogue; and 3) be receptive to undertaking changes that, while not legally required, may eliminate the need for costly and time-consuming litigation. With this three-step strategy in hand, you may even turn a public relations nightmare into a public relations windfall. The key is to react with speed, honesty, earnest, and sympathy.

Brett Trout

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Posted in Board Games, Patent Law, social media, Trademark Law.

By Brett Trout
May 25, 2018

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Someone Stole My Board Game! (Part III)

Part III of a four-part series of blog posts covering intellectual property and board games.

I have protected all of my intellectual property. Am I in the clear now?

You have just protected the intellectual property in your new board game, with patents, trademarks, and copyright. Are you all set? Possibly, but you still run the risk of infringing the intellectual property in someone else’s board game. Even getting a patent on your board game does not mean that your board game does not infringe a patent someone else might have on their board game. Patents do not give you the right to make the patented article. They only give you the right to stop someone else from making, using, or selling the patented article in the country covered by the patent. For instance, if there was a patent on a chair, the United States Patent Office could grant you a patent on a rocking chair, even though to make the rocking chair would infringe the older chair patent. That is because the United States Patent Office does not care if your rocking chair infringes a pre-existing patent. The United States Patent Office only cares that the invention you want to patent meets the three criteria of new, useful, and non-obvious.

What about Patent Infringement?

So even after you protect your own intellectual property, it is important to check to see if there is any other intellectual property you may be infringing. Unless your board game only has a generic name and includes only intellectual property that existed prior to 1923, you could have an infringing game on your hands. To avoid patent infringement, you can search on Google Patents and/or hire a patent lawyer to conduct a patent search for you. Although the patent lawyer’s search is probably better than a mere Google Patent search, even a patent lawyer search is no guarantee you are in the clear. Even a patent lawyer cannot search patents that were filed less than 18 months ago. This means that even if your patent lawyer finds no patents that you infringe, a patent could issue tomorrow covering one or more aspects of your board game. Even if your game uses mechanics that are decades old, there is a theoretical, albeit ridiculously small, chance that a patent application filed years ago could issue at any time and stop you from making, using, or selling your game. Since patents filed after June 8th, 1995 expire twenty years after the date they were filed, if your board game only uses obvious combinations of twenty-year-old mechanics, you are probably not going to end up infringing anyone’s patents.


Avoiding Trademark Infringement

Using someone else’s trademark on, or in connection with, a board game in a manner that is likely to cause confusion, deception, or mistake about who put out that board game generally constitutes trademark infringement. Being found liable for trademark infringement may subject you to a payment of damages for the infringement, an injunction stopping you from using the same or a similar trademark, and potentially triple damages, and the payment of the attorney’s fees the trademark owner had to spend to get you to stop. As with vetting existing patents, unless you are using a nonprotectable generic or descriptive name for your board game (in which case you cannot stop someone else from using the same name), it is very difficult to ensure there is no possibility that you will not get sued for trademark infringement based on the name of your game. While it is a relatively simple matter to check the United States Patent and Trademark Office (USPTO) database for federally registered trademarks on other board games, even if the exact name of your board game does not show up on that database, there are still a few ways you may end up getting sued for trademark infringement. One way is that even if a competitor does not have the exact same name registered, they may have a similar name registered. As long as there is a likelihood consumers might be confused that your board game came from that trademark owner, you may still be liable for trademark infringement. Another way that you may be found liable for trademark infringement even if the trademark does not show up on the USPTO database is if the trademark owner did not register the trademark. As long as the trademark owner is using the trademark on similar goods they may have common law rights in the trademark, which they can assert against you. For this reason, modern trademark searches investigate not only the USPTO database, but state trademark databases, business name databases, websites, and other uses. While a full trademark search is still no guarantee you will never get sued for trademark infringement, having such a search performed gives you a pretty good idea of how likely or unlikely it is you will run into trouble.

