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.
Written by: Susan Neuberger Weller
The Washington Redskins professional football team will soon not only be battling Native Americans over the registrability of the REDSKINS trademark, but will also have to cross swords with the US Government. Last week, the US Department of Justice filed a Notice of Intervention in the appeal of the US Trademark Trial and Appeal Board’s decision last summer to cancel the REDSKINS trademark registrations. As we reported in our earlier post, the Washington team raised in its appeal constitutional issues that could not be decided by the TTAB. These include the following:
- Trademarks are constitutionally protected commercial speech and Section 2(a)’s provisions prohibiting the registration of “disparaging, “”contempt[uous]”, or “disreput[able]” aspects of a mark are an unconstitutional, content-based restriction on speech that violates the First Amendment to the US Constitution.
- Section 2(a) is facially overbroad and unconstitutionally void for vagueness in violation of the First Amendment to the US Constitution since, inter alia, the terms “disparage,” “may disparage,” “contempt,” “disrepute,” and “may bring…into contempt or disrepute” are not defined in the Lanham Act or its legislative history.
- The cancellation of the REDSKINS registrations violate the team’s due process rights provided by the Fifth Amendment to the US Constitution by unreasonably depriving the team of federally granted property rights that it has relied on for almost half a century.
- The Board’s Order canceling the REDSKINS trademark registrations is an unconstitutional taking of Pro-Football’s property without just compensation in violation of the Takings Clause of the Fifth Amendment to the US Constitution.
The Notice of Intervention states that the US Government will be defending the constitutionality of Section 2(a) of the Lanham Act, and is entitled to do so as a matter of right pursuant to the Federal Rules of Civil Procedure and statute.
As of this writing, no responsive pleadings have yet been filed by either the team or the Native Americans. Stay tuned.
It is not only the price of oil and gas that is dropping! The US Trademark Office has reduced the filing fees for new trademark applications and for registration renewal applications. The previous filing fee for each class in a new trademark application was $325. Effective immediately, this fee has been reduced to $275 per class. The per class filing fee for US registration renewal applications was $500 per class, and has now been reduced to $400 per class.
So, celebrate the new year by taking advantage of these fee reductions and get to those trademark applications you have been meaning to file.
Written by: Susan Neuberger Weller
A simmering dispute about ownership of a copyright in photographs has now garnered international attention. As more fully reported in an article in the British newspaper The Telegraph, British photographer David Slater has stated that he intends to bring a copyright infringement suit in the U.S. against Wikimedia, the nonprofit entity behind Wikipedia, focused on photographs taken by a crested black macaque monkey in Indonesia in 2011. Slater had been in Indonesia on a photo shoot when his camera was grabbed by a monkey which then took some amazingly good selfies with Slater’s camera. Some of these photographs can be seen on Slater’s website, the Wikimedia website, and in The Telegraph article. Slater claims to own the copyright in the photos because he owned the camera with which they were taken. Wikimedia claims that the photographs are not protected by copyright and are in the public domain since they were taken by a monkey, and not a human. Accordingly, it has refused Slater’s requests to remove the photographs from the Wikimedia site. Continue Reading Copyright Ownership is not Monkey Business: Wikimedia and Slater Fight Over Selfie Photographs
Written by Susan Neuberger Weller
As we reported previously, Lululemon, an exercise apparel company, filed suit against Calvin Klein and its supplier G-III Apparel Group for infringement of three Lululemon design patents for yoga pants. On November 20, 2012, Lululemon filed a notice of voluntary dismissal in the Delaware proceeding based upon a settlement that would dismiss the suit with prejudice. The terms of the settlement are confidential, according to a Lululemon, which released a statement asserting that “Lululemon values its products and related IP rights and takes the necessary steps to protect its assets when we see attempts to mirror our products.” The lawsuit was somewhat unique in that it involved a designer seeking to assert IP protection in articles of clothing through patent rights.
We at Mintz Levin’s Copyright and Trademark Matter law blog are thrilled to announce that Geri Haight, editor of this blog and our colleague in Mintz Levin’s Intellectual Property group, will receive a Volunteer Service Award at this year’s International Trademark Association (INTA) Leadership Meeting in Orlando, Florida.
Since the birth last month of their first child, Blue Ivy Carter, Beyoncé and Jay-Z are no doubt experiencing the typical joys of first-time parenthood. Those first looks, smiles and coos. But they are struggling with at least one parenting issue that most of us don’t have to worry about: trademark protection for their baby’s name. Beyoncé’s company, BGK Trademark Holdings, LLC, recently filed an intent-to-use trademark application for the mark BLUE IVY CARTER for use on a wide range of goods and services, including fragrances, key chains, baby strollers, jewelry, mugs, hair accessories, balls, product merchandising services and entertainment services, to name a few. But Beyoncé was not the first applicant for the BLUE IVY CARTER trademark. Two other entities beat her to the Trademark Office. Continue Reading BLUE IVY CARTER: What to Get a Child Who Has Everything? A Trademark Registration.
Following this week’s Internet blackout by service providers and online resources opposed to the pending Stop Online Piracy Act and the Protect IP Act, Congressional leader have announced a postponement on future action on the legislation. Senate Majority Leader Harry Reid delayed a vote on PIPA scheduled for Tuesday. In the House, Judiciary Committee Chairman Lamar Smith responded by announcing that the Committee would not consider SOPA until a compromise on the legislation was reached. Several backers of the legislation, including Senator Marc Rubio (R-Fl) who had co-sponsored PIPA, have withdrawn their support after being flooded with phone calls and messages expressing opposition to the anti-online piracy measures. But Senator Patrick Leahy, the leading sponsor of PIPA, was not swayed by the outpouring of concern over the breadth of the pending legislation. He expressed his continued support of the legislation and warned of the continuing threats posed by online piracy and theft. “Somewhere in China today, in Russia today, and in many other countries that do not respect American intellectual property, criminals who do nothing but peddle in counterfeit products and stolen American content are smugly watching” the controversy over the bill, he said.