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Eff Yeah!

Trademark rights just expanded today in a controversial move that marks a huge victory for business owners and branding experts but may offend certain populations. The U.S. Supreme Court affirmed the Federal Circuit’s ruling that the disparagement clause violates the Free Speech Clause of the Constitution.


What does this mean?
Before today, the USPTO (U.S. Patent and Trademark Office–a government agency tasked with approving and rejecting private intellectual property protections) prohibited the registration of marks that disparage members of a racial or ethnic group. So when a dance-rock band named “The Slants” tried to trademark the term, the band got rejected. The band argued that their use of the term was an attempt to reclaim a term that was historically derogatory and “drain its denigrating force.” In a victory to free speech advocates, the Supreme Court sided with the band, reaffirming that “speech may not be banned on the ground that it expresses ideas that offend.”

On its face, the disparagement clause seemed like a useful tool to help ferret out illegitimate marks and protect others from offensive slurs or remarks. But this caused a government agency to essentially become police officers over what is considered offensive vs. non-offensive speech. The Supreme Court reaffirmed in this decision: “The First Amendment forbids the government to regulate speech in ways that favor some viewpoints or ideas at the expense of others.” Because federally registered trademarks are considered private speech (not government speech), the government does not have a write to craft, edit, or delete the message simply because it does not like the viewpoint (as was the case with the disparagement clause).

This is an important distinction because the government is allowed freedom of speech. For example, during World War II the government printed an ad campaign encouraging people to sign up to assist in the war efforts. The government was not constitutionally required to be neutral and also use its resources to express the opposite viewpoint. The government is allowed to publicize whatever message it wants and by extension choose to censor undesirable viewpoints. If trademarks were considered government speech (as the government argued in this case), the government’s power would significantly expand in limiting trademark registration to only those marks it chooses. This could also extend to copyright registration wherein a private citizen would be unable to avail herself of copyright protection for her book, music, or art simply because the government disagreed with her message.

This case may be controversial in allowing certain offensive terms to receive federal trademark protection, but it also further protects freedom of speech. The government now has one less reason to deny your trademark. To file your offensive or non-offensive trademark today, click here.

Wills For Heroes



Last week, I had the privilege of helping out with Wills For Heroes, a wonderful program that partners Utah first responders with lawyers in the community to help the first responders and their spouses complete their wills. The job of first responders is stressful enough without having to worry about what would happen to their families after they die. The program makes the process as painless as possible. You sit in a room with an attorney and discuss basic succession planning in the even of unfortunate circumstances. This month we met at the Syracuse Police Department, and I loved the “Ethical Decision Making” guidelines above that they painted on their wall in the conference room. It’s a great way to think about choices in general. (Sometimes a client may ask, Is it legal” first, when they really should consider it last.)

Everyone should have a basic estate plan in place, even if you think you do not have many assets. If you have children, it is essential. The basic elements of an estate plan include (1) a basic will, (2) a power of attorney, and (3) an advanced healthcare directive.

The will states how you would like to distribute your assets after you die. If you have children, they constitute your most valuable asset, and you want to make sure you take care of them in the best way possible after you die. In such a delicate time, the last thing your children need is a custody battle for who is going to be responsible for raising and supporting your children. The will also provides for your children and can limit access to funds at a certain age to ensure the children spend the money wisely. You also designate a personal representative, someone who is charged with distributing your assets to the appropriate people, holding the assets in trust for your minor children, and even planning and paying for your funeral. You may also make specific gifts. If you have a child, friend, or family member who plays an instrument, loves jewelry, is an artist, or who loves hand-me-down furniture, you may want to specify these gifts in the will.

The power of attorney allows someone to stand in your place financially in the event that you become incapacitated (hopefully temporarily). So if you get into a car accident and are in the hospital for three weeks, the person you designate to hold power of attorney for you will be able to do basic things like pay your bills. You may also grant them additional powers like the power to make cash gifts, donate money, change beneficiaries, and more.

The advanced healthcare directive allows you to state your wishes for end of life care. You would think about and designate certain actions that you’d like taken in the event that you are on life support or in an end-of-life scenario. The directive also allows you to designate a person whom you trust to make these decisions for you. This person may also have access to your medical records or the ability to make medical decisions for you in the event of a temporary medical event.

The documents will help ease your mind and help you know that everything is secure in the event of an unfortunate event. Each situation is unique, and you should consult an attorney to draft an estate plan that matches your unique situation. Tailored Legal Services can help you with this, and other estate planning needs. Contact us today to determine your legal needs.

Employment and Agency: “Look Mom, I Landed A Job!” Well are you an Employee or Not?

If you work in Utah, you are presumed to be an employee. Utah Code Ann. § 35A-4-204(3) (LexisNexis 2011). If an employer wanted to prove otherwise, it would be the employer’s responsibility to demonstrate that you are an independent contractor, which means the employer must show that the person they hired is

(1) customarily engaged in an independently established trade, occupation, profession, or business of the same nature as that involved in the contract of hire for services; and (2) the individual has been and will continue to be free from control or direction over the means of performance of those services, both under the individual’s contract of hire and in fact.