Copyright Infringement

Copyright is a little different than patents and trademarks. With patents and trademarks whoever protects them first owns them. Also, both patents and trademarks require ongoing maintenance to prevent losing those rights. With copyright, as long as you created the work yourself, and did not steal any part of it from anyone else, you are the owner. Even if someone else, unbeknownst to you, created the exact same work before you, as long as you can prove you had no access to that prior work, you would both be entitled to copyright in the work. Now obviously if the two works are complex and identical it will be very difficult to prove lack of access, but by the same token if the works are relatively different and the prior work is relatively unknown, it may be difficult for the prior copyright owner to demonstrate the access necessary to prove infringement. One thing to be aware of with copyright is that even if you pay someone, such as a graphic designer, to produce copyrightable work for you, you still do not own the copyright in that work. To own the copyright in that work, you will need to have the author sign a copyright assignment over to you. If you negotiate this up front, it may not even add to the cost of the project. If you overlook this very important issue however, it could cost you thousands of dollars when you have to go back and get the assignment from the author when your board game publisher demands to see that you actually own all of the intellectual property associated with your board game.

An Ounce of Prevention

As you can see, taking a few small steps early on in your game development process to avoid infringing anyone else’s intellectual property may stave off a catastrophic disaster down the road. Defending an intellectual property infringement lawsuit can cost $50,000 to $3,000,000 or more, even if you win. Given the size and scope of your new board game, it may not make sense to spend tens of thousands of dollars vetting every piece of existing intellectual property your patent lawyer can find. What does make sense is to find out: 1) exactly what your options are for avoiding infringement; 2) what the costs are for each option; 3) what are the advantages of each option; and 4) what are the limitations of each option. Most patent attorneys should be able to go over this information in an initial free consultation. Once you have this information, you can then make a business decision as to which options, if any, you want to pursue. Regardless of whether you pursue all of the available options or none of them, if you receive a cease and desist letter regarding your new board game, you need to contact your intellectual property lawyer immediately. Failure to do so may escalate a relatively simple and easily addressed matter into one a case of willful infringement, potentially subjecting you to tens of thousands to hundreds of thousands of dollars or more in damages.

Next up: Part IV
Okay I have my patent and my intellectual property clearance, am I good to go?

Brett Trout

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Posted in Board Games, Copyright Law, Patent Law, Trademark Law.

By Brett Trout
May 3, 2018

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Someone Stole My Board Game! (Part II)

Part II of a four-part series of blog posts covering intellectual property and board games.

So I invented a new game. Now what?

In the past, game inventors had a difficult time getting their games to market. They often had to invest in expensive prototyping and playtesting only to come up with a proposal that the main board publishers felt were not mainstream enough to justify a production contract. Today, crowdfunding websites like Kickstarter have given any board game developer with a great idea and an ardent following the means to bring their game to market. But there is always the worry “What if I tell someone about my great new game and a big publisher steals my idea?” Fortunately, there are several steps you can take to protect your board game. These include non-disclosure agreements, trademark protection, copyright protection and, in some instances, even patents.

Whether you choose all or none of these protection strategies will depend on the type of board game you created, your business strategy, how various types of intellectual property protection fit into this business strategy, and the amount of money you have to devote to intellectual propriety protection. Whether you have a lot or a little money to spend, it is a good idea to contact a patent attorney early on for a free consultation. This early meeting will give you an idea of the various protection strategies available and the time and money involved with each. Meeting with an attorney early allows you to make longer term plans for raising money and protecting your board game down the road.

So what are the benefits of protecting the intellectual property in your board game? First, while non-disclosure agreements, patents, trademarks, and copyrights may not protect all of the mechanics in your new board game, or even the general concept of your new game, they will allow you to take legal action against anyone infringing the intellectual property you have protected, including anyone marketing a direct knock-off of your new game. Second, protecting your intellectual property will reduce the likelihood a competitor or a large board game publisher will steal your board game out from under you in the first place. Third, if you eventually decide to sell or license the rights to your board game, it will be easier to get a buyer interested, and likely increase the purchase or license fee, if the buyer knows they are buying a well-protected board game.

Next up: Part III
I have protected all of my intellectual property. Am I in the clear now?

Brett Trout

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Posted in Board Games, Copyright Law, Patent Law, Trademark Law.

