Archives: Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

The Washington Redskins trademark controversy is far from over. Despite the fact that certain news and sports commentators and mainstream newspapers and organizations have announced that they will no longer use the term “Redskins” when reporting on the National League football team, and the fact that a variety of public figures, including President Obama, have expressed an opinion that the name should be changed, team owner Dan Snyder continues to steadfastly defend the name as expressing only “honor and respect” and state that he has no intention of ever changing it. In support of that promise, the team has appealed the cancellation of its US trademark registrations by the US Trademark Trial and Appeal Board which held in a split 2-1 decision that the REDSKINS trademark was disparaging to Native Americans and, therefore, no longer eligible for continued registration. Continue Reading Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act

Written By: Susan Neuberger Weller

A three-judge panel of the US Trademark Trial and Appeal Board (TTAB), for the second time and in a 2-1 decision, has held that the REDSKINS trademark used in connection with professional football and related services by the Washington Redskins National Football League team was disparaging to a substantial composite of Native Americans between 1967-1990, the time during which the registrations issued. It also held that the defense of laches did not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs comprise one or more members. Accordingly, it ordered the registrations at issue canceled as violations of Section 2(a) of the Trademark Act. The cancellation of the registrations has no effect on the team’s ability to continue to use the REDSKINS marks.

Continue Reading “REDSKINS” US Trademark Registrations are Canceled for Disparaging Native Americans

Written by: Susan Neuberger Weller

For many years now, the US Trademark Office has accepted trademark applications based upon a “bona fide intent to use” the applied-for mark on all the goods and/or to provide all of the services listed in the application at the time of filing.  Unlike in many other countries, a US application based on “intent to use” will not mature to registration until proof of use of the mark on all the goods and to provide all the services in the application has been filed with and accepted by the Trademark Office. The legislative history behind these statutory requirements makes clear that Congress wanted to prevent the warehousing of marks that no one had any real plans to use.

When an application is filed, the applicant must have an authorized representative sign, under penalty of criminal perjury, a declaration attesting to the fact that it has a “bona fide” intent to use the mark. The Trademark Office does not require proof of this intent at any point during the prosecution of the application. However, an application can be opposed by a third party with standing to do so on grounds that there was no “bona fide” intent to use the mark at the time the application was filed, rendering the application void. This is precisely what PRL USA Holdings, owner of the RALPH LAUREN POLO marks, did successfully in opposing two applications owned by Rich C. Young to register marks which PRL believed were confusingly similar to marks the company owned.

In these non-precedential opinions, the Trademark Trial and Appeal Board made clear that the “bona fide intent” required under the Trademark Act “must reflect an intention that is firm, though it may be contingent on the outcome of an event (that is, market research or product testing).”  Citing to prior case law, Section 45 of the Trademark Act, and the Senate Judiciary Committee Report for the relevant statutory provisions, the Board stated that there must be an intention to use the mark “in the ordinary course of trade” and not “merely to reserve a right in the mark.” Such an objective determination to be is made based upon all of the circumstances of each individual case.

The Board stated that one way of proving a lack of a bona fide intent is to demonstrate that an applicant has no documentary evidence, such as business plans, marketing or promotional activities, or evidence of discussions with manufacturers or licensees, to substantiate its allegations of intent.  Applicant Young’s responded to PRL’s discovery requests for evidence of activities involving the mark, that he was “in an intention to use status,” “did not have any business planning yet,” and  “did not have business activities yet.” In noting that it had “repeatedly found a lack of bona fide intent to use a mark by individuals who lack the demonstrated capacity to produce the goods identified in the application,” the Board held that the evidence in the cases demonstrated that Applicant only intended to “reserve a right in the mark” in case it was later approved for registration by the Trademark Office and that Applicant Young would only “at some unspecified future time begin developing a business.” Thus, PRL’s oppositions were sustained and both applications were refused registration.

So what is the take away here? First, coming up with a clever mark for a product or service that does not yet exist in any form other than in the imagination of an individual is not a proper candidate for an intent to use application. Thus, all applicants and their attorneys should ensure that there has been some demonstrated business efforts involving a mark before filing an application. For those applicants who might intend to use the mark only through a licensee, there should be some evidence to support this claim. Although the lack of intent will only surface if an application is challenged by a third party, the opposer need not have grounds to allege a lack of bona fide intent at the time the opposition is filed if it can, as PRL did, amend its application after discovery has uncovered no evidence to support claimed intent. Moreover, applications filed under Section 44 based upon a foreign registration are not immune from these requirements since all such applicants must also allege and declare under penalty of criminal perjury a bona fide intent to use the applied-for mark in US commerce despite the fact that proof of use need not be filed in order for the registration to issue.

Accordingly, although dreams can come true, be sure that clever ideas for a mark are backed up by evidence of plans to use the mark before filing an application.

Written by: Susan Neuberger Weller

Racial and ethnic disparagement is a hot topic at the Trademark Trial and Appeal Board these days. While a decision is still pending in the latest cancellation action involving the long disputed WASHINGTON REDSKINS professional football team marks, the Board in In re Simon Shiao Tam, recently affirmed a federal trademark examiner’s refusal to register THE SLANTS as a mark for an Oregon rock band composed of Asian Americans on grounds that it was a derogatory slang phrase for people of Asian descent.

