The rock band Guns N’ Roses has been around since 1984 and is a known name in the music industry to just about everyone in the United States. While the band members have spent most of their lives creating and performing music, they are now going to be occupied with litigating a trademark infringement lawsuit in federal court.
“Guns Up” is a slogan and hand signal used by Texas Tech University, originally as a way to counter the “Hook ’em Horns” symbol shown by the Texas Longhorns. It has grown in prominence to the point that the signal is often used as a victory sign at Texas Tech athletic events.
Myth: Filing one trademark application with the U.S. Patent and Trademark Office for a mark and receiving a registration will protect that mark for use with all goods and services.
In some trademark cases, the plaintiff sues the defendant for trademark infringement based on what is considered to be a reverse-confusion theory. This means that the plaintiff believes that consumers will mistakenly believe that the defendant is the source, affiliate or sponsor of the plaintiff’s product or service.
The U.S. Supreme Court has decided that it will hear a case that involves the refusal of a trademark application for the word “FUCT” in conjunction with its use on apparel. The U.S. Patent and Trademark Office previously refused registration based on the mark being deemed to be scandalous.
The highest court in the U.S. will have the task of determining whether the U.S. Patent and Trademark Office should be able to refuse registration for marks that contain immoral, deceptive or scandalous matter in the face of the freedom of speech guarantees offered by the First Amendment of the U.S. Constitution. Section 2(a) of the Lanham Act currently allows such a refusal.
Interestingly, Section 2(a) of the Lanham Act has been successfully challenged in the past. In 2017, the U.S. Supreme Court unanimously determined that refusing registration of a disparaging trademark was a violation of the First Amendment (i.e.: Washington Redkins). Prior to that, disparaging marks were also refused under the Lanham Act.
In fact, it was the U.S. Supreme Court’s decision in the disparaging trademark case that was used by the U.S. Court of Appeals for the Federal Circuit to determine that a scandalous mark like “FUCT” should not be refused. That is what is up for appeal and which the highest court will eventually hear.
If the government loses in its appeal, then it is likely that many new profane and sexually explicit trademark applications will be filed with the U.S. Patent and Trademark Office in the future. Applicants will still be required to prove use in interstate commerce in order to actually receive registrations in connection with such applications.
On October 25, 2015, Kirk Cousins garnered national attention for yelling at reporters “You like that! You like that!” after he led the Washington Redskins to a twenty-four point come-from-behind victory against the Tampa Bay Buccaneers. That phrase soon became a rallying cry for the now surprisingly playoff-bound Redskins, who were led by the impressive play of their quarterback. What some football observers may not have noticed was the clever off-field actions of Cousins, who filed for a trademark with his brother Kyle on the phrase “You like that” a mere two days after the original outburst this past October.
This is a great example of an athlete being proactive in protecting his or her intellectual property. In his trademark filing, Cousins lists the potential uses of the phrase on “Bumper stickers; Decals and stickers for use as home decor; Magnetic bumper stickers; Mounted posters; Posters; Posters made of paper; Hooded sweatshirts; Tee shirts; [and] Electronic billboard advertising.” With this diligent action, Cousins has protected his ability to monetize the intellectual property that he created.
Kirk Cousins is not the only recent Washington Redskins’ quarterback to take an interest in protecting his intellectual property. Former starter Robert Griffin III created his own company, Thr3escompany, LLC, which obtained numerous trademarks on such phrases as “RGIII,” “RG3,” “Robert Griffin III,” and “Know Your Why.”
Both quarterbacks have taken an intelligent approach to protecting their intellectual property, which other athletes would be wise to follow. I am always available for a consultation regarding such matters.