By Brett Trout
April 30, 2018

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Someone Stole My Board Game! (Part I)

Part I of a four-part series of blog posts covering intellectual property and board games.

Board games are hot.

The new board games flooding the market are not your grandfather’s board games. These new games cover everything form zombies to giant dieselpunk war machines to exploding kittens. Others have hundreds of pieces, take hours to play, and/or cost hundreds of dollars apiece. The hobby is attracting new fans every day, with even Wall Street executives getting in on the action. The developers of this latest incarnation of board games are raising millions of dollars in investments, often before even a single copy of the game hits the shelves.

As these new board games generate more consumer demand, from a rapidly growing board game fanbase, more inventors enter the market and invent even more new board games, which leads to even more demand. This snowball effect of more demand leading to more games has grown the board game industry into a nearly ten billion dollar annual market. Unfortunately, despite almost all of these new board games containing protectable intellectual property, very few board game developers fully understand what intellectual property is, what intellectual property they have, and how to go about protecting it. Even worse is that many of these board game developers do not understand that their new board game may actually infringe someone else’s board game, which may lead them into an expensive and time-consuming legal battle.

Next up: Part II So I invented a new board game. Now what?

Brett Trout

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By Brett Trout
April 27, 2018

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BlawgIT Named One of the Top Patent Blogs for 2018

James Yang, writing for Gene Quinn’s IPWatchdog has scoured the globe for all of the top patent blogs for 2018. Yang based his rankings on weighted visitor traffic numbers from three different source: www.similarweb.com, www.alexa.com, and www.spyfu.com.

As the author of BlawgIT, it is an honor to be a member of this august eloquence of some of the best patent lawyers on the planet. Thank you to all of our readers. Without you, none of this would have been possible.

Brett Trout

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February 21, 2018

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Does My Product Infringe This Patent?

The Deceptively Simple Rule

Determining whether or not a product infringes a particular patent is simple in theory, but quite complicated in practice. To avoid infringing a patent all you have to do is avoid doing at least ONE thing (and its equivalent) in every claim of the patent. A patent claim is a one sentence description of the invention covered by the patent. A claim is typically a list of items, or elements of the core invention, and a description as to how they are related to one another. So to avoid infringement of a claim, you just have to look at all of the items in the claim and eliminate at least one of these items from your product. To avoid infringing the entire patent, you have to avoid infringement of EVERY claim in the patent. If the patent has twenty claims, and you only infringe one of those claims, the amount of money you will have to pay for the infringement is often the same as it would be had you infringed all twenty claims.

To determine infringement of a claim, you first have to examine the claim. For instance, assume a patent issued with claim 1 reading as follows:

A sitting device comprising:
a seat;
a leg coupled to the seat; and
a back coupled to the seat.

Applying the Rule

To avoid infringement of this patent claim, your product would have to NOT have one of those items. So if your product was a stool, and had no back at all, your stool would not infringe this patent claim. If your product had a seat and a back and four legs, your product would still infringe this patent claim, because your product does have at least “a” leg. Even if your product eliminates one of the elements of a patent claim, if the element your product has instead of the eliminated item performs substantially the same function, in substantially the same way, to yield substantially the same result, your product may still infringe the patent claim under the “Doctrine of Equivalents.” As you can see, the determination of infringement can get complicated very quickly. Once you determine that you do not infringe claim 1, you would then repeat the process for every other claim in the patent.

Never Make a Determination of Infringement Yourself

Unfortunately, determining whether a product infringes a patent claim is harder than it first appears. There is a reason patent infringement lawsuits take years to litigate and cost millions of dollars in attorney fees. The legal determination of what or what does not infringe a patent claim is an extremely complex process, involving the analysis of the claims, the specification, the drawings, the proceedings before the Patent and Trademark Office, and mountains of other patents and documents. It is imperative that no entrepreneur move forward on the assumption that their product does or does not infringe a patent without obtaining a formal written legal opinion from a patent lawyer well-versed in drafting patent infringement opinions.

