Trademark dilution is a concept not easily understood. Although, we have written about this topic in previous posts, a recent decision by the Trademark Trial and Appeal Board, ESRT Empire State Building, L. L. C. v. Michael Liang, Opposition No. 91204122 (TTAB June 17, 2016), may help to further explain why it is unacceptable to dilute another’s trademark.
The US Trademark Trial and Appeal Board has, again, explained how and when surnames may function as trademarks. In re Enumclaw Farms LLC, Application Serial No. 85942195 (TTAB June 24, 2016). This blog has discussed this topic in the past, but the facts in this most recent case are worth another post.
The Federal Circuit has upheld the findings of the Trademark Trial and Appeal Board that use of the marks MAYA and MAYARI on wine is not likely to cause confusion. Oakville Hills Cellar, Inc. vs. Georgallis Holdings, LLC, Case No. 2016-1103 (Fed. Cir. June 24, 2016). The court concluded that there was substantial evidence to support the Board’s finding that the marks were sufficiently dissimilar in appearance, sound, meaning and commercial impression to avoid likely confusion, despite the fact that they were used on virtually identical products which would be sold to similar customers in similar channels of trade. Continue Reading MAYA And MAYARI Are Not Confusingly Similar When Used On Wine
What do Washington D.C.’s NFL team, the Redskins, and Mr. Tam’s rock band, The Slants, have in common? Both have enjoyed unexpected victories recently and both have been called “disparaging” by the Patent and Trademark Office (“PTO”). However, while the Washington Redskins have been winning on the football field, many legal and business news websites have also been counting Mr. Tam’s recent success at the Federal Circuit as a major win for the football team. In reality, that issue is far from settled.
The Federal Circuit first took up the issue of Mr. Tam’s trademark last spring when it affirmed the PTO’s rejection of his application to register the mark “THE SLANTS,” the name of Mr. Tam’s Asian-American dance rock band that is known for its intentional use of Asian stereotypes in its lyrics and imagery in order to weigh in on cultural and political discussions about race and society. Despite the ruling adverse to Mr. Tam, Judge Moore went on to write a lengthy argument addressing the need for a deeper constitutional review of the statutory prohibition against disparaging marks, as codified in Section 2(a) of the Lanham Act. In re Tam, 785 F.3d 567 (Fed. Cir. 2015). This opinion teed up the en banc review by the Federal Circuit, which issued a pivotal opinion on December 22, 2015 overruling prior precedent, In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), and held that the prohibition against registering disparaging marks at the PTO under Section 2(a) of the Lanham Act is an unconstitutional restriction on free speech. In re Simon Shiao Tam, No. 2014-1203, 2015 U.S. App. LEXIS 22300 (Fed. Cir. Dec. 22, 2015).
Based on the Federal Circuit’s ruling, the media immediately decreed victory for the Washington Redskins’ trademark battle, but there are reasons that the recent Federal Circuit ruling is not likely to be the last we hear of this issue:
First, the Federal Circuit is split. While 9 judges agree that the disparaging marks prohibition in Section 2(a) is entirely unconstitutional, the remaining 3 raise some valid concerns in partial or total disagreement. For example, writing for the Majority, Judge Moore places a great deal of importance on the chilling effect such regulation has on expressive speech. However, Judge Reyna and Judge Laurie argue in dissent that the Majority’s analysis is flawed from the very beginning as trademark registration is commercial speech, as was held in precedential opinions, and thus not subject to heightened scrutiny. Meanwhile, Judge Dyk attempts to draw a distinction between “core political speech” and “commercial speech” in trademarks. In the concurrence in part and dissent in part, Judge Dyk argues that the Majority is correct only as to a narrow category of trademarks which contain core political speech, but the statute remains constitutional as to the bulk of trademarks which are merely commercial speech. This fundamental disagreement as to what is or is not commercial speech is exactly the sort of issue that the Supreme Court may take up. In the dissent, Judge Reyna poignantly summarizes the disagreement: “The Majority holds today that Mr. Tam’s speech, which disparages those of Asian descent, is valuable political speech that the government may not regulate except to ban its use in commerce by everyone but Mr. Tam.”
Second, the Redskins’ mark is pending review before a different tribunal. The Redskins are currently appealing to the Fourth Circuit an adverse ruling by a U.S. District Court following the TTAB’s cancellation of the team’s mark recently. In doing so, the TTAB cited the same prohibition against registering disparaging marks under Section 2(a) at issue in the recent Federal Circuit opinion. While the Federal Circuit’s opinion will surely be influential to the Fourth Circuit, it is not precedential and the Fourth Circuit is not required to follow it. Thus, immediate victory for the Redskins is not guaranteed. Furthermore, should the Fourth Circuit rule in any way different than the Federal Circuit on determining constitutionality of Section 2(a), this circuit split would set up a likely Supreme Court review.
