Trademarks are Permanent - First Usage - LINSANITY (J. Lin) v. MAGIC (Afghans)

[mojobadshah]

Trademarks and Service-marks are permanent.  It's the first usage of a trademark in commerce that establishes "ownership."  The mark MAGIC has identified an 8000 year old cultural tradition and service from ancient Irano-Afghan times and carries down into present day times.  In its orthodox form this tradition is called Zoroastrianism.  In ancient Afghanistan the Zarathushtrian homeland this tradition was identified as the MAGA (the etymological origin of the mark MAGIC; and arguably confuseable).  The ancient Greeks attributed "MAGIC" and their representatives the "MAGI" to Irano-Afghan culture and described the practice in the same way it is understood today - as a "Divine Art or work of a Priest" and also "Quackery or Illusionism."  Why is it reasonable, rational, appropriate, legal that a "catch-phrase" like LINSANITY can be protected exclusively, but not a trademark that is tied to a mark such as MAGIC which has identified an Afghan service exclusively for over 8000 years? 

Would it be legal for me to register the mark CATHOLIC CHURCH or in German Katholische Kirche?

[Robert K S]

Trademarks are not "permanent", and they do not rely on mere priority.  I'll limit my remarks to U.S. federally registered trademarks.  Trademarks and service marks, as defined in 15 U.S.C. § 1127, must identify and distinguish goods or services used in commerce from those manufactured, sold, or provided by others and to indicate the source of the goods or services.

1. Cultural traditions and religions are probably not goods or services used in commerce.
2. Even if they were, a person or collective attempting to register a mark that is purported to have originated 8,000 years ago would have difficulty establishing that they alone should be entitled to use of the mark, given the tendency of religions to branch into sects.  (What gives one sect more entitlement than another?)
3. Marks are invalidated by "genericide": when a term used as a mark becomes so commonly used that its primary meaning no longer identifies the product or service that claims the term, the mark is eroded or genericized and ceases to be enforceable.

As applied to "Linsanity":
The goods/services sold in commerce which the protected mark identifies (according to its registration) are duffel bags, knapsacks, all purpose sport bags, backpacks, cups, mugs, aluminum water bottles sold empty, plastic water bottles sold empty, reusable stainless steel water bottles sold empty, t-shirts, sweatshirts, hooded sweatshirts, action figures, and basketballs.  The mark is registered to an identified person, Jeremy Lin.  There is no indication that "Linsanity" has taken on an expanded use such that its primary meaning is no longer the brand it identifies.  (E.g., we haven't started to call all knapsacks "linsanities".)

As applied to "magic":
Any attempted registration would have to identify the good or service with which "magic" has allegedly become identified in commerce, and would have to show that the term is distinctive and not merely generic or descriptive.  This would be a tall order, since "magic" is a dictionary term with a widely accepted meaning, not a fanciful term like "Linsanity".  A quick search shows there are at least six major Zoroastrian sects; there are probably numerous others (including sub-sects).  How can one of them claim to exclude all others from use of the term "magic"?  Even if trademark priority and exclusivity could somehow be established--and even if the term had been registered and previously afforded full legal protection--the term "magic" would be a clear case of genericide.

[mojobadshah]

Trademarks are not "permanent", and they do not rely on mere priority.  I'll limit my remarks to U.S. federally registered trademarks.  Trademarks and service marks, as defined in 15 U.S.C. § 1127, must identify and distinguish goods or services used in commerce from those manufactured, sold, or provided by others and to indicate the source of the goods or services.

To say that "Trademarks are not 'permanent'" sounds like somewhat of a deviation from the truth.  I understand that there are other factors involved in what constitutes the legal right to trademark a word or symbol, but in all my research and investigation this is the first time I've heard someone outright state that a "Trademark" is "not 'permanent'." 

Now, although I am inclined to the fact that there is such a thing as a "free good" I get that you are speaking in terms of "tangible goods," but...