Brett Trout

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By Brett Trout
February 9, 2018

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Top Ten Black Inventors

In honor of Black History Month, I have compiled a list of my top ten black inventors of all time. While these particular individuals may not be as famous as other black inventors, these individuals are all unparalleled in their unique contributions to these United States. Along with some background of each inventor, I have included a representative patent for review.

Every year it becomes increasingly difficult to select only ten inventors from the thousands of choices. This year, as opposed to simply listing the best patents, or most lucrative inventions, I have chosen to select those black inventors who have broken the mold, setting new standards for innovation. I have focused on the practical as well as the profound. What follows are ground-breaking accomplishments by great American pioneers.

10. Thomas L. Jennings – Dry Cleaning Described by Frederick Douglass as “a bold man of color” who led an “active, earnest and blameless life,” Thomas L. Jennings was the first African American to receive a patent. On March 3, 1821, forty-four years before the end of slavery, at a time when the inventions of slaves were owned by their masters, the United States granted Jennings Patent No. X3306, on a dry-cleaning process he called “dry scouring.” Thomas Jennings used the proceeds from his invention to purchase his family out of slavery. Jennings also used the money to donate to abolitionist causes for the remainder of his life.
Representative Patent: Cloth, Scouring United States Letters Patent Number X3,306 [When the United States Patent Office first began issuing patents on July 31, 1790, it did not assign numbers to the issued patents. The Patent Office only referred to issued patents by the name of the inventor and the patent grant date. It was not until the passage of the Patent Act of 1836 that the Patent Office first issued a numbered patent. The Patent Office began numbering patents issued in 1836, starting with Patent No. 1. Only in the 1950s did the Patent Office go back and start numbering pre-1836 patents with the prefix “X.” So the first U.S. patent ever granted is Patent No. X1, issued on July 31, 1790.

Unfortunately, on December 17, 1836, a fire destroyed the Patent Office and most of its records. The fire destroyed approximately ten thousand patents, dating back to 1790. Although Congress appropriated funds to restore the patents, only about twenty-six hundred have been recovered to date. For the remaining seventy-five hundred patents, all we have left is the inventor’s name, the registration date, and the patent title.]

9. Michael Jackson – Gravity defying shoes michaeljacksonIn 1993, singer and entertainer Michael Jackson received a patent on a novel shoe, The shoe includes a cut-out in the heel, which an entertainer slides on and off a nail head in the stage. The nail head grabs the heel and allows the entertainer to perform apparently gravity defying leans.
Representative Patent: Method and means for creating anti-gravity illusion United States Letters Patent Number 5,255,452

8. Thomas Mensah – Patriot missile guidance system T_Mensah_sm_80 Born in Ghana, Dr. Mensah is the Chairman of Supercond Technology Inc. of Norcross, Georgia. Holder of over a dozen United States and International patents, Dr. Mensah’s inventions span the fields of fiber optics to guided vehicle systems. His work with SMART weapons, like the Patriot missile, were critical to the success in the Gulf War.
Representative Patent: Guided Vehicle System United States Letters Patent Number 5,035,169

7. Lewis Latimer – Electric light filament lewislatimer Everyone knows Thomas Edison invented the light bulb, but few know that it took African American inventor Lewis Latimer to come up with the carbon filament that made it practical. Edison’s original draftsman, Latimer drafted the plans for Alexander Graham Bell’s telephone. Working many late nights with Bell, Latimer worked tirelessly to file a patent on Bell’s telephone mere hours before the filing of a similar patent by a rival inventor.
Representative Patent: Electric Lamp United States Letters Patent Number 247,097

6. Elijah McCoy – Automatic railcar lubrication EJMcCoy Elijah McCoy patented dozens of ways to lubricate machinery. One advantage McCoy’s devices had over the competition, was that his inventions made it possible to lubricate machinery while it was running. This eliminated downtime maintenance and increased factory profits. One of his most famous inventions was an oil dripping cup. The oil dripping cup was so wildly successful that competitors worked diligently to copy it. Nothing however, worked as well as the original. That is why, even today, we ask for “The real McCoy.”
Representative Patent: Lubricator United States Letters Patent Number 472,066

