A Trademark Attorney’s Mission to find Discipline

Posted by | July 24, 2012 | General | No Comments

As a professional, I wear three different hats: Trademark Attorney, Sustainability Steward and Publisher. I often find myself wondering, will I ever have enough . . .

Merriam Webster defines discipline as:

No wonder so many people (myself included) have such a hard time with it . . . discipline feels like punishment cause it is. Just look it up and you’ll see that the top definition for discipline is punishment! That makes me feel better at least.

There are 15 PTO records comprised solely of the word DISCIPLINE. Ironically, there are only 2 LIVE PTO records comprised solely of the word DISCIPLINE. The other 13 applicants and registrants lacked the discipline to either see their applications through or to renew their registrations. Of the 2 LIVE PTO records, one is for a registered mark for DISCIPLINE for an agricultural chemical, namely pesticide and the other is for a pending application for DISCIPLINE for “providing a personal analysis of an individual’s inherent strengths over an interactive website on a global computer network.” Presuming that the Discipline tattoo does not relate to pesticide (just a guess!) then perhaps it relates to one of the previously registered DISCIPLINE marks. And the choices are:



Cancelled or Expired

Hair grooming aid



Skin care products



Electronic physical therapy apparatus






Musical performances by a rock group



Martial arts footwear



If you guessed the rock group, I’d say you’re right:

Under Section 906 of the Trademark Manual of Examining Procedure (TMEP):

The owner of a mark registered in the United States Patent and Trademark USPTO may give notice that the mark is registered by displaying with the mark . . . the letter R enclosed within a circle: ®.

The registration symbol should be used only on or in connection with the goods or services that are listed in the registration.

The federal registration symbol may not be used with marks that are not actually registered in the USPTO. Even if an application is pending, the registration symbol may not be used until the mark is registered.

The DISCIPLINE mark is no longer registered and even when it was that registration was for performances by a rock band, not for humans, which are the, um, goods to which the mark is affixed. Thus, this appears to be a classic case of trademark misuse. The question is to what effect (I surmise none) and more importantly, who’s gonna tell him? Not it!

Technically, the trademark registration symbol should be used only in connection with currently registered goods/services. Although misuse of the trademark registration symbol constitutes a trademark misuse, very rarely does it result in negative consequences.



About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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