WEBVTT - From Slate Money: 37.8% Scammier 0:00:15.316 --> 0:00:20.596 Pushkin. Hey, it's Jacob Goldstein and this is the feed 0:00:20.676 --> 0:00:24.076 where you normally hear what's your problem, But today we're 0:00:24.076 --> 0:00:26.756 playing a preview from another podcast. The show is called 0:00:26.956 --> 0:00:30.836 Slate Money. It's made by Slate and it's about wait 0:00:30.876 --> 0:00:35.676 for it money. Every week, Felix Salmon and Emily Peck 0:00:35.796 --> 0:00:40.436 of Axios and Slate Paydirt columnist Elizabeth Spires chat about 0:00:40.436 --> 0:00:43.236 things like Bitcoin and the possible sale of Twitter, and 0:00:43.316 --> 0:00:46.436 the standoff between Disney and the State of Florida. Also, 0:00:46.756 --> 0:00:50.756 they interview smart, interesting people. In the episode You're about 0:00:50.756 --> 0:00:54.876 to Hear, Felix and Emily sit down with Alexandra Roberts, 0:00:55.116 --> 0:00:58.636 a law professor who was an expert in trademarks. Truly 0:00:58.716 --> 0:01:01.996 an underrated subject trademarks. On the show, they talk about 0:01:02.036 --> 0:01:04.876 everything from counterfeits to parodies to the story of what 0:01:04.956 --> 0:01:09.476 happened when MasterCard tried to change its logo. Okay, here 0:01:09.556 --> 0:01:25.196 is the preview of Slate Money. Hello, Welcome to the 0:01:25.396 --> 0:01:30.236 ip Lisnia episode of Slate Money, your guy to the 0:01:30.276 --> 0:01:33.236 business and finance news of the week. I'm Felix Amon 0:01:33.316 --> 0:01:37.436 of Axios. I'm here with Emily Peck, also of Axios. Hello, 0:01:37.916 --> 0:01:40.756 and Emily, how excited you are you about this week's show. 0:01:41.276 --> 0:01:44.076 I am so excited. It's all coming back to me. 0:01:44.196 --> 0:01:48.796 Everything I thought I forgot about IP I remembered. We 0:01:48.876 --> 0:01:53.556 have the one and only Alexandrew Roberts aka Lex Lanham 0:01:53.596 --> 0:01:57.396 on Twitter. Alex, introduce yourself. Who are you? I am 0:01:57.476 --> 0:02:01.196 an Intellectual Property and trademark law professor at the University 0:02:01.196 --> 0:02:04.676 of New Hampshire School of Law. You are everyone's favorite 0:02:04.996 --> 0:02:07.916 IP expert. You are going to talk to us about 0:02:08.236 --> 0:02:12.076 so many amazing bits and pieces of trademarks. We're going 0:02:12.116 --> 0:02:15.196 to talk about social media. We're going to talk about 0:02:15.356 --> 0:02:17.476 rights of publicity. We're going to talk about brands. We're 0:02:17.476 --> 0:02:20.396 going to talk about counterfeits. We're going to talk about parodies. 0:02:20.396 --> 0:02:23.396 We're going to talk about mischief. We're going to have 0:02:23.436 --> 0:02:26.556 a Slate Plus segment about Felix the Cat and whether 0:02:26.596 --> 0:02:29.556 I can use it as my Twitter avator. It's so 0:02:29.636 --> 0:02:31.956 much fun. Honestly, this is the best show about IP 0:02:32.116 --> 0:02:34.676 law you will listen to all months. I can guarantee it. 0:02:34.676 --> 0:02:40.196 It's all coming up on Slate Money. The one thing 0:02:40.236 --> 0:02:42.556 that Emily loves more than anything else on this show 0:02:42.636 --> 0:02:44.956 is when I remind everyone that she used to work 0:02:44.956 --> 0:02:48.596 at IP Law and Business magazine. He used to run it. Indeed, 0:02:48.676 --> 0:02:51.716 I was the executive editor. So this is your show, Emily. 0:02:52.156 --> 0:02:54.276 I'm turning the reins over to you for this one. 0:02:54.636 --> 0:02:58.636 So man at you. Okay? Well, yes, I was on 0:02:58.796 --> 0:03:02.236 the intellectual property beat from two thousand and one to 0:03:02.756 --> 0:03:06.876 two thousand and six and then I really dropped off. 0:03:06.996 --> 0:03:09.356 I was doing the reading preparing for this episod it 0:03:09.396 --> 0:03:12.676 and I remember a trademark conference I went to in Toronto, 0:03:12.716 --> 0:03:16.036 and then I was like, what even was a trademark conference? 