5. Dr. Patricia Bath – Surgical cataract laser bathpatricia_bigBorn in Harlem, Dr. Bath has become an internationally acclaimed ophthalmologist and surgeon. Not content to rest on her laurels, Dr. Bath has dedicated her life to the treatment and prevention of blindness in African-Americans. A pioneer in laser cataract surgery, her laser-powered Laserphaco Probe allows physicians to vaporize sight stealing cataracts in minutes.
Representative Patent: Method of removing cataracts United States Letters Patent Number 6,083,192

4. Lonnie G. Johnson – Super Soaker squirt gun
President of Johnson Research Development Co. and formerly with NASA’s Jet Propulsion Lab, Lonnie Johnson is a nuclear engineer with over 100 patents to his name. This Tuskegee alumnus has generated over one hundred million dollars in sales with his world-renown invention, the SuperSoaker squirt gun. He is currently working on a solar energy cell which promises to cut solar energy costs in half.
Representative Patent: Pinch trigger pump water gun United States Letters Patent Number 5,074,437

3. Percy Julian – Cortisone synthesis percyjulian Granted over 100 patents Percy Julian is best known for his innovative synthesis of cortisone from soy beans. His inventions significantly reduced the cost of manufacturing cortisone used to treat rheumatoid arthritis and inflammation. Julian is a 1990 inductee into the National Inventors Hall of Fame.
Representative Patent: Preparation of cortisone United States Letters Patent Number 2,752,339

2. George Crum – Potato chips g_crum Part Native American and part African American, George Crum never received a patent. He is credited however, with inventing one of this country’s most ubiquitous snack foods, the potato chip. Known for his irascible nature, George Crum earned his living as a cook. One day, the story goes, a businessman entered Moon Lake Lodge, in Saratoga Springs, New York. Not happy with the thickness of the potato slices Crum was serving on that particular day, the businessman sent them back. While customers at the Moon Lake Lodge sometimes sent food back once, they rarely sent them back twice, especially if George Crum was working. Crum took it upon himself to make the meal so unpalatable, patrons would dare not try their luck a second time. In this particular case, Crum sliced the potatoes as thin as possible, fried them in oil until they were hard. Crum then doused the potatoes in enough salt to make them what he believed would be inedible. To his chagrin, the customer loved the new “potato crunches.” Crum began serving the snack at his own restaurant. Since Crum had no patent, Crum did not share in the profits from what others have turned into a multi-billion dollar industry.

1. George Washington Carver – New uses for peanuts Georgewashingtoncarver
Best known as the inventor who could do anything with a peanut, George Washington Carver patented only a small handful of his hundreds of his novel products and methods for improving agriculture. Born a slave, Carver consistently shunned fortune. Interested only in the betterment of mankind, he took no money at all for the majority of his inventions. Granted a scholarship in Kansas, the college refused Carver withdrew his admission after discovering Carver was African American. Carver enrolled at Simpson College in Indianola, Iowa, before eventually landing at what is now Iowa State University the following year. Carver researched at the Iowa Agriculture and Home Economics Experiment Station (IAHEES), and became the Iowa State University’s first black faculty member. Carver is a 1988 inductee into the Iowa Inventor’s Hall of Fame and a 1997 inductee into the National Inventors Hall of Fame.
Representative Patent: Process for Producing Paints and Stains United States Letters Patent Number 1,632,365

As a patent lawyer, I probably appreciate the foregoing inventor more than most, but if you have your own favorite black inventor, please leave a comment below; I would love to hear from you.

Brett Trout

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Posted in Patent Law.

By Brett Trout
January 16, 2018

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No Friend to Inventors, California Congressman Darrell Issa Retires

Congressman Darrell Issa (R-CA) has just announced that he will not seek reelection in 2018. This comes as a pleasant surprise to inventors and technology-driven startups. Since being named Chair of the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet in 2014, Congressman Issa has enacted anti-small-inventor patent reforms.

