South Carolina Intellectual Property Litigation

Intellectual Property & Litigation SC

Startup Branding – Naming Your Product or Business – The “Trademark Spectrum”

Posted in General, Presumptions, Startup Businesses, Trademarks

We should all have a sincere interest in encouraging and assisting startup businesses, particularly those in our local areas. Startup owners are excited, creative, and many times provide useful services, products, and eventually (hopefully) create new jobs. All too often, however, by the time we speak with a startup about Intellectual Property opportunities, they have already picked a product or a business name or brand that is not registrable on the Principal Register as a trademark or servicemark because it is descriptive.

Accept This as Fact … 😉

For purposes of this blog post, take my word for it that the benefits of federal trademark registration are considerable. Ok, if you do not want to take my word for it, read here, here and here. Now that you are convinced beyond-any-reasonable-doubt that trademark registration (federal or state) is worthy of consideration for your startup or existing business, let’s look at the the four most likely landing spots (excluding generic) on the Trademark Spectrum of 5 categories for the name or brand you may be considering.

The “Trademark Spectrum”

Below are the five categories of trademarks as identified by the U.S. Patent and Trademark Office (“PTO”):

  1. Generice.g., Kleenex, Coke, BUNDT for cakes, but maybe not yet for Google or XEROX in U.S., or XEROX (overseas). Here is a list of 41 alleged generic terms to help you better understand this category. There is likely legitimate disagreement as to whether or not all 41 of these are generic. Also, as noted above, it is unlikely that a new mark will be generic.
  2. Descriptivee.g., Columbia Automotive, West Richmond Plumbing, or even Kiawah Island – Some “descriptive” marks can go on the “Supplemental Register,” and await transfer to the “Principal Register,” after 5 years. One way to register a descriptive name is to seek a more limited registration in a stylized / design mark, as was done by Kiawah Island with its scripted font registration, or to seek registration of a descriptive name as part of a logo, as could be done for this mark.
  3. Suggestive – this is generally considered to be the best type of trademark to select – e.g., SPEEDI BAKE for “frozen dough,” or NOBURST for “antifreeze,” or see here for a discussion about suggestive marks.
  4. Fancifule.g., XEROX or PEPSI before they became synonymous with the products they identified and, arguably, started becoming “generic” via genericide.
  5. Arbitrarye.g., XYZ Plumbing. The PTO defines an arbitrary mark as “a known word used in an unexpected or uncommon way.”

Much of the above comes straight from the horse’s mouth, i.e., The PTO’s “Distinctiveness/Descriptiveness Continuum,” Section 1209.01 of the the Trademark Manual of Examining Procedure (“TMEP”). This is the Manual that the Examiners use at the PTO in evaluating federal trademark applications.

Click here for another blogger’s perspective on the five trademark categories.

Goods and Services

The goods and services associated with the mark are what make a mark descriptive. For example, Bass is not descriptive for an English Ale, e.g.,

Bass Logo

but it could be for a fishing related product, such as a BIG MOUTH BILLY BASS. On a historical note, The Trademark Blog reports that the Bass mark for English Ale has been in use since the 1600’s and was the first ever registered mark in England. The triangle-and-script logo above is an example of a stylized / design mark, actually a composite of sorts since it also includes the word mark, BASS, referred to as the Literal Element on the PTO application.

So What Should You Do (or not do) in Deciding Upon a Name

This list below of four suggestions is by no means exhaustive, but should be good to get you started:

ONE: At a minimum, do a search for the name you are considering. Use Google, Bing or Yahoo, or all three. Also search the TESS database at the PTO.

Don’t pick a name without doing some form of a search, the more comprehensive, the better. You may regret not searching and it may be very costly, even fatal to your startup or business.

TWO: Spend time trying to come up with a catchy / suggestive name if you can. Talk to friends, see what similar businesses have done. Also seriously consider engaging an advertising or marketing firm to help you in selecting a name and / or logo for your business. This logo is something you should hope to use for the life of your business.

When Google introduced its new logo recently, did you (like me) have trouble finding the Google app button on your smartphone because you were still looking for the old blue button with the lower-case “g” on it? The value of consistent use of a logo should not be overlooked.

Don’t select a descriptive name unless it is part of an informed strategy to do so. One arguable benefit of a descriptive name is you are unlikely to be sued for trademark infringement, but that is not guaranteed. Some experts have predicted a possibly bright future for descriptive marks.

THREE: Plan for trademark registration to protect your brand and build value in the future of your business. This can involve many aspects of branding, including company names, product names, product tag lines, sales phrases, stylized logos, composite logos, etc., etc.