0:03:16.036 --> 0:03:20.556 Like I couldn't conceive of how that was anything, Like 0:03:21.956 --> 0:03:24.436 that's really my favorite. Actually, I can't think of anything 0:03:24.436 --> 0:03:27.756 more fun than the trade. Oh yeah, I mean wow, 0:03:27.796 --> 0:03:31.956 people go crazy those IP lawyers. Alex, you sent us 0:03:31.956 --> 0:03:36.556 a thing on You gave us some like reading because 0:03:36.556 --> 0:03:39.796 you're a good university professor. One of the pieces of 0:03:39.836 --> 0:03:44.236 reading you sent us included the sentence the ninth Circuit 0:03:44.356 --> 0:03:48.076 sited hot digity dog in support if It's decision. And 0:03:48.196 --> 0:03:50.996 now I just love IP law because it's like one 0:03:51.036 --> 0:03:53.636 of my favorite sentences of all time. The main reason 0:03:53.716 --> 0:03:55.996 I love IP law is because I follow you on Twitter. 0:03:56.036 --> 0:04:01.196 You must follow on Twitter. You're at Lex Lanham, which 0:04:01.596 --> 0:04:04.716 is what reading the LANDOM Act is that what it means? 0:04:05.156 --> 0:04:07.876 Tell us what the Landom Act is. Sure, the landom 0:04:07.956 --> 0:04:12.916 Act is the Trademark Act, and it covers trademark registration 0:04:12.996 --> 0:04:16.876 and trademark infringement and dilution and even false advertising passing 0:04:16.876 --> 0:04:19.476 off things like that. So everything that I study is 0:04:19.516 --> 0:04:24.236 in this federal statute. Is it huge? No, it's not 0:04:24.316 --> 0:04:28.316 huge at all. But it's this one relatively not huge 0:04:28.316 --> 0:04:32.596 act which has spawned an entire industry basically exactly. So 0:04:32.836 --> 0:04:36.236 you get many hundreds or thousands of cases applying and 0:04:36.316 --> 0:04:39.636 interpreting it, and people get a trademark confused with copyright. 0:04:39.676 --> 0:04:42.796 But trademark and copyright are not the same. That is 0:04:42.876 --> 0:04:45.036 correct lane to us, and I think this is a 0:04:45.116 --> 0:04:51.076 distinction people often mess up. Sure, Okay, So trademarks are 0:04:51.156 --> 0:04:54.676 brand names. They protect the use of a name or 0:04:54.716 --> 0:04:57.116 a logo or trade dress or something like that in 0:04:57.156 --> 0:05:01.196 connection with the sale of goods or services in commerce. Right, 0:05:01.676 --> 0:05:07.276 Copyright is something that protects expressive works, so original works 0:05:07.276 --> 0:05:09.836 of authorship fixed in tangible medium. So if you're thinking 0:05:09.876 --> 0:05:13.356 about you know, a painting of film, a television show 0:05:13.436 --> 0:05:16.756 the actual content of it, then you're thinking about copyright. 0:05:17.396 --> 0:05:19.836 And if you're thinking about the brand name or the 0:05:19.876 --> 0:05:22.876 logo or something like that, then you're thinking about trademark law. 0:05:22.956 --> 0:05:25.676 They are not synonymous. Then they are not at all interchangeable, 0:05:25.876 --> 0:05:29.396 although often they intersect. The right of publicity is like 0:05:29.516 --> 0:05:31.836 another thing entirely, which is neither of those two things. 0:05:31.996 --> 0:05:36.316 That's right. Right of publicity is a way to protect 0:05:36.716 --> 0:05:41.996 the use of somebody's name, image, or likeness, the commercial 0:05:42.076 --> 0:05:44.836 use right. So if you're a celebrity, or even if 0:05:44.876 --> 0:05:48.396 you're a regular person and your face gets used in 0:05:48.436 --> 0:05:51.476 an advertisement or your name gets used or something like that, 0:05:52.316 --> 0:05:54.156 then you might have a right a publicity cause of 0:05:54.156 --> 0:05:57.876 action that's actually covered by state law. So almost every 0:05:57.916 --> 0:06:01.756 state has either a statute, not almost every but more 0:06:01.796 --> 0:06:05.276 than half of states have either a statute or common 0:06:05.356 --> 0:06:08.356 law protection or both for wright a publicity. But if 0:06:08.396 --> 0:06:13.716 someone someone put my photograph in a ad on Twitter, say, 0:06:13.756 --> 0:06:17.036 and started using it to sell cat food, then I 0:06:17.036 --> 0:06:21.396 could probably sue that person in many states, absolutely, And 0:06:21.636 --> 0:06:23.316 that's going to be a place also where a couple 0:06:23.356 --> 0:06:26.356 of these things intersect and overlap, right, because