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Mark Your Spot in the IP World

Updated: Sep 5, 2018

The value of logos, trademarks, service marks, and copyrights is virtually incalculable and your Intellectual Property represents the most valuable asset(s) of your business.


By John Pellegrin, July 2017

Several recent items in the news on the IP (Intellectual Property) front are worth noting with respect to any business’ branding or trade/service marks (TM/SM) creation: the U.S. Supreme Court’s affirmation of a violation of the Constitution’s First Amendment Freedom of Speech Clause by the USPTO (U.S. Patent and Trademark Office) in the case of its denial of TM registration for “The Slants;” Georgia Tech effectively interdicting Damascus, MD from painting a yellow jacket bee on its water tower to honor its local high school because of alleged TM infringement/violation of an extensive IP agreement between the two parties; and defining “soy milk” and whether the term violates the federal standard for “milk.”

{The author has a robust IP/IT practice, advising clients as to the parameters of TMs/SMs and their enforceability, as well as related issues.}


It is always a good idea to carefully check out the central theme of any proposed branding campaign to avoid potential IP/TM/SM/Copyright infringement issues with competent counsel. The negative consequences of a serious misstep can be catastrophic and very expensive. Witness the NBC network debacle some years ago when NBC wanted to change from the Peacock branding mark to a simple red “N.” Turned out that the “Big Red N” and red “N” had been registered as TMs by the Nebraska Football Network. Upon threat of litigation, NBC had to not only cease using its “N,” but pay NFN a significant amount to settle damage claims by NFN, including donating a fully equipped $750,000+ Electronic News Gathering (ENG) truck to NFN.

“The negative consequences of a serious misstep can be catastrophic and very expensive."

In the case of Damascus/Georgia Tech, no matter how innocent or community-supportive some proposed logo/slogo/design or fanciful mark appears, it may cause confusion as to the source of the product/service in the minds of consumers/channel of commerce, hence violating basic TM/SM law.


These issues continue to crop up, and new instances will undoubtedly be covered in future posts on Pellegrin’s BriefCase. Readers’ comments/experiences are welcomed, although if used we will delete the source so as to protect the reader’s identity.


“The Slants “decision notes that even commercial speech, which does not garner the same 1st Amendment protection as private speech, still may prevail over a countervailing “disparagement” USPTO regulatory prohibition. The ripple effect from this decision is that the “Redskins” disparagement litigation and USPTO threat to discontinue federal TM registration protection has been dismissed by the U.S. government. However, before any reader takes this decision to mean that one can with impunity disparage another or a group, think twice – there are other defamation remedies and claims for those who feel they have been disparaged/defamed.


In the case of “soy milk,” two U.S. government agencies (USDA and FDA) have been at odds as to what constitutes “soy milk” and when and how that term may be used. Needless to say, a somewhat “sour history” of this contretemps continues without near-term resolution in the offing.

Pellegrin’s BriefCase SM/©

Volume I, Issue #2, July 2017

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Disclaimers, Caveats & Author’s Background: ADVERTISING MATERIAL. Nothing contained in Pellegrin’s BriefCase is to be taken as the bête noire nor relied upon as legal advice; rather, the author’s comments on emerging trends in business and prescient decisions in the law and government regulations/interpretations/policy are meant to inform the reader of trending issues.


The author maintains a full-service law and business consulting/agency practice – John D. Pellegrin, P.C. He also serves as Of Counsel to the law firm of Allred, Bacon, Halfhill & Young, PLC. Mr. Pellegrin balances this full-time practice with active involvement in many community-based organizations and activities, including serving as Chairman, Fairfax County Small Business Commission. The author, John D. Pellegrin, is also known as “JonRePell, Agent Provocateur” in some circles or levels of Hades. He may be reached at 703.598.0380 or jp@lawpell.com; www.lawpell.com.


Pellegrin’s BriefCase is a Service Mark (SM) of John D. Pellegrin, P.C., and its contents are copyrighted ©; all rights reserved. No part of Pellegrin’s Briefcase/blog may be reproduced or transmitted in any form or by any means without the prior written permission of the author or John D. Pellegrin, P.C., except by a reviewer who may quote brief passages in a review with appropriate attribution given this author.


Comments/submissions to Pellegrin’s BriefCase are always welcome. Prizes for those that are re-printed, with attribution given as appropriate, may include the Marron (Brown) Pelican Award, the Blanc (White) Pelican Award, or Bibelot (White Elephant) Award.


Pellegrin’s BriefCase SM/©

Volume I, Issue #2, July 2017

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