1. Cultural traditions and religions are probably not goods or services used in commerce.
2. Even if they were, a person or collective attempting to register a mark that is purported to have originated 8,000 years ago would have difficulty establishing that they alone should be entitled to use of the mark, given the tendency of religions to branch into sects.  (What gives one sect more entitlement than another?)
3. Marks are invalidated by "genericide": when a term used as a mark becomes so commonly used that its primary meaning no longer identifies the product or service that claims the term, the mark is eroded or genericized and ceases to be enforceable.

...when it comes to the question of "services" is an "[8000 year old] education or technical know-how or performance or maybe even sermon" or "educational institution" not considered a "service" in terms of the law?

In regards to a "primary cultural heritage or [arguably] IP" verses "hybrids" why would any "government" be responsible for regulating this "IP" over any one of these "cultural communities"?  To provide you with an analogy: oil is not even a cultural heritage, but has been deregulated so why does the USPTO take precedence over these cultural communities?  Does the 5th Amendment not state that "private property shall not enter into the public" and does "heritage" not originate with "private community establishments?  For example did the English language not originate with the entire nation of England - the one that we American's are all mutually intelligible to?  It may also be worth asking whether most United States attorney's are inclined to the concept of "cultural heritage law" as established by international intergovernmental agencies such as UNESCO?

As applied to "Linsanity":
The goods/services sold in commerce which the protected mark identifies (according to its registration) are duffel bags, knapsacks, all purpose sport bags, backpacks, cups, mugs, aluminum water bottles sold empty, plastic water bottles sold empty, reusable stainless steel water bottles sold empty, t-shirts, sweatshirts, hooded sweatshirts, action figures, and basketballs.  The mark is registered to an identified person, Jeremy Lin.  There is no indication that "Linsanity" has taken on an expanded use such that its primary meaning is no longer the brand it identifies.  (E.g., we haven't started to call all knapsacks "linsanities".)

This of course is dependent on what "jurisdiction" you're goods are sold in, no?  For example, were you living in a soccer country, rather than a basketball country chances people would understand that products associated with the "mark" LINSANITY are different than products that are not associated with this mark in question, no?  So this further begs the question: why would "international jurisdiction" extend to LINSANITY products and not to products which originate beyond of the United States's national borders?  Does our "trade law" extend "internationally" or merely "locally"?

[mojobadshah]

As applied to "magic":
Any attempted registration would have to identify the good or service with which "magic" has allegedly become identified in commerce, and would have to show that the term is distinctive and not merely generic or descriptive.  This would be a tall order, since "magic" is a dictionary term with a widely accepted meaning, not a fanciful term like "Linsanity".  A quick search shows there are at least six major Zoroastrian sects; there are probably numerous others (including sub-sects).  How can one of them claim to exclude all others from use of the term "magic"?  Even if trademark priority and exclusivity could somehow be established--and even if the term had been registered and previously afforded full legal protection--the term "magic" would be a clear case of genericide.

As far as the example of the mark MAGIC is concerned specifically.  At present this is only a tall order because NONE of our "public" educational institutions have "appropriately" educated our students, and the result of this what I would call an extreme prejudice and malpractice is an extremely "culturally misinformed society."  You yourself mentioned that magic is a "dictionary" term, and if you read the dictionary every dictionary out there traces the term back to Persia and Zoroastrianism, although the term that is mostly used is Magus.  However, the only place my High School textbook brings up the word magic as far as the "origins of magic" is concerned is in relation to ancient Egypt, which is a seriously bad association, being that there is no mention of magic in connection with the ancient Persians, especially when every ancient Greco-Roman source does identify Persian culture as the source for not only our word but also expression Magic "the work of a priest or [in the pejorative] illusionism." But were you to look up the term Magus every scholarly source out there would indicate that Zoroastrianism and the Persian language is the source "cultural community establishment" of this term and was a loan into English.  Although you may only hear terms that I would "probably" be considered confusable with the mark MAGIC in Persian speaking "jurisdictions" such Maga, Mogh or Moghan or Majus, etc.... as far as academia is concerned this is a WELL-ESTABLISHED "recognition" even outside of Persian speaking "jurisdictions." So if the term magic has become "generic" why is this not the government's fault when "public education" is their domain?  In other words why is the government responsible for "miseducating" on culture?