you might 0:06:26.396 --> 0:06:28.756 have a right publicity claim based on the use of 0:06:28.796 --> 0:06:33.116 your image in connection with commercial advertising, and you might 0:06:33.116 --> 0:06:35.036 also have a copyright claim or the owner of the 0:06:35.076 --> 0:06:37.676 photo that they're using might have a copyright claim. And 0:06:37.756 --> 0:06:40.556 what's interesting to me about the difference between trademark and 0:06:40.756 --> 0:06:44.396 copyright or one of the interesting things is that trademarks 0:06:44.436 --> 0:06:47.516 are forever if you keep using them and you keep 0:06:47.516 --> 0:06:49.156 them alive. You have to kind of like tend to 0:06:49.236 --> 0:06:51.596 it like a little fire, but then it could be 0:06:51.796 --> 0:06:54.836 it could be a flame and perpetuity. Whereas the copyright 0:06:55.396 --> 0:06:58.076 you have it, you don't have to tend to it. 0:06:58.076 --> 0:07:02.596 It's yours, but ultimately it will expire, although the time 0:07:02.596 --> 0:07:05.556 it takes to expire is past your lifetime and keeps 0:07:05.556 --> 0:07:10.036 getting extended by big corporations. That's right, and write a publicity. 0:07:10.036 --> 0:07:13.436 It depends on the state. So some state protections extend 0:07:13.516 --> 0:07:16.516 past death. Some states have posthumous protection for like a 0:07:16.636 --> 0:07:18.476 hundred years, some have it form more like twenty years. 0:07:18.476 --> 0:07:20.556 And some states say no, this is something that you 0:07:20.636 --> 0:07:24.396 can protect while you're alive, and when you're dead, others 0:07:24.396 --> 0:07:27.916 can go ahead and use your name or image. Yeah, 0:07:27.916 --> 0:07:30.196 we were we were just talking on Twitter about this 0:07:30.196 --> 0:07:32.716 whether Freda Carlo, who is dead, has a right of 0:07:32.756 --> 0:07:35.916 publicity and it looks like she doesn't in Mexico, but 0:07:35.996 --> 0:07:40.156 she does in California. And her photograph was being used 0:07:40.156 --> 0:07:44.596 by our favorite alternative investment platform, master Works and one 0:07:44.636 --> 0:07:46.556 of their ads on Twitter, and I'm like, are they 0:07:46.596 --> 0:07:48.556 allowed to do this? And it kind of seemed like 0:07:48.796 --> 0:07:52.036 probably not that they were doing it anyway, but this 0:07:52.116 --> 0:07:54.676 is something which is big on Twitter. Like Twitter is 0:07:54.796 --> 0:08:01.036 just the world's biggest trademark and copyright infringement machine. Like 0:08:01.436 --> 0:08:04.916 everything you see on Twitter is like people are tweeting 0:08:04.916 --> 0:08:07.396 out photographs that they don't have rights too. They're using 0:08:07.436 --> 0:08:10.476 trademarks they don't have rights to, and that seems to 0:08:10.476 --> 0:08:14.836 be fine, Like is that damaging anyone? It kind of 0:08:14.876 --> 0:08:18.636 depends who's the speaker, who's the user, right, So a 0:08:18.756 --> 0:08:20.996 lot of the kinds of uses that you're thinking about 0:08:21.036 --> 0:08:22.676 are going to be fair uses. We have fair use 0:08:22.756 --> 0:08:26.916 doctrines in all three of those areas. And when you 0:08:26.956 --> 0:08:29.556 are just a regular person with a regular sized following, 0:08:30.436 --> 0:08:33.436 you can always reference trademarks. For example, that's always going 0:08:33.436 --> 0:08:35.076 to be a fair use to say I got new 0:08:35.156 --> 0:08:37.636 Nike issues. I'm so excited about them stuff like that. 0:08:38.076 --> 0:08:41.436 I think there's some interesting copyright questions around fair use 0:08:41.556 --> 0:08:44.396 when we see use on social media, whether something is 0:08:44.476 --> 0:08:47.436 transformative what you're kind of adding to it. But the 0:08:47.556 --> 0:08:50.316 rules are very different when you are a commercial entity, 0:08:50.396 --> 0:08:53.996 and when what you're doing looks more like advertising, or 0:08:54.076 --> 0:08:57.236 when it's like specifically an ad, a promoted tweet, than 0:08:57.396 --> 0:09:01.196 presumably the bar is much loa I guess not quite 0:09:01.836 --> 0:09:04.356 around it would be. But but you're you're much