When the US Patent and Trademark Office’s director submitted a pair of unorthodox trademark applications to protect President
But the office’s December and January applications aren’t alone.
A group called Patriot Principles Project Inc. filed applications for the name “Board of Peace” and a logo with a shield, globe, and laurel branches in early February.
That name and logo closely resemble those sought in applications filed by the PTO and signed by PTO Director John Squires that were already the subject of congressional scrutiny.
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Trademark lawyer Eric Lane, part of the New York-based PPP and who handled the group’s applications, said the effort isn’t meant to lampoon the Trump-led initiative or to lay claim to potentially valuable internet real estate.
“We’re just a couple of guys who want to change the conversation about what a board of peace should be,” Lane said. “The best way to change a conversation is to join it, and you have to make sure people are listening.”
‘Confusingly Similar’
Lane isn’t concerned that his group’s filings could get rejected because of the earlier applications.
“We’ve conducted our IP diligence and concluded we have a strong trademark position,” he said. Even though Squires’ applications came first, regulatory language makes it “very clear that a trademark application filed in a name of an entity that didn’t own the mark as of the filing date of the application is void,” he said.
Lane wouldn’t say whether PPP was bracing for a legal fight over branding with the Trump-affiliated Board of Peace or if it would consider formally opposing the PTO-filed applications at some point in the future.
But several trademark attorneys say PPP’s applications could position the group to take on the pending Squires applications if they get approved by a trademark examiner.
Brand owners can oppose trademark applications or seek cancellation of newly issued trademark registrations at an agency tribunal called the Trademark Trial and Appeal Board.
The sought-after trademarks “are confusingly similar,” said Christine Farley, who teaches trademark law at American University. That’s one reason why an examiner could reject PPP’s later-filed applications in light of the earlier ones, she said.
“I don’t know what the motivation of PPP was in filing these applications,” Farley said, but the pending and conflicting applications “give PPP standing to oppose the USPTO applications.”
A group in PPP’s position also could send a letter of protest to flag to the agency potential problems with the pending Squires applications, she said.
Standing isn’t limited to parties whose own applications or branding are threatened by a trademark applicant’s filing, “but it’s always easier if you get a refusal” of your own applications by the PTO, said Eric Perrott, a partner at Gerben IP.
Potential Roadblocks
Perrott said he has problems with both the Squires filings and the newer PPP applications.
The first batch of Board of Peace applications identified the USPTO as the owner even though the intellectual property agency doesn’t appear to have any management authority over the president’s Board of Peace initiative, Perrott said.
That, he said, runs afoul of a principle of trademark law that “says the owner of a trademark application must be the actual owner and have actual control of the mark or at least a bona fide intent to use it.”
Squires told Raskin at a March oversight hearing that the PTO was acting as a “custodian” with regard to the trademark applications.
But Farley said the PTO’s custodian claim is highly unorthodox. “US law allows only owners of existing marks and those with a bona fide intent to use a mark to file applications,” she said.
The PTO declined to comment on the newer Board of Trade applications and didn’t immediately respond to a follow-up request for comment about those criticisms.
Perrott said PPP, on the other hand, appears to be using the trademark registration system “as a political act,” and in the process “seeking exclusive rights” that, if successful, could limit the public’s ability to use the phrase “board of peace.”
“My cynical view of it is they got next in line, if the PTO applications are rejected,” Perrott said. “That’s an interesting place to be in.”
Both sets of applications could be in trouble due to another tenet of trademark law that makes it far more difficult to register a trademark when it merely describes an aspect of the applicant’s goods or services.
“‘Board of peace’ is likely a descriptive phrase, so does anyone own the rights in that?” Perrott asked.