January 25th, 2008 by Thayer Preece
Outrage recently erupted among Second Life users, particularly those involved in the art scene, regarding the fact that artist Richard Minsky (Second Life’s ‘ArtWorld Market’) has registered the trademark “SLART” with the U.S. Patent and Trademark Office. (See Vint Falken and Massively, among others.)
Not only has Minsky registered the mark (for which a notice of allowance recently issued) but he has also allegedly been speaking with people who use the terms “SLART,” “slart,” and “SLart” to refer to art in Second Life in order to accuse them of trademark infringement and threaten them with legal action. Minsky is using the SLART trademark in-world and in connection with his magazine — a publication concerning virtual art, particularly art in Second Life. His trademark registration covers the publication of various types of works, art exhibitions, and educational programs concerning art.
Easy as Pie — The Basics of Trademarks
First, some basic background on trademark law. In a nutshell, trademarks exist to protect consumers from confusion. A trademark is granted so that a consumer may identify the source of the goods or services he is using, and can distinguish those goods or services from those of the maker’s competitors. As a result, trademark infringement occurs when someone uses another person’s trademark (or something confusingly similar) in commerce, in connection with an offering of goods or services, in a way that is likely to cause confusion as to the source of the goods or services being offered.
Only certain classes of words are entitled to trademark protection. The strongest marks are those which are arbitrary or fanciful — Apple as an arbitrary name for computers, or Kodak as a fanciful term for cameras, for example. The weakest marks are those that are descriptive of their goods — All Bran for cereal, or Quality Inn for hotels. These descriptive trademarks are only entitled to full protection once they have acquired secondary meaning — i.e., consumers hear the mark and associate it with one particular maker of that product. Generic terms are never entitled to trademark protection (e.g., you can’t trademark the word CHAIR or DESK for a chair or a desk).
From Art to Tarts — The Federal Registration of SLART
Based on the spectrum of trademark protection above, I can imagine what most people are thinking — “wait a minute, the term ‘SLart’ is generic! Or at the very least, descriptive, so how did it get registered?” Bloggers have claimed that the word SLart has been in common use to describe art in Second Life for quite some time. If this is the case, then most likely the term is generic, and should not be available to trademark. However, a search on Google for the term “SLart” does not actually reveal many generic uses of the word. There are many references on the web to Minsky’s SLArt publication, as well as a few uses by other Second Life users, but no great slew of common uses of the word to point to in support of a claim that the word is generic.
A much stronger case can be made that the term is descriptive. Given the subject matter of his publication, the term SLART obviously is derived from the common Second Life naming convention of appending “SL” to the beginning of a common word. Here, the result is a word meaning “Second Life Art.” And indeed, the main subject of Minsky’s publication appears to be art in Second Life; its tagline is “a critical review and journal of the arts in Second Life.”
The Lanham Act prohibits registration of a trademark that, “when used on or in connection with the goods of the applicant is merely descriptive … of them” Lanham Act, 15 U.S.C. § 1052(e)(1). Court decisions have further refined this rule to state that the mark does not need to describe all of the purposes or features of the goods or services. Rather, it is sufficient that the mark only describes one attribute of the goods in order to be found merely descriptive. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982).
I think it should be clear that a term meaning “Second Life Art” when used on a publication that is at least in part about art in Second Life, should be considered descriptive. So how, one might ask, did this mark get approved? After reviewing the prosecution history for the mark, it looks like the trademark examiner simply dropped the ball on this one.
For reference, the prosecution history of all recently filed trademarks are available on the USPTO online database at USPTO.gov, including the entire prosecution history of the SLART application.
When Minsky filed his application for SLART, the trademark examiner assigned to the case actually did issue a refusal based on descriptiveness. Minsky responded that his mark was not descriptive because common use of the term “SL Art” included a space. He also argued that the term SLART has other meanings, cited from urbandictionary.com, and largely involving combinations of the terms “slut, “tart,” and “fart,” and finally, that his publications are not restricted to Second Life, but address art from any virtual world.
Let’s examine each of Minsky’s arguments in turn.
First, the fact that common use of “SL Art” may contain a space does not change the fact that the title of his work has the meaning “Second Life Art,” which is descriptive of its content. In fact, Minsky separates the “SL” and “ART” elements of the mark on his web site by using different colors for each. He also has captioned his print volume of SLART, “The Second Life Art World.”
Second, other meanings of the word are unimportant, unless he is trying to argue that he named his magazine after “a fart emitted by a slut,” “a cross between a slut and a tart,” or other such colorful, and equally unrelated terms (taken from the Urban Dictionary and cited in Minsky’s Office Action Response at the USPTO). Considering the fact that his magazine states that the subject matter is art in Second Life, these definitions seem an implausible source of the title.
Third, and finally, with respect to the fact that his magazine covers other subjects, this is irrelevant, because the title still describes one attribute of his goods and services. Unfortunately, the examiner is not required to respond if he or she accepts the applicant’s arguments, and so we may never know which of these equally unpersuasive arguments won the day.
Commentary or Cupcakes — What Constitutes Infringing Use?
Right or wrong, the application for SLART was approved, and Minsky now holds a registered trademark for the word. But what does this mean, exactly? Ownership of a trademark gives the owner the right to prevent others from using that trademark (or confusingly similar marks) in commerce, in connection with goods and services, in a way that would cause a likelihood of confusion as to the source of the goods or services.
Before one condemns Minsky too quickly for his attempted enforcement of his trademark rights, it is important to realize that trademark rights only exist if the owner enforces them. If a trademark owner does not enforce the mark against infringing uses, the mark can become generic, and the owner will lose his rights (“aspirin” and “escalator” used to be trademarked terms, before they became generic). A trademark owner can also lose the ability to enforce his rights if he allows too many infringing uses to go unchecked. Therefore, if Minsky wants to keep the mark that he has registered, he has an obligation to enforce his rights against infringing uses.