more 0:09:04.396 --> 0:09:07.276 likely to be infringing that way because that is an 0:09:07.356 --> 0:09:11.156 explicitly commercial activity. You're engaging it, that's right. But if 0:09:11.196 --> 0:09:14.636 you are a brand with millions of followers, whether you 0:09:14.756 --> 0:09:17.116 label something an AD and whether it gets becomes a 0:09:17.116 --> 0:09:19.556 promoted tweet or whether you just kind of push it 0:09:19.596 --> 0:09:21.596 out to your millions of followers, I don't think makes 0:09:21.596 --> 0:09:24.796 a huge difference from an infringement perspective. I thought there 0:09:24.836 --> 0:09:28.916 was an interesting case where this was blurry recently, the 0:09:28.996 --> 0:09:32.396 comedian Leslie Jones. She tweets out like videos of herself 0:09:32.916 --> 0:09:35.916 watching the Olympics, and she did it during the election 0:09:35.956 --> 0:09:40.796 watching Steve Cornaki and it's always hilarious and funny, and 0:09:40.836 --> 0:09:42.636 I guess she was doing this with the Olympics, and 0:09:42.836 --> 0:09:46.676 NBC was upset about it and told her to stop, 0:09:47.076 --> 0:09:49.716 which I thought was just I mean, I guess it's 0:09:49.756 --> 0:09:52.956 their right to tell her to stop, but was dumb 0:09:53.116 --> 0:09:58.116 because she is making the Olympics interesting which NBC would 0:09:58.236 --> 0:10:02.196 benefit only benefit from. So that seemed like like it 0:10:02.196 --> 0:10:04.276 seems like a lot of the time the issues that 0:10:04.316 --> 0:10:07.676 arise are because companies are overly protective of their ip 0:10:08.076 --> 0:10:11.476 IP and their brand ends, and sometimes they overstep the 0:10:11.516 --> 0:10:14.436 protection where it could be to their benefit. Yeah, I 0:10:14.516 --> 0:10:18.396 have a question about that, which is when this kind 0:10:18.436 --> 0:10:20.076 of thing happens, and you see like the New York 0:10:20.116 --> 0:10:22.156 Times do it a lot. When people like quote New 0:10:22.236 --> 0:10:24.996 York Times headlines and stuff, there's something which you hear 0:10:25.036 --> 0:10:29.716 which is basically, it's not you, we don't particularly mind 0:10:29.876 --> 0:10:33.876 you doing this, but if we just allow people to 0:10:33.956 --> 0:10:38.196 do this, then that would set a precedent, and then 0:10:38.236 --> 0:10:41.116 if someone did something that actually did damage us or 0:10:41.156 --> 0:10:43.116 that we didn't want them to do, it would be 0:10:43.156 --> 0:10:46.636 harder for us to enforce it. Is that true, That's 0:10:46.676 --> 0:10:49.996 not particularly true, at least from a trademark perspective. So 0:10:50.076 --> 0:10:53.676 the kind of duty to police gets really overblown when 0:10:53.836 --> 0:10:56.676 companies make that argument, you know, we have to enforce 0:10:56.756 --> 0:10:58.876 this consistently or else we'll lose it. We won't be 0:10:58.916 --> 0:11:03.156 able to enforce it. That is typically a justification for 0:11:03.316 --> 0:11:07.636 unnecessary over enforcement or bullying. So you don't lose trademark 0:11:07.716 --> 0:11:10.956 rights unless you really have stepped away and are doing 0:11:10.996 --> 0:11:15.036 absolutely nothing to control use by licensees or to police 0:11:15.516 --> 0:11:21.396 lots of really infringing harmful uses. What about like trademarks 0:11:21.436 --> 0:11:26.036 like Kleenex or Google or Xerox, things that become like 0:11:26.156 --> 0:11:29.036 generic in the language, Like, what can a company do 0:11:29.156 --> 0:11:32.316 about that? Do they still have their trademark? Right? Yeah, 0:11:32.356 --> 0:11:36.396 So what matters with genero side is really what consumers understand, 0:11:36.476 --> 0:11:38.996 and it's not how consumers use the term. So we 0:11:39.036 --> 0:11:42.036 could survey a bunch of people and they could all say, Yeah, 0:11:42.116 --> 0:11:45.396 I use Kleenex, but but I know it to be 0:11:45.436 --> 0:11:47.396 a brand. I use Kleenex to refer to puffs or 0:11:47.436 --> 0:11:50.196 any brand of tissues that I'm using. But I know 0:11:50.356 --> 0:11:54.196 that Kleenex is a trademark and when it's used, it 0:11:54.236 --> 0:11:56.756 means that the product comes from one particular company. So 0:11:56.916 --> 0:11:59.436 we wouldn't have genero side in a case like that. 0:12:00.396 --> 0:12:03.036 What companies do when they're concerned about losing their marks. 