Third, the constitutionality of Section 2(a) as to immoral and scandalous marks is now unclear. While the Majority was careful to mention several times that their opinion concerns only the prohibition against registering disparaging marks, Section 2(a) also prohibits registering immoral and scandalous marks. Indeed, the Redskins mark may still be challenged under either of those additional prohibitions at a future date. To some, the logic and reasoning of the recent Federal Circuit ruling may be equally applicable to those prohibitions; both additional prohibitions can be categorized as content based and/or viewpoint based regulation of non-commercial expressive speech that fails the constitutional test of strict scrutiny. To others, there may be reasons to distinguish the Federal Circuit’s ruling as to the other Section 2(a) prohibitions; the prohibition against registering immoral and scandalous marks isn’t as vague or the effect isn’t as chilling on expressive speech. The Supreme Court may be interested in settling this discrepancy before the PTO is flooded with new registrations of offensive marks.
Despite their recent wins on the field, the Redskins’ Super Bowl prospects are still uncertain. The prospects of the team’s trademark registration remains similarly uncertain, despite the recent Federal Circuit holding.
Today the Federal Circuit Court of Appeals ruled that the section of the Lanham Act which bans registration of “disparaging” trademarks is an unconstitutional violation of First Amendment free speech.
The case, In re Simon Shiao Tam (case no. 14-1203), involved the U.S. Trademark Office’s refusal to register the mark THE SLANTS for a music band on grounds that it disparaged an ethnic group. In issuing its decision, the appeals court wrote that “[m]any of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities,” but that “the First Amendment protects even hurtful speech.” It went on to state that “[t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.”
This decision could impact the case pending before the U.S. Court of Appeals for the Fourth Circuit involving the cancellation of the Washington Redskins trademark registrations on grounds of disparagement.
Stay tuned for further updates.
The Federal Circuit has decided to revisit the constitutionality of Section 2(a) of the Lanham Act in the case of In re Shiao Tam, 2015 U.S. App. LEXIS 6840 (Fed. Cir. Apr. 27, 2015). Section 2(a) of the Lanham act allows the USPTO to reject the registration of a trademark that is immoral, scandalous, or disparaging. 15 U.S.C. § 1052(a). Just a week earlier, the Federal Circuit affirmed the PTO’s rejection of Mr. Tam’s application to register the mark “THE SLANTS,” the name of Mr. Tam’s Asian-American dance rock band that is known for its intentional use of Asian stereotypes in its lyrics and imagery in order to “weigh in on cultural and political discussions about race and society.” In re Tam, 2015 U.S. App. LEXIS 6430, *2, *19 (Fed. Cir. Apr. 20, 2015). Mr. Tam argued that this rejection was a violation of his First Amendment right to freedom of speech.
In rejecting Mr. Tam’s arguments that Section 2(a) is unconstitutional under the First Amendment, Judge Moore explained that this argument is “foreclosed by our precedent” in In re McGinley, 660 F.2d 481 (C.C.P.A. 1981). In re McGinley dismissed a First Amendment challenge to Section 2(a) and held that “the PTO’s refusal to register appellant’s mark does not affect his right to use it” and “that no conduct is proscribed, and no tangible form of expression is suppressed” when an applicant’s trademark registration is rejected under Section 2(a). In re McGinley further held that the Section 2(a) standard, “scandalous,” is not too vague as to bar the PTO and the courts to apply the law fairly.
Despite affirming the rejection of Mr. Tam’s registration, Judge Moore went on to write a lengthy “additional views” section that outlines in great detail why “it is time for this Court to revisit McGinley‘s holding on the constitutionality of § 2(a) of the Lanham Act,” and notes from the outset that the McGinley’s holding was “without citation to any legal authority.” Tam, 2015 U.S. App. LEXIS 6430, at *14. Judge Moore reasons that because the PTO is now entirely funded from application fees, and no longer funded by taxpayers as it was when McGinley was decided, the newer constitutional jurisprudence of the “unconstitutional conditions” doctrine may apply. Judge Moore goes on to argue that trademarks are protected commercial speech, and that a rejection is an abridgement of that speech due to the highly beneficial rights a Lanham Act registration confers on a trademark owner. Ultimately, Judge Moore concludes that Section 2(a) cannot pass constitutional scrutiny unless the Court is presented with a “substantial government interest that would justify the PTO’s refusal to register disparaging marks,” which has yet to occur. Id. at *37-38, 45 (citing Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n, 447 U.S. 557, 566 (1980)).
Following Judge Moore’s thorough argument that a Section 2(a) rejection is an unconstitutional restriction of commercial speech, it will be interesting to see how the Court will decide this question during its en banc consideration. The parties have 45 days to file briefs on the constitutional issues, with a decision to follow.
The outcome of the Federal Circuit’s en banc consideration will be influential. For example, the Washington Redskins NFL football team has been involved in a well-publicized battle surrounding its controversial name in both the courts of law and of public opinion. In the former, the Federal District Court in Virginia is considering an appeal from the Washington Redskins organization challenging the PTO’s cancellation of the “REDSKINS” trademark registration under Section 2(a) for being disparaging to Native Americans. If the Federal Circuit finds that Section 2(a) is unconstitutional, then, in a somewhat ironic twist, Mr. Tam may end up enjoying the same trademark rights and protections as the Washington Redskins.
