The Drug Lord and the Trademark

February 1, 2016 at 5:33 PM Leave a comment

The recent detention of the notorious criminal Joaquín Guzmán Loera, also known as “el Chapo”[1] Guzmán has called the attention of all Mexican media. The whole case is surrounded by hard to believe facts, some of them even surrealistic: the evasion from one of Mexico’s top security jails using a mile long tunnel, Sean Penn’s so called interview at one of the drugs kingpin’s hideouts when he was still in the run, the bizarre relation of Guzmán with the soap opera’s actress Kate del Castillo and the possible extradition of the criminal to the USA are just a few of the topics around this event.

One of the topics around Joaquín “Chapo” Guzmán that has deserved a place in the recent news relates to trademarks. The press informed that there were attempts to register different versions of the name and nickname of Joaquín Guzmán Loera as a trademark. The applicants were Alejandrina Gisselle Guzmán Salazar (marks “JOAQUÍN EL CHAPO GUZMÁN” and “EL CHAPO GUZMÁN”), Emma Coronel Aispuro (mark “JOAQUÍN ARCHIVALDO GUZMÁN LOERA EL CHAPO GUZMÁN”) and María Alejandrina Salazar Hernández (marks “EL CHAPITO” y “EL CHAPITO GUZMÁN”).

María Alejandrina Salazar Hernández (María Salazar) was the Drug Lord’s first wife[2], Emma Coronel Aispuro (Emma Coronel) is the current wife of Guzmán[3] and some say that Alejandrina Gisselle Guzmán (Alejandrina Guzmán) is the daughter of Guzmán Loera[4].

I do not know if any of the applicants were following Guzman’s instructions, but it is important to highlight that no application was filed by Joaquín Guzmán Loera or on his behalf, as some media has incorrectly stated.

On September 24, 2010 Alejandrina Guzmán and María Salzar filed trademark applications for different marks. Alejandrina Salzar applied for the registration of the marks “EL CHAPO”, “JOAQUÍN EL CHAPO GUZMÁN” and “EL CHAPO GUZMÁN” and María Salazar filed for the marks “EL CHAPITO”, “EL CHAPITO GUZMÁN” and “DON CHAPO GUZMÁN”[5]

Alejandrina Guzmán’s trademark applications for “EL CHAPO GUZMÁN” covered products of International Classes 14 (jewelry and watches)[6], 18 (articles made of fur, leather and leather imitation), 25 (clothing, footwear and headgear), 28 (toys and sports articles) and services of International Class 35 (advertising and business direction). The applications for “EL CHAPO” referred to goods and services of International Classes 14, 18, 28 and 35. The applications for “JOAQUÍN EL CHAPO GUZMÁN” were filed in International Classes 14, 18 and 25.

María Salazar filed applications for “EL CHAPITO” and “EL CHAPITO GUZMÁN” in International Classes 14, 18, 25 and 35. She also filed an application for “DON CHAPO GUZMÁN” in International Class 33 to identify alcoholic beverages except beer.

On August 2011, the “Instituto Mexicano de la Propiedad Industrial” or Mexican Patent and Trademark Office (MPTO) issued the final refusal to all trademark applications that María Salazar filed (“EL CHAPITO”, “EL CHAPITO GUZMÁN” and “DON CHAPO GUZMÁN”).

As for the filings of Alejandrina Guzmán, the MPTO approved the four applications for “EL CHAPO” (trademark registrations 1205096, 1205097, 120509 y 1219281) and rejected the applications for “JOAQUÍN EL CHAPO GUZMÁN”.

The decisions regarding the rejections of the trademark applications for “EL CHAPITO GUZMÁN”, “DON CHAPO GUZMÁN”, “JOAQUÍN EL CHAPO GUZMÁN” and “EL CHAPO GUZMÁN” basically state that the aforementioned marks are expressions used to identify an individual that, back then, was wanted by federal authorities in connection with several felonies, thus they were against morale and good uses and non-registrable, as provided by section 4 of the Industrial Property Law[7].

A few years later, on October 2014, Emma Coronel (current wife of Guzmán) filed trademark applications in Classes 9, (electronics, software and computers), 16 (printed materials, stationary), 25 and 41 (education and entertaining) for “JOAQUÍN ARCHIVALDO GUZMÁN LOERA EL CHAPO GUZMÁN”.

On April 2015, the MPTO objected the trademark applications stating, on one hand, that the law prohibits registering the names or aliases of actual people without authorization; on the other hand, the examiner stated that the name of an individual that was being prosecuted could not be registered as a trademark because it was against moral and good uses. Emma Coronel did not answer the office actions and the applications became abandoned.

I do not want to discuss here what are good uses and what is moral or immoral. Some conducts that may be immoral or unbearable for some people are completely justifiable for others. Even in the case of individuals that the State itself may consider as enemies, the conflict may have many different reasons and there can be disagreement about the morality of their actions, even inside the same community. Nevertheless, I think the decisions of the MPTO to reject the trademark applications for the name and pseudonyms of the leader of one of the largest criminal organizations in Mexico were reasonable. The trademark system is no intended to protect the name of a felon that is responsible, directly or indirectly, for the suffering, torture and death of thousands in Mexico, including several actual journalists.