0:12:03.076 --> 0:12:05.076 To genero side is they'll kind of do like an 0:12:05.236 --> 0:12:08.956 campaign to raise awareness, which can feel really silly. Right, 0:12:09.156 --> 0:12:14.076 So we've seen Xerox duties and Nintendo and Tater Tots 0:12:14.116 --> 0:12:16.956 and all kinds of brands have like taken out colorful 0:12:16.996 --> 0:12:19.716 ads saying, hey, we just want to remind you we 0:12:19.836 --> 0:12:22.556 are the only company that can make Tater Tots or 0:12:22.596 --> 0:12:25.756 that can make Kleenex. And I think sometimes to consumers 0:12:25.756 --> 0:12:29.156 that feels like, are you policing my language and telling 0:12:29.196 --> 0:12:31.436 me what to say? But what they're really focused on 0:12:31.556 --> 0:12:34.156 is we just need you to have that information. We 0:12:34.236 --> 0:12:37.676 need you to be aware that not all tissues are Kleenex, 0:12:37.716 --> 0:12:39.196 and as long as we can get that, we can 0:12:39.236 --> 0:12:42.036 probably hang onto our mark. And that came up in 0:12:42.036 --> 0:12:45.116 the Google case too, Right, everybody uses Google as a verb, 0:12:45.276 --> 0:12:47.556 as a noun, as an adjective in every way to 0:12:47.636 --> 0:12:49.556 me and I look something up on the Internet. But 0:12:49.596 --> 0:12:51.796 if you ask them, they're like, no, no, Google is 0:12:51.836 --> 0:12:54.396 a brand. I know. Yeah, so it's both desirable and 0:12:54.556 --> 0:12:57.756 undesirable kind of thing to happen. Brand. But also, like, 0:12:57.956 --> 0:13:01.876 is this part of the jurisprudence that if people stop 0:13:02.036 --> 0:13:06.276 knowing that it's a company and the trademark, Like the 0:13:06.356 --> 0:13:08.396 judge will go out and sort of take an opinion 0:13:08.436 --> 0:13:10.596 poll basically and say do you know this? And then 0:13:10.596 --> 0:13:14.396 if they if people go, I didn't know that. Like, 0:13:14.676 --> 0:13:18.476 what's a good example of actual genericide where something became 0:13:18.556 --> 0:13:20.596 so much a part of the language that it stopped 0:13:20.596 --> 0:13:24.956 being a trademark. Murphy Bad sing or sewing machines, Yeah, 0:13:25.076 --> 0:13:29.956 shredded wheat. So things that were once marks that no 0:13:29.996 --> 0:13:32.276 longer function as marks because people use them as like 0:13:32.316 --> 0:13:35.116 a whole category term, which again, like you kind of 0:13:35.156 --> 0:13:38.796 want as a brand the marketer like nothing better than 0:13:38.876 --> 0:13:43.036 like everyone's saying, oh, go google it, Like that's desirable, right, 0:13:43.076 --> 0:13:46.316 It shows you've saturated the market, you are the name 0:13:46.396 --> 0:13:48.996 of the thing you make. That's that's not right, but 0:13:49.036 --> 0:13:52.116 it's risky, right. So there was a recent case over 0:13:52.196 --> 0:13:54.916 Comic Con that was kind of a close call. When 0:13:54.956 --> 0:13:56.836 we've talked about in my class is popsicle. So you 0:13:56.836 --> 0:14:00.556 see popsicle using like original brand popsicle. A lot of 0:14:00.556 --> 0:14:03.396 these marks are right on the margin and we're not 0:14:03.436 --> 0:14:05.516 going to have cases about them because they don't want 0:14:05.556 --> 0:14:08.836 to enforce in a way that gets another party to say, actually, 0:14:08.916 --> 0:14:12.156 you're registration should be canceled because your mark has become generic. 