Trade Mark Trumps

A defining feature of Donald Trump’s presidency has been the war on so called “fake news” (and, depending on your view point) whether this actually relates to fake news or simply news that Mr Trump disagrees with. One organisation in the USA which definitely falls in to the latter camp is the Florida Pro Chapter of the Society of Professional Journalists (SPJ), the oldest association of journalists in the USA.

SPJ has teamed up with a Canadian advertising agency, Wax Partnership, and taken a rather inventive approach to stopping Mr Trump from using the term: they have filed to protect it as a trade mark with the United States Patent and Trade Mark Office. Whilst an element of this decision is undoubtedly a publicity stunt designed to draw attention to the president’s behaviour, it does raise a number of interesting issues under international trade mark law.

Cease and Desist

Following on from the successful registration, SPJ has announced it is sending a number of so called “cease and desist” letters to the White House each time the president uses the term fake news. However, those hoping for a slight curtailment of the president’s usual activities are likely to be disappointed: the ultimate function of a trade mark is to identify the origin of goods and services and so it is likely that the registration will not be enforceable.

Indeed, one of the key people behind the move, Nick Asik, a creative director at Wax Partnership has admitted that the initiative is “satire with the main objective being to start a discussion about the misuse of the term ‘fake news.’”

Briffa comment

Whilst registering a trade mark as a means of political commentary is certainly a novel use of the system, ultimately the purpose of a trade mark is to allow consumers to distinguish the goods and services of one undertaking from another. It is likely that were Mr Trump to challenge the registration, it would be removed from the register as unenforceable.

This serves as a timely reminder that a trade mark should not be generic and should be capable of performing its function so as to be enforceable. We have discussed some of the other ways in which trade marks can be a valuable asset in the past: take a look at some of our previous blogs here.

At Briffa, the team benefits from over 25 years’ experience filing trade marks in in nearly every jurisdiction in the world and we have particular expertise in handling trade mark disputes before the UK and EU courts.

Written by Tom Synott, Solicitor