Two incredible things happened in 1992 for the NFL football team Washington Redskins. It won the Super Bowl and applied to register a trademark Washington Redskins. It has not been so lucky ever since. It has not won another Super Bowl and has not registered that mark since 1992. Now, thanks to the touchdown scored by the Supreme Court for Washington Redskins and its compadres The Slants band of Asian-American musicians in the Matal v. Tam case last term, the team just converted its 25-year old application into a US registration and is about to get its six presently-cancelled other US trademark registrations back. This is a natural fall out from the Supreme Court’s decision to invalidate the Lanham Act’s Section 2(a) prohibition against registering “disparag[ing]” trademarks as an unconstitutional restriction on free speech. [See Mintz Levin’s prior post on the Matal decision.] This decision has now forced the hand of the Fourth Circuit to vacate and remand in an unpublished per curiam opinion the Washington Redskins’ appeal of the district court decision to uphold the PTO’s cancellation of its six trademark registrations as disparaging to Native Americans. [See Mintz Levin’s prior post on this saga.] The Supreme Court’s decision has left nothing to consider for the Fourth Circuit, the district court, and the PTO, which will now have to reinstate the presently cancelled trademark registrations.
Selecting and protecting your “brand” should begin from the very moment a business is in the process of being formed, whether that business is a sole proprietorship, partnership, corporation, limited liability company, or some other type of entity. It makes no difference whether the entity is a for-profit or not-for-profit organization, and the size of the entity is also irrelevant. Your “brand” is your public facing identity by which you will be known and through which your reputation will be developed. The goodwill you develop in your “brand” will be one of the most important and valuable assets you own.
The first “brand” a new entity may adopt is its business name. This may be a formal corporate name obtained through a Secretary of State’s office and/or a fictitious business name, such as a trade name or a DBA. Regardless of which type of entity is adopting and using a new name, and regardless of whether the name has been cleared by a Secretary of State’s office, it is critical that an appropriate trademark search be conducted for the new name to ensure that it does not infringe upon the prior existing registered or unregistered trademark rights of a third party. Continue Reading Company “Branding” and the Benefits of Federal Trademark Registration
In a unanimous decision handed down on June 19th, the U.S. Supreme Court struck down as unconstitutional a long-standing prohibition against federal registration of “disparaging” trademarks, finding that the this provision of the Lanham Act violates the Free Speech Clause of the First Amendment.
We have been tracking this case since 2013, when the TTAB refused registration of the mark THE SLANTS for an Oregon rock band. The Patent and Trademark Office (PTO) denied the application under Section 2(a) of the Lanham Act which prohibited the registration of marks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 U. S. C. §1052(a). The PTO found the mark to be a derogatory or offensive term for people of Asian descent. The Federal Circuit reversed the PTO, finding the disparagement clause of the Lanham Act unconstitutional, and the government appealed. Continue Reading Matal v. Tam: U.S. Supreme Court Holds Prohibition on Disparaging Trademarks Unconstitutional under First Amendment
Although most people will recognize the ubiquitous PIZZA! PIZZA! slogan mark owned by the pizza chain Little Caesar’s, the company’s collection of repeated term marks does not rise to the level of a “family of marks” according to the Trademark Trial and Appeal Board. In a precedential decision, the Board held that to grant this status to the slogan marks at issue would give Little Caesar’s excessively broad rights not justified by the facts. In re LC Trademarks, Inc. (TTAB December 29, 2016). However, the Board did clarify that proof of the existence of a “family of marks” can be a factor used to prove that otherwise descriptive marks have acquired distinctiveness. Continue Reading Pizza! Pizza!: Little Caesar’s Repeated Term Slogans Are Not a “Family of Marks”
In a non-precedential opinion, the U.S. Trademark Trial and Appeal Board cancelled two US trademark registrations for the mark PORTON, finding it to be confusingly similar to the mark PATRON. Patron Spirits International AG v. Pisco Porton, LLC, Cancellatio No. 92059527 (January 4, 2017). PORTON is the brand name for a Peruvian brandy sold by Pisco Porton. PATRON is the brand name for a Mexican tequila sold by Patron Spirits International. Continue Reading Trademark Trial and Appeal Board: Non-Spanish Speakers Would Confuse PATRON and PORTON Trademarks
In June 2016, the National Hockey League (NHL) announced that Las Vegas would be awarded an NHL franchise team, the first major professional sports team in the city and the first new expansion team for the NHL in over fifteen years. The team announced its name in November—the “Vegas Golden Knights.” But just a few weeks later, on December 7, the team’s trademark application for the name in connection with “entertainment services, namely, professional ice hockey exhibitions” was refused by the U.S. Patent and Trademark as likely to be confused with a registered trademark for GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE, owned by the College of Saint Rose, a Division II member of the NCAA with no hockey team.