Don’t ignore (or continue to ignore) the benefits of trademark or servicemark registration. It is difficult to imagine a company or business that would not benefit in some way by employing an informed trademark portfolio development strategy.

FOUR: Once you think you have educated yourself on these issues, talk to an experienced trademark attorney about your options. If the startup has limited funds, you will want to know which trademark / servicemark filings need to be prioritized and be ready to budget for same in your search for capital. For some business models, the trademark is possibly the most valuable asset from the outset, and should not be overlooked.

Similarly, if you insist or cannot escape your commitment to a descriptive name, getting it on the Supplemental Register sooner is better than later and will start the clock running on the five-year secondary meaning presumption to move the mark to the Principal Register.

Trademark law can be very complex and is usually (almost always) filled with irony. For example, consider an excessively eager party with an unregistered trademark / brand that sends a nasty cease-and-desist to another party only to discover the recipient of the nastygram is the senior user of the mark! Then the supposed senior user learns in discovery that their mark was not used for 2 or 3 years and may now be considered abandoned, making the sender the senior user?

Don’t Overlook Trademark / Servicemark OPPORTUNITIES

Amongst the primary Intellectual Property fields of patents, copyrights, and trade secrets, trademarks are often overlooked as simply the name for a business. Overlooking this opportunity to brand your business or product is often costly in terms of value when it comes time to sell the business, or in lost resources when time must be spent responding to infringement allegations.

Whether your business is a startup or has been around for generations, you want to be able to avoid or overcome problems related to use of a descriptive name. If possible, doing that from the outset is likely best. In any event, don’t let becoming informed about your trademark options be a missed opportunity for your startup.


Defamation of Character Damages – Can You Recover Without Evidence of Actual Damages?

Posted in Common Law, Damages, Defamation, Libel, Presumptions, Slander

This post addresses a unique aspect of defamation law, specifically how a plaintiff whose character or reputation has been defamed can recover damages without proof of actual damage to his or her reputation.


As a father of three sons, I always got tickled by the Hyundai Sonata commercial depicted above, although I’d bet my former next door neighbors appreciate it even more than me. You may recall the very patient neighbor finally suggests to the inquisitive little boy, “Why don’t you go ask YOUR Dad? (click link for commercial). Humans have an instinctual need to understand things, particularly things that seem counter-intuitive or are exceptions to general rules. As lawyers, this instinct is heightened to say the least.

As noted by Aaron Hall in this blog post, Minnesota’s defamation law provides, “Defamation affecting the plaintiff in his business, trade, profession, office or calling are defamatory per se and thus actionable without any proof of actual damages.” Most other state’s common law of defamation provides similar presumed damages recoveries for a defamation per se, as opposed to a defamation per quod. However, as noted in this blog post by Dancing with Lawyers, not all state laws provide for a presumption of damages when the statement is a defamation per se.

Defamation, Two Types: Libel or Slander:

As stated by the Court of Appeals in Parrish v. Allison, the difference between libel and slander can be described as follows:

Defamatory communications take two forms: libel and slander. Libel is the publication of defamatory material by written or printed words, by its embodiment in physical form or by any other form of communication that has the potentially harmful qualities characteristic of written or printed word. Slander is a spoken defamation. (Parrish v Allison from 2007 is reported here).

It should also be noted that the various state laws or rules may be applied differently for slander (spoken words that damage) and libel (written words that cause damage to reputation). Generally speaking, because the written words are with us longer, the law provides greater protection for victims of libel.

Defamation Per Se /or/ Per Quod – What is the Difference?

The distinction is that the defamation per se is defamatory standing alone. For example, the newspaper falsely reports, “Dr. Jim Jones got sued over a dozen times and lost his medical license in Missouri before coming here to practice.” Whereas, a defamation per quod requires the reader or hearer to associate other evidence to the statement to make it defamatory. For example, a news article or a FaceBook / social media posts suggests that an orthopaedic doctor in Town X was reportedly intoxicated when he was called off the golf course last Saturday to perform an emergency surgery, but does not name the doctor. As it turns out, there are only two orthopaedists in small Town X, the other is a female in a wheelchair (who does not play golf), and the only golf course in town is a male only club.

Because the reader must associate other evidence, namely knowing that there are only two orthopaedists in Town X, etc., the reader then associates the male orthopaedic doctor with performing a medical operation while intoxicated, does not immediately discuss it with anyone, but in the future refuses for anyone in her family to see anyone in the local orthopaedic practice, instead leaving town for such services, and in the future repeats the story she heard numerous times in private when the subject of a broken arm or leg comes up in the community. Because the court may classify the story about the male intoxicated golfing orthopaedic doctor as a defamation per quod, to recover for defamation, he would have to, for example, find a witness to testify about how his reputation or character was diminished in the community because of that publication / FaceBook post.