Would it be legal for someone to trademark the words CATHOLIC CHURCH in a closed society where Catholicism has never been heard of before and use the mark to promote his service as an company that sells "tricks or toys?"

Would it be legal for someone to trademark the words KATHOLISCHE KIRCHE (Catholic Church in German) and use the mark to promote his service as an company that sells "tricks or toys" in the United States?

[Robert K S]

If you go to TESS and search "magic[FM]" (the "[FM]" meaning "full mark") you will see that there are dozens of live marks on the word "magic".  It's not as if the word isn't trademarkable per se.  It's just that the circumstances you describe--asking for the assignment of a commonplace word to belong solely to "Afghans" (the nationality? the ethnicity?) on the basis of etymology and without any underlying commercial consumer association--do not fulfill the purposes of trademarks.

One thing you may not understand is that the legal purpose of the trademark regime is not to monopolize the usage of words for those who claim priority on them.  It is to promote consumer association so as to build commerce.  If you're not selling something, you don't need, and won't get, a trademark.  And if you're selling something, you're not a religion, you're a business.

[Robert K S]

Another example is U.S. trademark No. 86,675,256, registered to two people from Alabama who are apparently selling bumper stickers, in the fashion of the popular "COEXIST" bumper sticker, except with Christian religious symbols and imagery arranged to spell out the word "Catholic".  These people have, in effect, received a registered trademark on the word "Catholic", or at least that particular fashion of spelling it out pictorially.  But it's not because they're assembling the faithful and holding mass.  It's because they're selling bumper stickers.

[mojobadshah]

If you go to TESS and search "magic[FM]" (the "[FM]" meaning "full mark") you will see that there are dozens of live marks on the word "magic".  It's not as if the word isn't trademarkable per se.

One thing you may not understand is that the legal purpose of the trademark regime is not to monopolize the usage of words for those who claim priority on them.  It is to promote consumer association so as to build commerce.  If you're not selling something, you don't need, and won't get, a trademark.  And if you're selling something, you're not a religion, you're a business.

There are roughly 25,000-50,000 trademarks that use this mark MAGIC in "commerce."  According to what I know the Court(s) is the "higher segment of language planning" and the trademark regime is about "monopolizing" language, and it is the "first usage" of a mark in "commerce" which generally determines "ownership" of a mark.  This is not to say that all the marks in the world are to be relegated to one "source" (not a monopoly in the extreme sense).  Here in the United States we have marks used in commerce which are of English language origin, Hebrew language origin, Chinese language origin, Celtic language origin, etc....  More to the point the mark MAGIC is only "commonplace" because the government which is responsible for endorsing "public school textbooks," textbooks which in turn inform "policy" really haven't done their "due diligence" when it comes to educating our students on the "authentic" and "genuine" source when it comes to the mark MAGIC.  As you pointed out and as I mentioned the term MAGIC appears in dictionaries, and all these dictionaries tie the mark MAGIC to the mark of Persian language origin MAGUS (not to mention the history shows that "MAGIC" exclusively identifies Persian sources).  Are we in agreement that were United States "public school systems" to "appropriately" educate students on the fact regarding the "authentic" and "true" or "etymological" origin of the term MAGIC - rightly appropriating it to Persian culture, rather than to Egyptian culture (as my textbook shows it does, erroneously) that analogous to "consumer recognition" of the Greek language origin term PHILOSOPHY that "consumer recognition" on our concept of MAGIC would "rightfully" identify the "source" of the term and mark MAGIC as culturally Persian in origin?  And that in the same way philosophy teachers would be wrong to credit the origin of the term PHILOSOPHY to any culture other than to "Greek culture" it would go against "political norms" for any teacher to credit the origin of the term MAGIC to any culture other than to "Persian culture"?  "Public schools" are responsible for generating "consumer recognition" too, right?  And what defies the logic to argue that what is being sold in this scenario is at the very least a an education on an ancient cultural tradition (leaving religion out of the picture) or "service" (if not a "free good" or the "wordmark" MAGIC in itself as an "advertising tool" - statutory limits and genericism aside)?

