Trademarks have been around, in one form or another, for more than 5 thousand years. Stone seals dating to 3,500 B.C. have been found in the Middle East; the ancient Egyptians, Greeks, Romans, and Chinese all used various forms of stamps or markings to indicate who made certain things, such as pottery or bricks. In the Middle Ages, bell makers and other artisans used “house marks” or “merchant marks” – and paper makers used “watermarks”. Even bread makers in England used trademarks of a sort – designs in the crust made with pinpricks – and fraudulent bakers that copied those designs on their own bread were dealt with under the Bakers Marking Law of 1266.
As one might expect, trademarks have evolved. Following in the footsteps of bell makers and bakers, watch designers, and car manufacturers, John McEnroe trademarked “You Can’t Be Serious”, and Paris Hilton trademarked “That’s Hot”. In a natural progress of sorts, the clothes designer Erik Brunetti sought to sell his t-shirts and jeans using the trademark FUCT. However, since 1870 the trademark office’s policy was to refuse to register a federal trademark that was “shocking to the sense of truth, decency, or propriety” or “disgraceful, offensive, disreputable.” Brunetti coyly told the trademark office that the trademark was actually pronounced as four letters – F-U-C-T, but the trademark office didn’t buy it. And so, FUCT’s application for a trademark, as far as the trademark office was concerned, was, well . . . .
Until Brunetti pushed back, the trademark office’s viewpoint discrimination had survived for 150 years. Brunetti challenged the trademark office’s policy by asking a simple question: whose sense of decency, propriety or grace? Was it to be the trademark office’s own, arbitrary, sense of propriety or decency? Brunetti’s attorney argued that the trademark office’s policy infringed upon Brunetti’s First Amendment rights of freedom of speech. The Supreme Court agreed, with no less than Judge Ruth Bader Ginsberg noting that FUCT (when it is not pronounced as 4 letters) “is mainstream”. There is no question that she is right.
Lawyers help businesses grow by pushing the law to evolve. Brunetti is just one example. There are others, like the beanie makers at https://shitthatiknit.com/, who haven’t applied for a trademark but might want to. Clients that want to register marks associated with the sale of marijuana even where that sale is legal in a growing list of States might want to stay tuned. Perhaps one day soon trademark applications for marks like “You Can’t Spell Healthcare Without THC“ and “Bong Hits for Jesus“ will be accepted for registration by the US Patent and Trademark Office. Who knows what tomorrow’s mainstream will be.
Being first to trademark is critical, and must be an integral part of your business plan. The scope of trademarks ranges from the three-dimensional McDonald’s arches, NBC’s triad of musical notes, and the pink in Owens Corning’s insulation. It is estimated that 80 percent of the value of S&P companies is in their intellectual property holdings – copyrights, trademarks, patents – and is essential to their bottom lines, their equity value and their day-to-day operations. Intellectual property law is among the most complex and misunderstood fields of law – and without experienced counsel, a business may unexpectedly lose some or all of its investment in developing its brand.
For more than 25 years I have represented and counseled businesses, writers, filmmakers, musicians, inventors, producers, engineers, designers and others in a broad variety of projects and other matters including copyright, trademark, licensing and contracting. It is incredibly rewarding to work with these enormously creative and innovative clients.
Jonathan Wall today leads the Intellectual Property practice at Wall Legal Group, after leading the Intellectual Property practice at Hyatt & Weber, PA for more than 20 years. Initial consultations are available without charge.