Case Law Explaining the Difference Between Defamation Per Se and Per Quod:

In South Carolina, the law regarding a defamation per se and presumed damages is stated as follows:

Under the common law, “[l]ibel is actionable per se if it involves written or printed words which tend to degrade a person, that is, to reduce his character or reputation in the estimation of his friends or acquaintances, or the public, or to disgrace him, or to render him odious, contemptible, or ridiculous. (Erickson v Jones Street from 2006 is reported here).

In contrast, South Carolina courts have described a defamation per quod as follows:

If the defamatory meaning is not clear unless the hearer knows the facts or circumstances not contained in the statement itself, then the statement is defamatory per quod. In cases involving defamation per quod, the plaintiff must introduce facts extrinsic to the statement itself in order to prove a defamatory meaning. (Parrish v Allison from 2007 is reported here).

Another way to describe it is like this, in a defamation per se, the plaintiff need only introduce the news article itself, in the defamation per quod, the plaintiff needs the witness / reader of the statement to explain why she knew the article was referring to that particular orthopaedic male doctor. This same witness could then testify that reading the statement damaged the character or reputation of the plaintiff male golfing orthopaedic doctor.

So What to Make of All this Latin Per Se / Per Quod Jargon?:

The role of the lawyer / advocate is to convince the jury and the court that the offending statement is defamation per se (if you represent the plaintiff), or defamation per quod (if you represent the defendant). If the defendant’s counsel fails to convince the jury that the statement is a defamation per quod, their next step is to attack the rebuttable presumption of damages, defend on grounds that the statement is truthful, or that an absolute or qualified privilege applies.

However, some of us must still ask, “why allow a plaintiff to recover without proof of actual damages?”

It is the embodiment of policy developed over years and years of refinement of the common law. The premise behind that policy is that “one’s reputation is invaluable.” It is also very likely a by-product of the U.S. Constitutional prohibition against a prior restraint of speech. Unlike folks in the United Kingdom who can get what this author considers to be somewhat ridiculous and impractical SuperInjunctions where the court order the press (yes, all of the press) not to report on certain private affairs (i.e., mostly soccer player’s illicit affairs), in the U.S., the constitutional right to free speech necessarily allows you to defame another person, but not without consequences!

The Right to Make the Statement, the Right to Bring the Lawsuit:

If you live in the U.S., you have a right to defame another person, however, the law provides that they can bring an action against you for the defamatory statements and recover. The victim of the defamatory statements does not have to wait around until their reputation is completely ruined, and their business lost, to bring an action. This is in part because, as a general rule, they cannot seek an injunction to stop you from saying or writing things about you, and also supported by the fact that a plaintiff cannot always know, and may never know, who shunned him or her because of what they heard or said from another source.

Defamation Per Se Damages:

The damages recoverable may vary from state to state, or at least the way in which they are described may vary. Some states use the three categories: (i) nominal damages: (ii) actual damages; and (iii) punitive damages. If you are defamed, depending on the character of the comments and the ill will or motivation attributed to the speaker or writer, you may be able to recover nominal damages and punitive damages without evidence of actual harm to your reputation.

In South Carolina, the defamation damages categories are often described by the following three categories: (i) general damages, (ii) special damages and (iii) punitive damages. These general damages in South Carolina represent the presumed category of damages described above and include such things as “injury to reputation, mental suffering, hurt feelings, and other similar types of injuries which are incapable of definite monetary valuation.” Special damages under South Carolina law include “tangible losses or injury to the plaintiff’s property, business, occupation or profession, which are capable of being assessed and which result from injury to the plaintiff’s reputation.” Punitive damages are also recoverable in South Carolina if the plaintiff can show by clear-and-convincing evidence that the nature of the statement is necessary to warn others from committing similar offenses in the future.

Wrap Up:

This brief review of some of the principles in play when there is concern that a statement may be damaging to someone’s reputation, and therefore be actionable, illustrate the complexities that can be involved in a defamation lawsuit. Also, the statute of limitations in defamation cases can be as short as two years, not three years as in most other claims.

If you are involved in a dispute regarding allegations of defamation, either as a potential plaintiff whose character or reputation has been damaged or as a defendant, you should seek counsel that is experienced in handling these types of cases in the state in which the action will be brought, understands these distinctions, why they exist, and how to use them in your case.