Written by: Susan Neuberger Weller
It is that time of year again, coming off St. Patrick’s Day celebrations, when everyone gets on the college basketball bandwagon in the season of “MARCH MADNESS.” Brackets are being completed, college jerseys are being pulled out of mothballs, bars and restaurants are hiring extra help, and work schedules are being rearranged around televised game times so everyone can join in the fun and relive the glory days. And, just as with the frenzy surrounding the Super Bowl, there will be events of all types organized around the country to take part in the “madness.” However, as we warned you in January right before the Super Bowl, if you are planning such events, do not use “March Madness” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales unless you want the NCAA to pay you an unwanted visit.
As is SUPER BOWL, the phrase MARCH MADNESS is a federally registered trademark owned by the NCAA for use in connection with products and services related to the college basketball tournament. This gives the NCAA exclusive nationwide rights to use the term on and in connection with these goods and services and prohibits anyone else from using the term in any way that would suggest any type of association, affiliation, sponsorship, endorsement, licensed status or any other connection between it and the NCAA, when in fact no such status exists. The NCAA takes this very seriously, as do its official licensed partners, who pay millions of dollars to use MARCH MADNESS in connection with their commercial promotions.
Although the NCAA was not the originator of the “March Madness” slogan, and negotiated for a number of years to acquire the federal rights to this mark, its rights are now firmly entrenched. Moreover, it is very aggressive in pursuing unauthorized uses of MARCH MADNESS or infringing versions of this mark not only to protect its own trademark rights, but to protect the rights of its licensed sponsors.
So, feel free to show your team spirit, cheer on your alma mater at the top of your lungs, wear that old jersey, and join in all the revelry, but do not engage in any advertising or promotional activity for any products or services using MARCH MADNESS or any altered version of the mark unless you have a paid sponsorship to do so.
On February 6, the United States District Court for the Eastern District of Virginia reversed the US Trademark Trial and Appeal Board’s ruling in Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623 (TTAB 2014) holding that Article 6bis of the Paris Convention does not grant trademark rights that are protectable under Section 14(3) (misrepresentation of source), Section 43(a)(1)(A) (infringement of an unregistered mark) and Section 43(a)(1)(B) (false advertising) of the United States Trademark Statute (the Lanham Act). Belmora LLC v, Bayer Consumer Care AG and Bayer Healthcare LLC, 1:14-cv-00847-GBL (EDVA Feb. 6, 2015).
Bayer Consumer Care AG filed a petition with the TTAB to cancel Belmora LLC’s U.S. trademark registration for FLANAX for a naproxen sodium based analgesic on grounds that it was confusingly similar to Bayer’s FLANAX brand of naproxen sodium analgesic products. Ordinarily, a case involving identical marks used on virtually identical products is a slam dunk for the prior user. However, in this case Bayer owned a Mexican, but not a US, trademark registration for FLANAX, and did not sell any FLANAX branded products in the US. Rather, the Bayer naproxen sodium analgesic product available in the US was sold under the trademark ALEVE. Nevertheless, Bayer claimed that Belmora’s actions in the US were misrepresentative and created confusion among US customers as to the source of the FLANAX products sold in the US. Continue Reading The Court’s Decision in the FLANAX US Trademark Dispute Gives Bayer a Headache
Unlike most countries, US trademark law generally requires that a mark be in use before it can be protected. The US recognizes common law rights in unregistered marks if they have been adopted in good faith and are in actual use on a product or to provide a service to the public. The US also has a state trademark registration system as well as a federal trademark registration system. Each state adopts its own requirements for registration of a trademark, and the US Congress creates the law for federal registration.
Under federal law, a mark owned by a US based applicant must be in use on all of the goods and to provide all of the services in an application, and proof of use must be filed and accepted by the US Trademark Office before a registration will issue. However, non-US applicants are permitted to register a trademark in the US without ever having used the mark in the US if it seeks registration under Section 44(e) of the Trademark Act based upon a qualified foreign national or European Community registration or if it seeks registration under Section 66(a) based upon an international trademark registration under the Madrid Protocol. Continue Reading Use It or Lose It: When Can a Trademark Registered Under Section 44(e) or 66(a) Be Deemed “Abandoned” in the US?
Written by : Susan Neuberger Weller
The New York Times Magazine had a very interesting article in its January 18, 2014 issue entitled “Call It What It Is.” The article, written by Neal Gabler, looks into the methods and ideologies used to create new product brand names. As a trademark lawyer who has been practicing for quite a while, the substance of the article was not particularly new to me. However, many businesses who struggle each day to invent new company and brand names for their businesses, products, and services may find some inspiration and creative ideas from this piece. As the article makes clear, the naming process can be a very long road and it is better to start sooner rather than later. Moreover, once a new name is chosen, and has been fully searched and cleared by trademark counsel, it is strongly recommended that an intent to use application for the new brand name be filed promptly at the US Trademark Office to protect it at the earliest time possible.
So, roll up those sleeves and let the branding begin!