In the past, Rep. Issa has even used the terms “plaintiff” and “patent troll” interchangeably. Rep. Issa’s reforms have hindered the ability of small inventors to pursue infringers and, according to Paul Morinville, Founder of US Inventor, “discouraged investment in innovative startups.” According to Adrian Pelkus, Director of US Inventor and the President of the San Diego Inventor’s Forum Issa’s departure is a positive for innovation.

So who will replace Rep. Issa on the Subcommittee on Courts, Intellectual Property, and the Internet? According to Gene Quinn and Steve Brachmann of IP Watchdog, the likely candidates are Congressman Doug Collins (R-GA) if the Republicans maintain a majority in the House of Representatives, or Congressman Jerrold Nadler (D-NY), Congresswoman Zoe Lofgren (D-CA), or possibly Congressman Hank Johnson (D-GA) if the Democrats wrest control of the House back in 2018.

While the future leadership of the Subcommittee on Courts, Intellectual Property, and the Internet remains unclear at the moment, what is clear is that almost any of the aforementioned candidates, from either party, will be a welcome change to both inventors and technology-driven startups.

Brett Trout

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By Brett Trout
January 10, 2018

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Brett Trout selected for The Best Lawyers® 2018 in both Patent Law and Information Technology Law

Brett J. Trout has been selected by his peers for inclusion in the 24th Edition of The Best Lawyers in America® in the practice areas of Information Technology Law and Patent Law. The Best Lawyers in America® publication is the oldest peer-reviewed publication in the legal profession. Since 1983, Best Lawyers® continues to be regarded, by both professionals and the public, as the definitive guide to legal excellence in the United States.

The Best Lawyers in America®
The 2018 Best Lawyers in America® publication covers the largest and most targeted audience of any legal profession peer-review listing. Excerpts from the Best Lawyers® publication appear in The Washington Post, The Los Angeles Times, New York Magazine, and more than dozens of other regional publications, reaching more than 18 million readers. Best Lawyers selection process is based upon exhaustive and rigorous peer-review surveys. Over four million confidential evaluations by leading legal professionals are considered in the process. The American Lawyer and Corporate Counsel magazine describes The Best Lawyers in America® as “the most respected referral list of attorneys in practice.” Getting legal advice from attorneys on https://www.criminalattorneylongislandny.com/areas-served/long-island/legal-services/ is a good idea. 

Disclaimer
“The fact that a lawyer has been voted by his or her peers into Best Lawyers in a legal practice area does not signify that the lawyer has been certified by a state board of legal specialization in that practice area or specialty. A listing in Best Lawyers does not guarantee a desired legal result.” – Best Lawyers

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By Brett Trout
January 4, 2018

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Federal Circuit Allows Registration of Immoral and Scandalous Trademarks

NSFW Disclaimer: This post contains strong language that may not be suitable for work.

The Law
Up until a few weeks ago, the law was that you could not register a trademark with the Patent and Trademark Office that included immoral or scandalous material. For years, 15 U.S. Code § 1052(a) (otherwise known as §2(a) of the Latham Act) prevented registration of trademarks such as BUBBY TRAP for bras, 1-800-JACK-OFF for a phone sex operation, PUSSY for non-alcoholic beverages, and COCK SUCKER for rooster-shaped chocolate lollipops. That all changed on December 15, 2017.

The Case
On December 15, 2017, the United States Court of Appeals for the Federal Circuit ruled that the portion of §2(a) of the Latham Act forbidding the registration of trademarks containing immoral or scandalous material was unconstitutional. The case arose when Erik Brunetti tried to register his clothing trademark “FUCT” with the United States Patent and Trademark Office. The examining attorney refused the registration, arguing that “FUCT” was the past tense of the verb “fuck,” and therefore was scandalous and unregistrable under §2(a) of the Latham Act.

The Trademark Trial and Appeal Board Finds the Trademark Scandalous
Mr. Brunetti appealed the refusal of the examining attorney to the Trademark Trial and Appeal Board. In rejecting Mr. Brunetti’s appeal, the Board relied on a definition posted on Urban Dictionary by a Mr. Charlie White. As Urban Dictionary aficionados will recognize, Mr. White is also the author of such urbane definitions as “Knob Goblins” and the indispensable phallic metric “The Whole Ten Yards.”