0:14:12.436 --> 0:14:15.516 We're going to prove it with survey data. So those 0:14:16.236 --> 0:14:20.276 mark owners really have to proceed with caution. So is 0:14:20.316 --> 0:14:24.116 this also why so many brands slap that little TM 0:14:24.156 --> 0:14:27.636 symbol all over everything? It's that part of just reminding 0:14:27.636 --> 0:14:30.276 people that brand is a trademark. Is there some other 0:14:30.316 --> 0:14:32.756 reason to do that? Yeah, So the circle R is 0:14:32.756 --> 0:14:35.316 what you use when you have a registration, and that 0:14:35.516 --> 0:14:37.676 does I mean, I think consumers A lot of consumers 0:14:37.756 --> 0:14:40.436 know what that means. So that helps send that message 0:14:40.556 --> 0:14:44.436 this is a trademark, right. The TM actually just about 0:14:44.436 --> 0:14:46.996 anybody can use and it signals like we think this 0:14:47.076 --> 0:14:50.196 is our trademark and we're working on getting making it 0:14:50.276 --> 0:14:53.156 our trademark and conditioning consumers to understand that this is 0:14:53.156 --> 0:14:55.676 a source indicator for our brand. So the TM is 0:14:55.676 --> 0:15:00.596 a little bit less meaningful, but both of them serves 0:15:00.676 --> 0:15:03.596 like in terms of the utility, the reason why they 0:15:03.636 --> 0:15:09.876 appear everywhere is precisely just to protect against scenariosite. There's 0:15:09.916 --> 0:15:12.556 no other reason to do it to protect against used 0:15:12.556 --> 0:15:16.196 by others. So if a competitor sees something on packaging 0:15:16.236 --> 0:15:18.516 and says, hey, that's a great descriptive term for our product, 0:15:18.556 --> 0:15:21.156 and we use that too. Looks like we can't because 0:15:21.156 --> 0:15:23.156 this company is using it as a trademark and not 0:15:23.196 --> 0:15:28.076 just as a descriptive phrase. My favorite example of this 0:15:28.236 --> 0:15:31.276 was when master Card decided to change its logo. It 0:15:31.396 --> 0:15:34.116 used to be an orange circle in the yellow circle 0:15:34.156 --> 0:15:37.156 overlapping them in the said master Card underneath it. And 0:15:37.236 --> 0:15:41.916 then they decided that this was so universally recognizable that 0:15:41.956 --> 0:15:44.276 he didn't need to use the word master card anymore, 0:15:44.356 --> 0:15:46.236 and they would just have two circles and it would 0:15:46.236 --> 0:15:52.316 be this beautiful, clean, perfect simple logo. And then it 0:15:52.396 --> 0:15:57.396 was it was released into the world, and every time 0:15:57.436 --> 0:15:59.796 you saw that logo, it had this little buzzing bee 0:15:59.916 --> 0:16:02.316 to the top right of it saying like registered trademark 0:16:02.316 --> 0:16:05.836 because they couldn't get rid of it. Yeah, I think 0:16:05.836 --> 0:16:07.756 we see that a lot. So we get a kind 0:16:07.796 --> 0:16:11.236 of combo composite at mark and then the brand says, hey, 0:16:11.316 --> 0:16:15.476 let's condition consumers to understand like, just this really basic 0:16:15.516 --> 0:16:19.916 representation also indicates that it's a MasterCard product or whatever. 0:16:20.236 --> 0:16:22.836 So we're working up to being able to use that 0:16:22.876 --> 0:16:25.316 by itself. So Snickers a couple years ago did a 0:16:25.316 --> 0:16:27.636 promo where they had the regular packaging, but they put 0:16:27.636 --> 0:16:30.116 different words instead of Snickers, So the bars didn't say 0:16:30.116 --> 0:16:33.116 Snickers at all. They said like angry or whatever, you know, 0:16:33.156 --> 0:16:36.876 some cutes terms that we're supposed to reference their ad campaign. 0:16:37.596 --> 0:16:40.836 And I think what that does is like reinforce consumers 0:16:40.836 --> 0:16:44.756 recognize our trade dress, like our packaging colors and font 0:16:44.796 --> 0:16:48.236 and things like that, even without the words Snickers. So 0:16:48.356 --> 0:16:51.276 now if somebody else tries to use something really similar, 0:16:51.316 --> 0:16:53.276 we can go to court and say, look, we don't 0:16:53.316 --> 0:16:56.116 even need to have the word Snickers on the packaging 0:16:56.316 --> 0:17:00.556 for consumers to get this. Sometimes companies let these trademarks 0:17:01.116 --> 0:17:05.636 die and there's a whole business in reviving them. Hey, 0:17:05.676 --> 0:17:09.036 there's a business in reviving them. B this is coming 0:17:09.396 --> 0:17:12.596 now because like the Washington football team changed its name. 0:17:12.796 --> 0:17:16.156 What are they called, oh, Commanders, the Commanders. Yeah. So 0:17:16.196 --> 0:17:18.916 now the question is like what happens to that trademark 0:17:18.916 --> 