[mojobadshah]

It's just that the circumstances you describe--asking for the assignment of a commonplace word to belong solely to "Afghans" (the nationality? the ethnicity?) on the basis of etymology and without any underlying commercial consumer association--do not fulfill the purposes of trademarks.

In regards to this contention, I understand that "Congress shall not respect the institution of race, religion, or creed," but you're going to have to tell me [can you tell me] why "private property" does not pertain to for one: language or language-groups, national ancestry, or culture (separate from "race culture or philosophy," "religion," or "creed") because the way I understand the economy it's divided up into really 3 sectors: politics (government and political organizations), commerce, and non-commerce (eg. educational institutions and religious institutions) and "cultural heritage institutions or establishments" fall within the category or realm of "non-commerce" [charitable corporate organization] and are distinct from "religious organizations."  Any "for profit corporation" is considered a "commercial industry," but in order for them to exist they have no choice but to "use" or "utilize" cultural goods or (arguably) IP eg. wordmarks "the mechanism of of industry" according to US Law Code's definition, and 1 CEO or "owner" of a for profit corporation doesn't have the right to make use of an entire "private community" or "cultural" establishment's heritage (IP), especially not without obtaining permission first, nor do politicians either really, and religious establishments have already been granted their freedom to practice their religious beliefs within the privacy of their own establishments or "religious spaces" (not to mention they are tax exempt too; and additionally its already a question as far as history classes are concerned as to how "authentic" and "genuine" these religious establishments really are).  This being said, and on top of the fact that government run corporations can be deregulated such as the oil industry for example and when language is the resulting development of "private community establishments" (language groups or communities), and  the 5th Amendment explicitly implies that "private property shall not enter into the public" and the government falls into the category of "public spaces" what "premise" exactly is stopping the government from rightfully appropriating a "private community development" such as language to ITSELF, rather than to these "private language communities or registers" themselves?  There is no law that states that the USPTO takes precedence over "privately run establishments."  Trademarks and copy don't even have to be registered with the USPTO in order to prove "ownership."  "Ownership" of a mark is typically dependent on "first usage" in association with a "good or service."  And although it makes me WEARY to defend my point any further, there is no way that the mark or term MAGIC was first used in association with any commercial establishment in the United States before it was before the United States was even established, not to mention the USPTO, or am I completely LINSANE (in all seriousness)?

[MYK]

If you can tell me that the Afghans were marketing card games to the United States prior to 1789 under the brand name "Magic: The Gathering", then you can invalidate that trademark.  But that would require prior use IN COMMERCE within multiple states of the United States.

[mojobadshah]

Another example is U.S. trademark No. 86,675,256, registered to two people from Alabama who are apparently selling bumper stickers, in the fashion of the popular "COEXIST" bumper sticker, except with Christian religious symbols and imagery arranged to spell out the word "Catholic".  These people have, in effect, received a registered trademark on the word "Catholic", or at least that particular fashion of spelling it out pictorially.  But it's not because they're assembling the faithful and holding mass.  It's because they're selling bumper stickers.

I think I get what you're referring to [unless you can post a link that shows a representation of the mark CATHOLIC and not COEXIST using these pictograms), but I looked at that symbol and at first sight made no associations with "Catholicism."  I noticed the "cross," but thought "Christianity" rather than "Catholic Church."  I will give you this much, however, being that I am accustomed to "word origins or roots" I understand that "Catholic" means "universal."  But I question how many other "consumers" would "associate" or "recognize" this fact.  And in any case this example doesn't ~exactly answer the last 2 questions in my previous post.  It would be more relevant if you could show me an example of the mark CATHOLIC or a foreign language term arguably confusable  being used by an industry that is not using the mark to promote "Catholicism" and especially one that is not tied to the Catholic Church and on top of that one that throws people off of a "direct" connection to Catholicism Christianity.  You know, probably not the best example, but a hamburger joint or something of the like. Porno would probably be a better example. 