Relying on Mr. White’s nonpareil practical lexicography skills, the Board held that FUCT was recognized as a slang and literal equivalent of the word “fucked,” with the same vulgar meaning. The Board also relied on the examining attorney’s Google Image search results, which the examining attorney stated showed Mr. Brunetti used the FUCT trademark in the context of “strong and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny.” The Board refused to believe Mr. Brunetti’s explanation that he chose the term FUCT as an invented or coined word and ruled that Mr. Brunetti’s targeted market segment would perceive the trademark as the phonetic equivalent of the word “fucked.” The Board found the mark to be vulgar and, accordingly, upheld the examining attorney’s refusal to register the trademark under §2(a) of the Latham Act.

The Federal Circuit Also Finds the Trademark Scandalous
On appeal to the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”), Mr. Brunetti again argued that the word FUCT was not scandalous. The Federal Circuit rejected Mr. Brunetti’s argument, also relying on the Urban Dictionary definition to uphold the Board’s decision that FUCT was the phoenetic twin of “fucked,” and therefore vulgar, scandalous and unregistrable under §2(a) of the Latham Act. Although Mr. Brunetti took specific issue with Mr. White’s lack of “lexicographic expertise,” the Federal Circuit noted “[t]he pedigree of the author of a definition may affect the weight that evidence is given, but does not render the definition irrelevant.” In response to Mr. Brunetti’s objection that the Board failed to take into account the other, non-offensive Urban Dictionary definitions of FUCT (such as Failed Under Continuous Testing), the Federal Circuit held the Board reasonably focused on the highest rated definition. (It should be noted that as of this writing, the difference between the highest rated definition, which is offensive, and the second highest rated definition, which is not offensive, is only 26 online votes).

The Constitutional Issue
In addition to his failed argument that the FUCT trademark was not scandalous, Mr. Brunetti also made the argument to the Federal Circuit that §2(a) of the Latham Act was unconstitutional as it applied to speech protected under the First Amendment. Mr. Brunetti brought this argument, despite such a constitutional argument being specifically foreclosed by binding court precedent. In overruling this binding precedent, the Federal Circuit relied on the June 19, 2017 decision in Matal v. Tam, in which the United States Supreme Court upheld the Federal Circuit’s determination that the “disparagement clause” of §2(a) of the Latham Act was unconstitutional. In Tam, the Supreme Court held that trademarks are private, not government, speech. The Supreme Court explained the disparagement clause of §2(a) “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The Ruling
The Federal Circuit examined the government’s position in support of the immoral and scandalous provisions of §2(a) of the Latham Act, but determined the government had not presented the court with a substantial government interest justifying the § 2(a) bar on immoral or scandalous marks. As in the earlier Tam case, “All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive.” which is not enough to survive the requisite intermediate constitutional scrutiny. The Federal Circuit attempted to “blue pencil” the immoral and scandalous provisions of §2(a) of the Latham Act into a construction that would allow the language to pass constitutional muster. However, the court ultimately determined immoral and scandalous could not reasonably be read to be limited to material of a sexual nature, and that the Federal Circuit could not stand in the shoes of the legislature and rewrite a statute. In finding in favor of Mr. Brunetti, and reversing the decision of the Board, the Federal Circuit held that the bar in §2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.

Conclusion
The Federal Circuit’s holding in In re Brunetti is interesting for several reasons. First, the ruling is an indication that courts are recognizing that while society has a right to be offended, it has no right to not be offended. We can expect this trend to continue, with subjective determinations of morality being increasingly excised from our laws. Second, the ruling is an indication that courts are more and more willing to accept as evidence, sources such as Urban Dictionary and Google images, that only two decades ago would never have passed evidentiary muster. Finally, the ruling is a notice to all trademark applicants that a thorough review of all online resources is in order prior to filing and appeal of an examining attorney’s refusal to register.

Brett Trout

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By Brett Trout
January 2, 2018

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