Explainer Mailbag: Department of Corrections

Slate reader Mike Zadrozny, a trademark attorney in Arlington, Va., wrote to correct an error in this week’s column on the Todd M. Beamer Foundation’s effort to trademark the phrase “Let’s roll.” The error: Explainer wrote that in order to trademark “Let’s roll,” the Beamer Foundation would have to argue that the public has come to identify the phrase with Todd Beamer and the Beamer Foundation. (That would be in keeping with the need for a trademark to either be “inherently distinctive” or to have “acquired distinctiveness.”)

Not true, Zadrozny says.

First, the U.S. Patent and Trademark Office may only require an applicant prove acquired distinctiveness if the mark is merely descriptive of the goods or services. Common words or phases that are NOT merely descriptive of the goods or services are registrable without the need to prove the mark has acquired distinctiveness. For example, there is a well-known company that chose the word “apple” as a mark for the sale of computers. “Apple” is of course a common word. However, when used in connection with the sale of computers it is highly unique and even arbitrary. Apple Computer Co. was not required to show that their mark had a distinctive secondary meaning apart from the original meaning. Similarly, “Let’s Roll” in connection with charitable fundraising services is likewise arbitrary or at the very least suggestive of the services and NOT descriptive of the services. As a result, the foundation would not have to prove secondary meaning.

Zadrozny’s opinion is that the Beamer Foundation will be able to trademark the phrase for use with “charitable fundraising services,” as stated in its application to the U.S. Patent and Trademark Office. But the foundation likely won’t win trademark rights for the use of the phrase on clothing. That’s because Iman Abdallah of Newark, N.J., applied to trademark “Let’s roll” for use on T-shirts on Sept. 22, 2001, four days before the Beamer Foundation’s application. But Zadrozny adds: “Keep in mind that trademark rights in the U.S. stem from use, not applying for registration, so if a third party, who has not filed an application, began using the mark on clothing before September 22, 2001 (Mr. Addallah’s filing date), that third party would have the superior rights in the mark for clothing.”

In case you’ve lost faith in the rest of Explainer’s judgments on trademark law, Zadrozny assures that “the remainder of the article was well-written, informative and legally correct.”

Many readers wrote in to ask about “service marks,” which receive the designation “SM.” A service mark is identical to a trademark, except (in the words of the USPTO) “it identifies and distinguishes the source of a service rather than a product.” The general use of the word “trademark” encompasses both trademarks and service marks.

Steve Lickiss asks about the U.S. government’s attempt to extradite the men responsible for the murder of Daniel Pearl. What jurisdiction would permit a U.S. court to try Pakistani citizens for a crime committed in Pakistan? According to thisNewRepublic article, a principle of international law known as “passive personality” allows nations to “punish certain crimes committed against their citizens overseas, even if the perpetrator is a citizen of another country.”

Finally, the question of the week: How did Irina Slutskaya’s figure-skating results allow Sarah Hughes to leap over Michelle Kwan for the gold medal? Click here for the New York Times’ explanation, in case you missed the link in Monday’s “Other Web Sites.”

Next question?