On November 14, 2016, the Federal Circuit clarified confusion regarding what is necessary to satisfy the registration requirement that a mark be used “in commerce.”
Christian Faith Fellowship Church v. adidas AG involved the Church’s appeal from a Trademark Trial and Appeal Board (“TTAB”) decision cancelling its mark “ADD A ZERO.” The Church, located in Illinois, began selling apparel bearing the phrase “ADD A ZERO” in January 2005 and later applied for and obtained a federal registration for the mark based on actual use in commerce. In 2009, Adidas sought to register “ADIZERO” but had its application denied by the Trademark Office based on likely confusion with the Church’s “ADD A ZERO” mark. Adidas then brought an action to cancel the Church’s mark arguing that the Church had failed to use the marks in commerce before registration. Continue Reading Federal Circuit Clarifies What Constitutes Use “In Commerce” Under the Lanham Act
Well, a lot has happened since we last reported on the District Court’s decision in the FLANAX trademark dispute. As you may recall, the Trademark Trial and Appeal Board granted Bayer’s Petition and cancelled the FLANAX registration although Bayer, a German company, did not use the mark FLANAX in the US. The U.S. District Court for the Eastern District of Virginia dismissed Bayer’s subsequent Complaint and reversed the TTAB, finding that Bayer had no standing to challenge the FLANAX mark under the Lanham Act since it had no rights in the mark in the US. Bayer appealed this to the Fourth Circuit which then reversed the District Court. The Fourth Circuit concluded that Bayer did have the right under Section 43(a) of the Lanham Act to assert claims for false association and false advertising and to pursue a cancellation claim under Section 14(3). The Court held that nothing in the Lanham Act or the law mandated that Bayer have used the FLANAX mark in the US “as a condition precedent” to its claims. On October 20, 2016, Belmora, the owner of the US trademark registration for FLANAX, filed with the U.S. Supreme Court a Petition for a Writ of Certiorari seeking resolution of a split among the circuit courts on the application of territorial provisions to certain trademark claims in the US. The specific question presented to the Court by Belmora is as follows:
“Whether Sections 14(3) and 43(a) of the Lanham Act allow a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for conduct relating to the owner’s use of its U.S. mark.”
Bayer can file a brief in opposition within 30 days if it decides to do so.
We will keep you posted on all further developments.
Further to our post last Friday on the SLANTS trademark case, the U.S. Supreme Court today, without comment, refused the Redskins’ Petition to join the SLANTS case challenging the U.S. Trademark Office’s ban on “offensive” trademarks. Since both cases involved a provision in Section 2(a) of the Lanham Act, the football team hoped to have both cases considered concurrently by the high Court. However, this now means that the outcome of the SLANTS case will have a huge impact on the Redskins’ appeal still pending before the Fourth Circuit. Although the team’s case will not be heard with the SLANTS case, it will have the opportunity to file amicus briefs in the proceeding.
The U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the constitutionality of Section 2(a) of the Lanham Act, which prohibits registration of such marks. The case originated in 2013 following the Office’s refusal to register THE SLANTS as a mark for an Oregon rock band on grounds that it was a derogatory slang phrase for people of Asian descent Continue Reading The SLANTS Trademark Will Play One More Gig: U.S. Supreme Court to Decide Constitutionality of Ban on Disparaging Trademarks