Section 2(a) of the Trademark Act prohibits registration of any mark which “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  In order to determine whether a mark is “disparaging” under this Section, the Board applies a two-part test, analyzing: (1) the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) if that meaning is found to refer to identifiable persons, institutions, police or national symbols, whether that meaning may be disparaging to a substantial composite of the reference group.

In this case, the Board considered evidence consisting of definitions of the word “slant” from various dictionaries and other reference sources, printouts from the band’s own webpage as well as its Wikipedia entry, and online articles reporting on the opinions of various Asian groups and individuals that the term “slant” was a disparaging term referring to Asian people. The band’s own Wikipedia entry stated that the name derived from “an ethnic slur for Asians,” and a band member was quoted as stating “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them.”

In considering the likely meaning of the term, the Board noted that “the nature of the identified services” for which the mark was used were live performances by a musical band. Thus, the Board found that the term “necessarily identifies people, i. e., the live performers,” and those who attended the live performances would necessarily understand THE SLANTS  to refer to the persons who comprised the band. Moreover, it found that the evidence in the case showed that the slang meaning of the word “slants” was actually being touted by the band itself in connection with the services it was offering in the marketplace. Accordingly, the “likely meaning” of the term as used in connection with the services was as a derogatory reference to people of Asian descent. The fact that the band might have good intentions in trying to “own” the term did not, in the Board’s opinion, speak for the entire community of persons of Asian descent since the evidence also demonstrated that a substantial composite of that group found the term objectionable.

It is important to note that the Board only has the authority to prevent federal registration of a trademark. It has no authority, as it made clear in its opinion in this case, to enjoin any use of a mark. Thus, although it could not “call upon the resources of the federal government” in order to obtain the benefits of a federal registration for its mark, the band’s  First Amendment rights were not abridged by this refusal since it could continue to use the mark and claim ownership of unregistered, common-law rights in it. This is also true for the WASHINGTON REDSKINS marks, which have been under fire for many years. Even if the Board cancels these registrations, the marks, which have been in use for a very long time, will continue to benefit from substantial common-law trademark rights developed over decades of use.

 

 

 

Written by: Susan Neuberger Weller

 The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications.  In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section 10(a)(1) of the Act really means what it simply states, namely, that prior to filing proof of use at the Trademark Office, an intent-to-use application cannot be assigned “except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing an existing.” So why are registrations still being canceled for violating these terms?

  Continue Reading Oops! Assignment of Intent-to-Use Trademark Applications: Easy But Not Simple

Written by: Susan Neuberger Weller

 There are many “myths” that float about in the general public about what can and cannot function as a trademark. For example, people often tell me that they “know” that “common words” can never be protected as trademarks. That, of course, is totally false. Common words can absolutely function as trademarks depending on how they are used. For example, the word “apple” is a “common word” and yet it also functions as a world-famous trademark for a computer company. Another myth is that everyone has the absolute right to use their own name as a trademark. This, too, is completely false for a variety of different reasons. For example, not everyone can protect their surname as a trademark, even if they are already using it as a company name or as the brand name for their products or services, even if no one else has prior rights to that surname as a trademark. How can this be possible?

  Continue Reading Why Can’t I Use My Own Name? : Trademarks and Surnames

Written by Susan Neuberger Weller

Rapper Dr. Dre and the company he co-founded, Beats Electronics, LLC, are on the offensive at the US Trademark Trial and Appeal Board challenging a multitude of third-party applications for marks which consist of or contain the word “Beat”. The company owns a number of trademark registrations for use of its various BEATS marks on headphones, speakers, headsets, and other related electronic products and has applications pending for future use on clothing and other items. As reported in the WSJ Law Blog last week, the targets of this campaign are mix of smaller, little-known companies as well as big players such as Sony.

Continue Reading Are Dr. Dre’s Claims of Likelihood of Confusion and Dilution Enough to “Beat” His Opponents?

Written by Susan Neuberger Weller

On July 2, 2012, the U. S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB” or “Board”) granted Hershey’s request to register the design and shape of a chocolate bar as a trademark on the Principal Register. The design was described as “a configuration of a candy bar that consists of 12 equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle.” The drawing for the mark is set forth below:

The issue in “product configuration” trademark cases is whether the design features sought to be protected are “functional”. If the overall design is functional, trademark protection is barred. In this case, the TTAB held that although the rectangular shape of the entire candy bar and the individual rectangular shapes scored within the bar were functional, since they made it more convenient to easily divide the bar into equal pieces, the overall design, when considered in its entirety, was not purely functional. Rather, the Board determined, based on the evidence presented that reflected a wide variety of shapes and decorative designs used for candy bars, that the particular combination of recessed rectangles with a raised border in the Hershey bar was not functional and, therefore, could be protected as a trademark. Continue Reading Hershey Thinks Outside the Box (or the Candy Wrapper) in Seeking Trademark Protection for a Product Shape