0:17:21.716 because not only is it not being used and dead, 0:17:21.756 --> 0:17:24.876 but it's offensive to many people. And this holds for 0:17:24.996 --> 0:17:28.796 like the ant Jemima trademark and what was it Uncle 0:17:28.836 --> 0:17:31.156 Ben's right, So this is like a whole new issue 0:17:31.236 --> 0:17:34.716 kind of cropping up now. Yeah, and so like, I 0:17:34.756 --> 0:17:38.556 guess two questions, Like, first is if I stop using 0:17:38.596 --> 0:17:42.236 my trademark, then obviously, given the whole like use it 0:17:42.316 --> 0:17:46.476 or lose it thing, it's no longer mine. But then 0:17:46.796 --> 0:17:52.316 what's the mechanism whereby the legal system works out who 0:17:52.436 --> 0:17:55.436 gets to have it next? Like, and then like, is 0:17:55.436 --> 0:17:59.276 there a mechanism where the legal systems can say, well, actually, 0:17:59.356 --> 0:18:02.596 no one can get it next because it's offensive, not 0:18:02.676 --> 0:18:06.076 because it's offensive, but potentially because it still creates a 0:18:06.116 --> 0:18:09.036 likelihood of confusion with the prior owner right. So, trade 0:18:09.156 --> 0:18:12.116 mark rats in the United States are based on use 0:18:12.156 --> 0:18:14.796 in commerce. That's how you acquire rights, and when you 0:18:14.796 --> 0:18:16.916 get a registration, that's just supposed to be kind of 0:18:16.956 --> 0:18:21.196 a formal recognition of the rights that you get through use. 0:18:22.436 --> 0:18:24.996 So when somebody stops using a mark for a couple 0:18:25.036 --> 0:18:26.876 of years and they don't show that they have an 0:18:26.876 --> 0:18:29.436 intent to resume use in the near future, they don't 0:18:29.436 --> 0:18:32.316 have a specific excuse like we're waiting for this component 0:18:32.316 --> 0:18:34.636 to be available, or there's an embargo with this country 0:18:34.716 --> 0:18:38.396 or something like that, then that mark is deemed abandoned. 0:18:38.756 --> 0:18:41.756 They won't have any more rights, and somebody else can 0:18:41.796 --> 0:18:46.556 come along and start using it and seek protection for it. Right, 0:18:46.596 --> 0:18:48.596 So the question about who gets it is really like 0:18:49.316 --> 0:18:53.636 whoever gets there first. But there's a doctrine called residual 0:18:53.636 --> 0:18:57.676 goodwill that says, like, listen, this mark is famous in 0:18:57.716 --> 0:19:00.756 this country. And maybe not everybody knows about the abandonment, 0:19:00.756 --> 0:19:02.916 but everybody knows this mark. And so if you come 0:19:02.916 --> 0:19:08.276 along and start using it for something that's related but different, 0:19:09.276 --> 0:19:11.436 you're going to be free riding on that goodwill that exists, 0:19:11.436 --> 0:19:14.156 and you're potentially going to deceive consumers. Right. So if 0:19:14.156 --> 0:19:17.796 a Jemima, if that brand announces we're not using this 0:19:17.876 --> 0:19:21.316 mark anymore because we've come to understand that it's really problematic, 0:19:21.596 --> 0:19:23.596 and then a week later somebody picks it up and 0:19:23.596 --> 0:19:27.716 starts using it for maple syrup or some other breakfast food, 0:19:27.876 --> 0:19:29.996 then we can expect a good amount of consumers to 0:19:30.116 --> 0:19:33.396 think that it still comes from the old brand. Right. 0:19:33.716 --> 0:19:36.476 But then the question is who's going to stop them, 0:19:36.796 --> 0:19:40.716 because it might not be the USPTO. USPTO might say, well, 0:19:40.996 --> 0:19:44.236 nobody else currently has trademark rights, so you can have them. 0:19:44.836 --> 0:19:47.956 So most of the case law comes from the prior 0:19:48.036 --> 0:19:52.996 owner suing for infringement based on those rights that come 0:19:53.036 --> 0:19:55.836 from residual goodwill. But if you're a mark owner who's 0:19:55.876 --> 0:19:59.356 like just announced to the world we are stepping away 0:19:59.356 --> 0:20:02.356 from this mark, we know it to be harmful, then 0:20:02.396 --> 0:20:05.836 it feels like kind of tricky to enforce those rights. 