First Amendment Trumps Ban on Registering Disparaging Marks

The CEO of ACME Corporation was pouring over productivity reports when his in-house counsel walked in with news.  We join the discussion.

CEO:               Hello, counsel.  How are we doing with registering our ROADRUNNERS SUCK mark?  Didn’t the USPTO refuse to register our mark because it is ‘disparaging?’

Attorney:         Good news, sir.  We can get our registration now.  The US Supreme Court decided in Tam that the First Amendment trumps the prohibition on registering marks with disparaging content.

CEO:               Didn’t you show me a blog post about that?  It was a good read.

Attorney:         That post was a good read.

CEO:               Are we clear to get our mark registered?

Attorney:         Yes.  The mark qualifies and the Tam decision clears the obstacle by the USPTO that our “disparaging” mark cannot register.  We and anyone with a mark like that now can get the benefits of registration.

CEO:               Another victory for free speech, eh?

Attorney:         Certainly.  I still want to talk to you about adding a warning label.

CEO:              That again?  Leave it be.

Attorney:         Mr. Coyote!  The fake tunnel entrance sold under the ROADRUNNERS SUCK mark risks having people think they are real, and running into them.  We could get sued!

CEO:               Damn lawyers.  Fine.  Get your team on it.

The attorney left and the CEO checked his email.  He found an email from his arch business rival with an audio file attachment.  The CEO clicked the attachment.  What came out of the computer’s speakers was a loud “BEEP BEEP!”

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  A blog article is not a substitute for legal advice that fits your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2017 Matthew D. Macy

Success at CCEA!

Jeff Cohen and Jefferson Allen of Cohen Cooper Estep & Allen, LLC, were interviewed by WSB Atlanta about their client, a tax preparer.  Messrs. Cohen and Allen obtained a successful result for the client.   You can see the broadcast here.  Below the line is a press release by Jeff Cohen about this story, printed here with permission.


In early March, the Georgia Department of Revenue (DOR) tried and failed to shut down a family-owned tax return preparation business that prepares thousands of tax returns for Georgians every year. Despite the fact that B&B Accounting & Tax Service, Inc. and its owner, Ruth Barr, have been in business for over 40 years, the Department of Revenue used a very small sampling of tax returns to come to their own conclusion that B&B was intentionally understating the tax liability of thousands of Georgians. Ruling upon the DOR’s application for a Temporary Restraining Order, the Fulton County Superior Court disagreed.

Tax Attorney Jeffrey Cohen, of the law firm Cohen, Cooper, Estep & Allen, LLC, was critical of the lack of evidence presented by the DOR. Cohen contended that the scant number of tax returns presented in court by the DOR misrepresented the facts. If the DOR had been awarded its Temporary Restraining Order, it would have forced Ms. Barr and her employees out of business. Mr. Cohen, who represents taxpayers and return preparers before both the State and the Internal Revenue Service, had not previously heard of the DOR ever attempting to shut down a legitimate tax preparer. His partner, Jefferson Allen, argued to the Court that the State required a substantial amount of evidence to prove its case, and that it failed. The Court agreed with B&B that the evidence presented by the State was inadmissible and unsubstantiated hearsay.

Soon after the Court’s ruling, the Department of Revenue dismissed the case against Ms. Barr and B&B.

Dazed and Confused

Twenty-eight states and Washington, D.C. legalized marijuana to varying degrees under their respective laws.  As you have heard, though, marijuana remains illegal under federal law. The marijuana sector boomed when the Obama Administration decided to place a low priority on enforcing the federal marijuana laws vis-a-vis marijuana activities under state law.

The federal government still has a hammer in the federal drug laws that could shatter the marijuana industry.  The Trump Administration made statements recently that it may use that hammer on part of that industry.  We will see what happens.

The possible shift in how the federal government handles marijuana highlights that anyone looking to get into, or stay in, the marijuana business must be ready.  The breadth of the federal drug and racketeering laws means that those doing business with or assisting those in the marijuana business could be at risk.  Landlords, suppliers, financiers, and professionals, to name a few, should assess their risks if federal law enforcement changes its priorities.  Ignorance rarely, if ever, works as a defense.

The standard advice stands – go into any business with your eyes open.  Know the regulations and the risks.  Speak with your lawyer, CPA, insurance agent, and others to get the advice you need.  Call us and see how we can help you.

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  A blog post is not a substitute for legal advice that fits your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2017 Matthew D. Macy

DECISIONS, DECISIONS

Have a new mark that you want to use?  I discussed in an earlier post that you should conduct a search for other marks that are the same or similar to your intended mark, before the launch.  What happens if your search scores a “hit?”

Move Along – Nothing To See Here

You can just go with another mark, avoiding the other mark entirely.  Whether you should do this before or after answering the following questions sometimes is self-evident.  I would be stupid to launch “Matt’s Coca-Cola Experience” without getting permission from Coca-Cola, for example.

Mother, May I?

You could request permission or consent from the owner of the other mark; this often takes the form of license.  An example would be a franchisee getting a license from the franchisor to use the franchisor’s mark.  Do not count on a competitor from giving you a license, though.

Fight of Flight

Maybe you are free to use your mark, because the competitor’s mark does not apply to your market.  Act with caution – the other’s mark could be strong enough to make it unwise to use a similar mark in another field.

The competitor’s mark may have a fatal weakness that you can exploit.  The competitor may have failed to protect its mark, turning that mark into a toothless, paper tiger.  There are times when it makes sense to launch a legal challenge to such a mark.

Will You Marry Me?

Maybe the other mark is ripe for a purchase.   This can be a win-win when the price is right.

Baby Needs a New Pair of Shoes

You can roll the dice and go forward with your mark without answering any of the questions.  Maybe it will work out or maybe you that decision will backfire.  A finding of intentional infringement can make matters worse if you lose a trademark infringement lawsuit.

A Little Elbow Room, Please

Maybe you find that there are several other similar marks in use, and maybe you determine what you have relatively low legal risk by going ahead with your mark.  Will you have to spend more time and money than you otherwise would to get your mark noticed?  Will the crowded marketplace make it harder for you to get exclusive rights to your mark?  Whether your mark is worth the effort will answer whether you should go with that mark or get a new mark.

As We Bid Adieu

Learning that someone else is using a mark that is the same or similar to your desired mark is not the end of the world.  Getting guidance from a competent professional will be well worth it.  This blog post is not a substitute for that advice.  Please contact us if we can be of help.

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2017 Matthew D. Macy

Federal Court Puts New Overtime Rules On Hold

On November 22, 2016, a federal district court in Texas issued an preliminary injunction pausing the implementation of the new overtime rules set to go into effect on December 1, 2016.  The overtime rules significantly raised the salary requirements for employees to be exempt from overtime under the EAP (executive, administrative, professional) exemption.  You can read my post about that here.

The preliminary injunction does not permanently stop the rules – it is a temporary brake.  The judge’s order is the first in what is likely a series of legal challenges and decisions.  We can expect the US Department of Labor (“DOL”) to challenge the judge’s preliminary injunction with some form of an expedited appeal.  Meanwhile, though, the judge’s order puts a break on the new salary requirements.

Employers should avoid a knee-jerk reaction to the injunction.  Whether to put any changes on hold, or to keep or remove any changes already made, should be done carefully.  Both the legalities and business considerations (such as the affect on employee morale) must be considered.  Employers also should stay alert in case the judge’s order changes, the order itself is suspended, or is reversed.  An employer that does not pay attention does so at that employer’s peril.

Please contact us with any questions.

Have a happy Thanksgiving!

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2016 Matthew D. Macy