Both of these very convoluted qualifiers depend on many factors and do not come with a checklist of activities that make someone an employee or an independent contractor. The value of a lawyer is that he or she can listen to your specific circumstances and give you advice that is custom tailored to fit your specific situation. Below are just some of the factors lawyers consider for their clients when determining if someone is an employee

  1. Does the worker work from home or a separate office from the employer?
  2. Does the worker provide her own supplies?
  3. Does the worker have other clients separate from the employer?
  4. Does the worker have the potential to either profit or loss?
  5. Does the worker advertise his services separately from the employer?
  6. Does the worker require professional or other licenses to engage in the business?
  7. Does the worker maintain separate business and tax forms?

Of course, the Department of Workforce Services uses the above factors as guidelines and the individual circumstances of each case will dictate how strong they will consider each factor. See Needle Inc. v. Dep’t of Workforce Servs., 811 Utah Adv. Rep. 39, P10 (Utah Ct. App. 2016).

Say for instance you want to hire a nanny. Here are some things you’ll want to consider when determining whether she will be your employee or an independent contractor.

Will she be working in your home or at another location of her choosing?

Will she use her own toys, strollers, food, and cribs or will you provide that for her?

Will your nanny or babysitter exclusively work for you or will she work for others?

Will your nanny continue to advertise for other families while working for you?

Will your nanny have control over her day-to-day schedule?

Trademark and Entertainment: Even the Batmobile Cannot Outrun Trademark Law

Remember Pimp My Ride with Xzibit? That was a pretty great show, where Xzibit, with a team of talented mechanics, would take a person’s beater car and transform it into a man cave on wheels with all the comfort, sophistication, and technology of a luxury car. Wouldn’t it be great if someone would do that, but instead of turning your beater cars into luxury vehicles, he turned it into Batmobiles?

Well, Mark Towle’s already done it and he got into a lot of trouble for it.  Mark Towle was this genius entrepreneur who produced and sold replica Batmobiles and car kits that helped others customize their own cars into replica Batmobiles. And to top it off, Mark also distributed auto parts and accessories to match his clients’ realistic Batmobiles. He knew he didn’t have a trademark for these images but he claimed one advantage: the owners of the Batman and associated trademarks did not claim a trademark in the area of automobiles.

See, when you file a trademark, you put the country on notice that you are using a certain design, or word, or distinct property in such a way and with certain products that no one else may do the same. For instance, the mark “McDonald’s” belongs to the McDonalds corporation, which sells fast food. No one would dispute that. However, McDonald Automotive Group in Littleton, Colorado owns the rights to use the name McDonald with respect to car dealerships and repair shops. And McDonald Manufacturing Company in Iowa owns the exclusive rights to use “McDonald” for its water and gas valves. There is no confusion between these three, so the USPTO (U.S. Patent and Trademark Office) allows them to coexist.

How does this related to Mark Towle? Mark argued that because the Batman trademarks did not exist in the space of automobiles before he started his business, he was in the clear. Unfortunately for him, the court found that in order to sue, the trademark holder “only needs to demonstrate that it is the registered owner of a mark for any class of products, even one that does not compete directly with” the person being sued. From there, the court considered the traditional factors of trademark infringement to determine whether Mark’s use of Batmobile-looking products constituted infringement. The court ruled that Mark was infringing the trademark because of the following reasons: (1) the marks were so similar, (2) the Batman and related marks were distinct and strong, (3) people were actually confused if Mark was authorized by Warner Brothers or D.C. comics to use those marks, (4) the proximity and relatedness of the two products was strong, (5) there was a high degree of overlap between Mark’s clients and D.C. comic fans, (6) Mark knew that the trademarks existed, and (7) the likelihood of the product lines expanding into each other’s market created confusion in the marketplace.

The lesson we learn from poor Mark Towle is that it is important to discuss your plans with an attorney before using a particular mark, even if it’s in a different space than the original mark. You may not be able to sell delicious French fries under the name “Wendy,” but if you’d like to open a hair salon with that name, talk to me.

Employment Law Quick Facts

Here are some short answers to legal questions some of my clients have asked. Each jurisdiction has its own employment and contract laws. The following information may not be applicable to your situation. For more in depth information and legal advice, please consult an attorney. Better yet, retain your attorney here at Tailored Legal Services [clickhere].

  1. May an at-will employee still have an employment contract?
    1. Yes. Every employer-employee relationship is a contract for employment, whether it is considered at-will or for a definite term.
  2. What documents, oral promises, and other assurances can be implicitly incorporated into the employment agreement where the stated “employment agreement” is not a fully integrated contract?
    1. Evidence of the contractual relationship may be deduced from written agreements, employee handbooks, and the parties’ written and oral disclosures.
  3. What are the damages for breach of an employment contract where an employer fails to provide promised resources necessary for a commission-based employee to succeed?
    1. Damages for breach of an employment contract are determined by the actual employment benefits and wages incurred by the breach. In a negligent misrepresentation action dealing with employment, damages may be calculated by the amount the employee would have received had he not been induced to join the breaching company.
  4. If an ambiguity exists in an employment contract, can it be interpreted against the drafter?
    1. Yes, but only after extrinsic evidence is considered and still not helpful to determine the meaning of the ambiguity. The doctrine that ambiguities be interpreted against the drafter is essentially a tiebreaker.