0:20:06.276 --> 0:20:08.156 So I think we've seen brands do a couple of 0:20:08.156 --> 0:20:11.596 different things, Like the Cleveland Indians they said they weren't 0:20:11.596 --> 0:20:15.036 going to use Chief wah Who anymore that mascot based 0:20:15.036 --> 0:20:18.196 on some harmful stereotypes on the uniforms, but they were 0:20:18.276 --> 0:20:21.916 kind of low key still using it for merchandise right 0:20:22.876 --> 0:20:24.916 and an Jemima's I think is still using in some 0:20:24.956 --> 0:20:28.356 other countries or using on the back of the products. 0:20:28.716 --> 0:20:31.476 And then Uncle Ben's they changed it to Ben's original, 0:20:31.476 --> 0:20:33.876 which is still similar enough that they can probably enforce 0:20:33.916 --> 0:20:36.836 those rights. So they're kind of we're seeing some ways 0:20:36.876 --> 0:20:40.356 that those who are stepping away from a mark are 0:20:40.436 --> 0:20:43.716 still trying to hang on to some rights. One thing 0:20:43.756 --> 0:20:45.876 that was interesting to me in doing the reading catching 0:20:45.916 --> 0:20:49.516 up from two thousand and five was the Washington football 0:20:49.556 --> 0:20:52.476 team name, because when I was covering IP there was 0:20:52.676 --> 0:20:57.036 a lawsuit over the trademark because some Native American groups 0:20:57.076 --> 0:21:00.076 said you can't trademark something offensive, which I guess is 0:21:00.116 --> 0:21:02.716 in the land I'm act, But when I was reading 0:21:02.996 --> 0:21:05.676 last night, was that that went away because of some 0:21:05.756 --> 0:21:08.316 other case where they said, oh, yeah, you can actually 0:21:08.836 --> 0:21:11.076 trade mark things that are offensive, so can you? You 0:21:11.076 --> 0:21:14.636 can trademark things that are offensive now? Absolutely So. The 0:21:14.716 --> 0:21:17.596 landmark used to contain a bar on registration of offensive 0:21:17.716 --> 0:21:22.116 or scandalous or marks that disparage a particular group. And 0:21:22.196 --> 0:21:24.036 so for a long time, like you know, the band 0:21:24.036 --> 0:21:27.156 Buttle Servers, they didn't have a registration for their trademark, 0:21:27.196 --> 0:21:30.996 even though that's a pretty well known mark, right. Um So, 0:21:31.196 --> 0:21:35.276 in a pair of cases, the Supreme Court overturned that 0:21:35.316 --> 0:21:39.236 bar on registration essentially based on the First Amendment, based 0:21:39.276 --> 0:21:42.516 on the idea that this is speech in addition to 0:21:42.636 --> 0:21:47.756 being commercial, and we can't regulate that speech in these 0:21:47.836 --> 0:21:51.156 kind of specific ways that we've been doing. That's an 0:21:51.196 --> 0:21:54.156 anti cancel culture ruling. I feel like people don't know 0:21:54.236 --> 0:21:56.836 that this is amazing. This went all the way to 0:21:56.876 --> 0:22:00.636 the Supreme Court, who which mark was being instigated in 0:22:00.676 --> 0:22:03.756 front of scouts. Yeah. So the first one was the Slants, 0:22:04.156 --> 0:22:07.876 which is a band made up of Asian American artists, 0:22:08.196 --> 0:22:11.396 and they shows that mark as kind of a reclaiming 0:22:11.436 --> 0:22:13.836 of a slur, you know, something that was tongue in cheek. 0:22:14.116 --> 0:22:17.676 So it wasn't about a bunch of white people using 0:22:17.716 --> 0:22:21.116 a mark that is disparaging to a group that has 0:22:21.116 --> 0:22:23.796 been marginalized. In said, it was members of that marginalized 0:22:23.796 --> 0:22:25.996 group trying to take it back. And when they applied 0:22:26.036 --> 0:22:29.716 to register at the USPTO said, we think that is 0:22:29.796 --> 0:22:33.196 an offensive term. And here's some Urban Dictionary entries and 0:22:33.276 --> 0:22:36.476 here's one time that Miley Cyrus said something offensive. So 0:22:36.516 --> 0:22:38.996 the band appealed that. They appealed it all the way 0:22:39.116 --> 0:22:41.196 up and they were able to succeed on this First 0:22:41.196 --> 0:22:48.716 Amendment based argument with some strange bad fellows. Alexandrew Roberts, 0:22:48.716 --> 0:22:50.796 thank you for coming on this, Joe, this is so 0:22:50.916 --> 0:22:53.116 much fun. It was I've been looking forward to this 0:22:53.196 --> 0:22:56.516