[mojobadshah]

If you can tell me that the Afghans were marketing card games to the United States prior to 1789 under the brand name "Magic: The Gathering", then you can invalidate that trademark.  But that would require prior use IN COMMERCE within multiple states of the United States.

Kindly see if you can answer my above question first on the mark CATHOLIC.

[Robert K S]

You seem to be starting from any number of false premises.

One of them may be the misconception that if a person makes up a new word, the person becomes an owner of that word, and can lawfully exclude others from using the word.  U.S. trademark law provides no such broad protections.

Another misconception may be that a thing allegedly "belonging" to the peoples of an entire nation (Afghanistan), is somehow "private" property.  Something belonging to everyone (or even a large subset of everyone) is the antithesis of private property.  It's the commons, aka public property.  Rights do not exist unless they can be enforced.  Who, among the "Afghans", would have enforcement rights under your theory?  What if one Afghan desires to exclude me from marketing my "magic" "religious" services, but another Afghan licenses exclusive rights to me?  Which Afghan(s) have standing to sue in enforcement of the alleged mark?

This is generally a place for discussing serious legal issues, but this discussion falls way, way outside the fringe, and you're going to have a hard time finding others to engage with if you're not making an effort to understand the legal regime, its purposes and implementations, as they actually exist rather than as you might desire them to exist.  Not to mention, this discussion is also posted in the wrong forum (copyrights instead of trademarks).

[mojobadshah]

You seem to be starting from any number of false premises.

One of them may be the misconception that if a person makes up a new word, the person becomes an owner of that word, and can lawfully exclude others from using the word.  U.S. trademark law provides no such broad protections.

Another misconception may be that a thing allegedly "belonging" to the peoples of an entire nation (Afghanistan), is somehow "private" property.  Something belonging to everyone (or even a large subset of everyone) is the antithesis of private property.  It's the commons, aka public property.  Rights do not exist unless they can be enforced.  Who, among the "Afghans", would have enforcement rights under your theory?  What if one Afghan desires to exclude me from marketing my "magic" "religious" services, but another Afghan licenses exclusive rights to me?  Which Afghan(s) have standing to sue in enforcement of the alleged mark?

This is generally a place for discussing serious legal issues, but this discussion falls way, way outside the fringe, and you're going to have a hard time finding others to engage with if you're not making an effort to understand the legal regime, its purposes and implementations, as they actually exist rather than as you might desire them to exist.  Not to mention, this discussion is also posted in the wrong forum (copyrights instead of trademarks).

Your right this is a trademark issue and not a copyright issue.  Initially I was exploring "Copyright of Character" which appears to be tied to trademark issues and ultimately found my way to "catch-phrase" trademarked expressions.  Kindly post this to the trademark forum if you could.  In any case.  The premise I'm working within is UN ICHC Article 2.1 and 2.2 <http://www.unesco.org/culture/ich/en/convention> which concerns Intangible Cultural Heritage (but really this is semantics and pertains to IP just as much as it does to ICH).   2. The "intangible cultural heritage", as defined in paragraph 1 above, is manifested inter alia in the following domains: (a) oral traditions and expressions, including language as a vehicle of the intangible cultural heritage; and furthermore WIPO specifically defines language as "words, expressions, and motifs."  United States is party to the UN ICHC and WIPO so does this mean that this question is on the "fringe" of trademark law? 

Who, among the "Afghans", would have enforcement rights under your theory?  What if one Afghan desires to exclude me from marketing my "magic" "religious" services, but another Afghan licenses exclusive rights to me?  Which Afghan(s) have standing to sue in enforcement of the alleged mark?

To begin with I can understand how this question is more appropriate for the forum on trademarks, but I kind of feel like you sidestepped a lot of my questions, which I'm not sure is very "fair."  To answer your question with a question: couldn't I ask the exact same question in relation to a trademark owner registered with the USPTO?  And why is it a "misconception" that a thing belonging to an entire nation (which has commercial establishments of its own) not be considered a "private property"?  Does the United States not do business in Afghanistan?  And if 1 person can own the right to a trademark like LINSANITY then why wouldn't an entire commercial establishment such as the nation of Afghanistan bear the exclusive right to the mark MAGIC which is "authentically" tied to that nation an commercial establishments "national intellectual heritage"?  And if I understand this post-colonialist IP regime of ours correctly it's only "copy" that generally falls into "public domain" and becomes the "commons" property, trademarks on the other hand can, potentially, be protected forever - or am I wrong? 