From reading some background material on this matter, it appears as though Minsky has spoken to a number of people about ceasing their use of the term “SLart” and obtaining a license for the term from him. Uses that have been condemned by Minsky include the naming of an art exhibition “SLart at the Cannery,” use of the term in peoples’ profiles, and use of the word in tags on objects or pictures.
Let’s address the latter use first—use of the term “SLart” in profiles and tags. Chances are, these uses are not in commerce, and not used in connection with an offering of goods or services. As a result, these uses are most likely descriptive, and not trademark use. If someone has written in their profile “my hobbies include SLart,” or has labeled a picture in their personal photo album “SLart show,” then Minsky will have a hard time proving that this use constitutes infringing trademark use. These people are not using the term in connection with goods and services, they are more akin to personal commentary. The owners of “SLart at the Cannery,” however, are probably not as safe. In that situation, the term “SLart” is being used to promote a service—namely, an art show, and a service does not necessarily have to charge admission in order to be used in commerce.
Another point that is important to note is that any use of the term “SLart” that began before Minsky filed his trademark application, or claimed first use of the mark, is not infringing. Under U.S. law, the first person to use a trademark has priority. Therefore, even if a use would otherwise be infringing, if it began prior to the time that Minsky had any right to the term, it would not infringe his trademark rights. He cannot claim rights going back to a time before he used or applied for the trademark. In this case, he has claimed a first use date of December 9, 2006.
Finally, Minsky can only claim rights to the trademark on the goods that he has claimed in his trademark application, or goods that are so related to those that confusion as to the source of the goods is likely to result. Therefore, while using SLART on a magazine, or an art exhibit would likely be considered infringing, using the same mark on a cupcake or a pair of shoes would probably not (note that owners of truly famous marks, such as Pepsi or Nike, can prevent use of their marks on unrelated goods under the law of trademark dilution).
Claiming a Piece of the Cake — A SLart User’s Options
For those who have heard from Minsky about an allegedly infringing use of his mark, or for those who are afraid that they might in the future, the question on their minds is probably, “what can I do?” In terms of specifics, you should seek the advice of a trademark attorney regarding your particular situation. In general, however, there is a choice to be made between our two most primal instincts — fight or flight, and both options have pros and cons.
Obviously, the easiest course of action may be to comply with his demands, whether reasonable or not. This way, you avoid any chance that he might sue you or take action against your account with Linden Lab. If you take this route, however, you may be giving up rights that you actually have, as well as strengthening his mark. This is the safer path, the one that’s probably the least hassle, but not necessarily the most satisfying one.
The other option is to fight. This could be as simple as refusing to cease use of the mark. In this case, it puts the burden on him to take action. If the alleged infringer refuses to stop using the mark, Minsky has to either take legal action, or allow the use to continue. Filing and pursuing a complaint in federal court is expensive and time-consuming. Of course, this is no assurance that he won’t do it. And defending against a federal complaint is also expensive and time-consuming. Probably the more pressing concern for those who are using the term inside Second Life, is that he will complain to Linden Lab that his trademark is being infringed, and ask that they suspend or delete the accounts of the alleged infringers. Although many feel Linden Lab’s enforcement of its trademark policy has been hit and miss, this is likely a real concern for those who are using the term within Second Life.
For those who are more proactive, waiting to be sued is not the only option. A person who would be injured by the enforcement of a registered trademark may petition the USPTO to cancel the mark, if they can prove that it was registered improperly — in this case, because the mark is descriptive and therefore should not have been registered. Although this route is less expensive than a full blown federal lawsuit, it still can be very expensive and time-consuming, as it basically amounts to a mini-lawsuit.
Another possibility is that Linden Lab might have some interest in objecting to Minsky’s registration of the SLART trademark. After all, the mark includes an abbreviation of “Second Life” — a registered trademark of Linden Lab. The Second Life trademark is also used profusely throughout the SLART websites and magazine, even appearing in the websites and magazine’s subtitle. Although Linden Lab has allowed the use of the term in-world and on websites in the past, any use must be consistent with Linden Lab’s trademark policy and, when requested and agreed to, license. Notably, the sample license prohibits use “in a manner that infringes, derogates, dilutes, or impairs the rights of Linden Research in the its marks.” It also requires that licensees agree to the following:
You acknowledge that Linden Research is the owner of all of the Linden Research Marks and warrant that you will not take any action which is inconsistent with Linden Research’s ownership thereof.
Compared to most Second Life users, Linden Lab is, obviously, more likely to have the resources to fully prosecute a legal action in this matter.
A Bitter Dessert — Conclusions
In the end, this is a bad situation for people in the Second Life art community. Although the SLART trademark probably shouldn’t have been registered in the first place, it has been, and now people are faced with a choice of either losing the use of the word, or opening themselves up to potential lawsuits and account suspensions. Of course, as a trademark lawyer and video game enthusiast, I would be very interested to see this issue go to court. But keeping me entertained probably shouldn’t be your primary concern if faced with this issue. If you are, and you have the resources, I would strongly suggest that you consult with a trademark attorney about your rights and options.
Finally, as a lawyer, I must emphasize that point: the comments above are my opinion only, and not meant to be construed as legal advice. If you have been approached by or think you have a claim against Richard Minsky regarding his trademarking of the term “SLART,” or any other related matter, please consult with a trademark attorney regarding the specifics of your situation.
Thayer Preece is a San Francisco Bay Area attorney specializing in trademark and copyright law, particularly as applied to the internet. Thayer is also an avid gamer and World of Warcraft addict. In her limited spare time, she also bakes copious amounts of cupcakes and posts pictures of them on her blog, ilikecake.org.
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