Then, why the MPTO issued to Alejandrina Guzmán trademark registrations for “EL CHAPO” in four different classes of goods and services and at the same time rejected the trademark applications for “EL CHAPITO” filed by María Salazar?

As I stated before, in some regions of Mexico the word “chapo” is used to designate short people, without making any reference to illegal activities. I remember the skillful Mexican midfielder Luis Montes (currently playing for Leon in the Mexican First Division), who is called “Chapo” or “Chapito”, and his nickname has never been linked or construed as an evocation to Joaquin Guzmán Loera.

If “chapo” is a nickname without negative connotations widely used in Mexico, my guess is that the examiner thought he did not have solid grounds to state that “chapo” is a word intrinsically immoral or against good uses, so his only option was approving the registration of “EL CHAPO” filed by Guzmán Salazar.

Further, there are several trademark registrations owned by other people that involve the mark “EL CHAPO” to distinguish different goods and services.

The MPTO issued several registrations for “EL CHAPO DE SINALOA” (translated as “The Chapo from Sinaloa”) in the name of Ernesto Pérez Zagaste. Apparently, Mr. Pérez is a singer of one kind of Mexican folk music called “banda” that uses “EL CHAPO DE SINALOA” as artistic name.

Mr. Pérez claims in his website that he was born at the county of Badiraguato, in the Mexican state of Sinaloa; the Drug Lord Joaquin “Chapo” Guzmán is also from Badiraguato, Sinaloa.

Mr. Ernesto Pérez also owns Mexican trademark registrations numbers 1,116,647 and 1,131,017 for the mark “EL CHAPO”. The MPTO issued the registrations in 2009 to identify Class 09 goods (cds, dvs, software, lenses and computer equipment are classified in Class 09) and Class 41 services.

Another individual, María de los Ángeles Moreno Rodríguez registered the trademark “EL CHAPO” to identify clothing, shoeware and headgear (trademark registration number 948,388) since August 2006. Ms. Rodriguez filed a trademark application (serial 796,602) on July 2006 for the mark “LOS ZETAS” also in Class 25. “Los Zetas” is the name of one of the most violent criminal organizations in Mexico. The examiner objected the application for “LOS ZETAS” on grounds of the statutory prohibition provided in section 4 of the Industrial Property Law, the applicant did not answer and the application became abandoned.

The MPTO did not refuse the applications for “EL CHAPITO” that Ms. Maria Salazar filed, on grounds of defense of morality or good uses. The reason was that “EL CHAPITO” was confusingly similar the earlier filed trademark “EL CHAPO” by Alejandrina Guzmán to cover the same products and services in Classes 14, 18, 28 and 35 and confusingly similar to the senior trademark registration of Ms. Moreno “EL CHAPO” in Class 25.

I do not know why María Salazar filed for “EL CHAPITO” and Alejandrina Guzmán for “EL CHAPO”, but the fact was that Alejandrina Guzman filed first (just for a few minutes, but first), thus her applications anticipated the trademark applications for “EL CHAPITO” and were the cause of the rejections. If the applications for “EL CHAPITO” and “EL CHAPO” would have been filed in the name of the same person, the chances of obtaining the registrations for “EL CHAPITO” would have been better, at least in Classes 14, 18, 28 and 35.

Meanwhile, a collateral victim of all the noise around the trademarks of “El Chapo” could be Luis “el Chapo” Montes who, in order to avoid misunderstandings or inconvenient associations, could ask the fans and the press to stop using the nickname “Chapo” or “Chapito” when speaking or writing about him. Would he like to be called Luis “Shorty” Montes?

[1] One of the most important and authoritative dictionaries in the Spanish-speaking world is the one that the Real Academia Española (based in Spain) publishes. The dictionary of the Real Academia defines “chapo” as “substantive male and female, colloquial in Mexico. Person of short height”. The original entry is: chapo, pa 1. m. y f. coloq. Méx. Persona de baja estatura. Real Academia Española [Online edition] Date of review: January 14, 2016.

[2] “Las Mujeres del ‘Chapo’ Guzmán” at Zócalo Saltillo, June 24, 2012 [Online edition] Date of review: January 28, 2016.

[3] “Emma Coronel Aispuro es la esposa de Joaquín ‘El Chapo’ Guzmán”, at People en español, January 13, 2016 [Online edition] Date of review: January 14, 2016.

[4] “‘El Chapo’ Guzmán trató de registrar su nombre como marca” at Excélsior, January 12, 2016 [Online edition] Date of review: January 14, 2016.

[5] It is likely that María Salazar and Alejandrina Guzmán were coordinated. They filed the applications on the same date just a few minutes apart and hired the same attorney.

[6] The goods and services listed in this article are just examples of the products and services described in the applications, not the actual descriptions.

[7] Section 4 of the Industrial Property Law states as follows: Section 4.-  No patent, registration or authorization shall be issued, and no action or right shall be published in the Official Gazette, when their content or form are against public order, morale or good uses or any legal provision.

Entry filed under: Trademark law. Tags: , , , , , , , , , , , .

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