I guess another question that may be relevant to this argument concerns "Character of Copy" tied to trademarks of different names which have been associated with these trademarks through "secondary meaning."  The question therein being: when does a "Character of Copy" fall into the "public domain"?

[Robert T Nicholson]

To begin with I can understand how this question is more appropriate for the forum on trademarks, but I kind of feel like you sidestepped a lot of my questions, which I'm not sure is very "fair." 

I don't think Robert is sidestepping your issues.  He is trying to politely tell you that what you are proposing is based on fundamental misconceptions about IP law.

Many of your questions seem to start with "Why can't...  ?"

The general answer is very simple:  that's not the way the legal system works. 

[Robert K S]

Who, among the "Afghans", would have enforcement rights under your theory?  What if one Afghan desires to exclude me from marketing my "magic" "religious" services, but another Afghan licenses exclusive rights to me?  Which Afghan(s) have standing to sue in enforcement of the alleged mark?

Couldn't I ask the exact same question in relation to a trademark owner registered with the USPTO?

You could ask it, but the answer would be simple.  One person, by the name of Jeremy Lin, owns rights in the LINSANITY trademark (at least according to the record in the register), and he alone can bring actions to enforce those rights.  He doesn't need to contend with others who would purport to have equal say in those rights by virtue of common "cultural heritage" or whatever pseudo-legal malarky they might come up with.  Suppose he brings on a business partner and grants the partner rights in the trademark.  The partner's right to license will be governed by the agreement between Lin and partner, or, in the absence of applicable agreement provisions, default laws established by the courts.  Perhaps partner can license to others without Lin's consent, or perhaps he can't, but whatever the case, the legal regime can handle the problem.

On the other hand, between one Afghan and the next sharing common cultural heritage, there are no laws to govern what one can do without the other's consent, and thus even if the trademark were to exist and belong to all Afghans, it would have negligible practical value because any one of them could license it to a third party, and owing to the vast number of persons holding the purported trademark rights, each will have the incentive to undersell the others such that the price of the license goes to zero.  As soon as one of them licenses to a third party, the value of the mark is destroyed for all the rest.  So the regime you envision, where "Afghans" hold trademark rights, makes little practical sense.  A trademark is only worth something if a single person (natural or corporate), or a body of persons bound to each other in well-defined ways, hold the mark.

But wait, you say.  Even if all Afghans cannot jointly own a mark as individuals, they could form themselves into a body politic--a government--and consent to allow their head to administer the mark.  But can a government apply for a U.S. trademark?  At least with regard to official seals, the Federal Circuit answered that question in the negative in In re Houston (Fed. Cir. 2013), per the restriction in section 2(b) of the Lanham Act.

As this blog about the case aptly explains,

Trademark law, in addition to protecting valuable marks in commerce, is also concerned with protecting the public.  One of these protections is the idea that words and language should not be unnecessarily restricted via trademark registration, hence the doctrines of descriptive and generic terms not being protectable absent special circumstances.  At the same time, the government is the property of the people.  Our government exists to serve the people, not the other way around, a subject of much concern after the Framers' experience with the English monarchy.  Section 2(b), as written, clearly reflects the notion that government insignia belongs to the public and may not be restricted from the use of the public.  Such a protection shows foresight and wisdom.  It preserves the right of political commentary such as the use of insignia in political cartoons and satires.  It draws a clear line between for-profit commerce and a government that exists at the will and sufferance of its citizens.

This blog opines that, aside from the seals exception in the Houston case, "government entities have just as much right to own trademarks as does any private citizen".

I'm not aware of any U.S. trademarks applied for or assigned to foreign governments, but if you find one, let me know.