No, I’m not going to write about MARCH MADNESS® – that annual ritual of college basketball and the NCAA® basketball tournament.
Rather, I’m writing about the crazy winter weather which battered the East Coast with four Nor’Easter storms dumping record snowfall this March. After last week’s Storm Skylar and this week’s Storm Toby, some parts of the East Coast received over four feet of snow. It’s a regular blizzard.
Speaking of blizzards, have you seen the complaint that Dairy Queen filed in federal district court in Minnesota alleging infringement of its BLIZZARD® mark? According to Dairy Queen’s complaint, “One of the most popular and well-known menu items at DAIRY QUEEN® restaurants is the BLIZZARD® treat, consisting of soft-serve ice cream blended with fruit, nuts, candy pieces, and other flavorings. The BLIZZARD® treat is a required core menu item at all DAIRY QUEEN® locations. For those of you not in the know, it looks like this:
Dairy Queen has five incontestable registrations for BLIZZARD claiming a first use date back to 1946:
It is fair to say Dairy Queen is very protective of its BLIZZARD mark. Which is why it did not take too kindly to W.B. Mason selling bottled spring water under its own BLIZZARD mark:
In the fall of 2016, W.B. Mason filed trademark applications with the USPTO containing “blizzard” as part of its mark for use in connection with spring water. Check out application serial nos. 87/210,712 and 876/210,633 both filed October 20, 2016 and claiming a first use date of September 15, 2015.
According to the complaint, upon learning of W.B. Mason’s applications, trademark counsel for Dairy Queen contacted the Applicant and requested the applications be withdrawn. W.B. Mason declined and the applications were passed for publication. Dairy Queen promptly opposed, alleging a likelihood of confusion between W.B. Mason’s use and Dairy Queen’s use of “blizzard.” See TTAB Opposition No. 9123851.
When W.B. Mason continued using its mark, Dairy Queen filed the trademark infringement action in its home court in Minnesota. Like I said, March! What a month.
We will continue to monitor this case and give you updates on how both the TTAB and the District of Minnesota address the likelihood of confusion issue presented by this dispute.
In the meantime, stayed tuned for next week where we will explore more of this crazy March weather and the four Nor’Easters.
The United States Patent and Trademark Office (the “PTO”) has launched a new pilot program designed to ensure that specimens of use submitted to the PTO reflect actual use of the mark in commerce.
A mark is “used in commerce” within the meaning of the federal trademark statute (the Lanham Act) when the mark is affixed to goods (or containers or displays) and the goods are sold or transported in commerce and/or the mark is used in advertising or promotional materials that describe the services and the services are rendered in commerce. In both cases, the use must occur in the ordinary course of trade. A U.S. applicant must prove use of the mark in commerce before the application may proceed to registration. All registrants must prove use of the mark (or excusable non-use) in order to maintain the registration. Thus, specimens may be submitted as part of initial applications and/or allegations, statements, and declarations of use.
Under the PTO’s pilot program, third parties are invited to notify the PTO through a designated email address of any improper specimens submitted by an applicant. An improper specimen is one that is not actually in use, but may have been created specifically for the purpose of appearing to satisfy the PTO’s filing requirements.
To notify the PTO of an improper specimen, one must send it objective evidence showing third party use of the same image without the mark or cite to the prior application or registration numbers in which the same images (bearing different marks) have been submitted to the PTO. The PTO must receive the correspondence no later than the deadline for opposing registration of the pertinent application, but the PTO expresses a desire to receive such correspondence prior to publication whenever possible.
If someone is interested in knowing the outcome of the PTO’s investigation into an allegedly improper specimen, they must monitor the TSDR status page of the reported application. The PTO will not respond to the person who notified it of the improper specimen other than by automated reply acknowledging receipt of the report. This PTO program is subject to change and may terminate at any time.
Like letters of protest, this program offers people a low-cost opportunity to identify problems with pending applications and ask the PTO to address them, thereby potentially avoiding the expense and burden associated with addressing them directly through a notice of opposition. Unlike notices of opposition, the person notifying the PTO of an improper specimen does not need to be someone who believes they would be damaged by registration of the mark that is the subject of the pending application. Because the PTO accepts notices of improper specimens only prior to the deadline for opposition, this pilot program will not address improper specimens submitted after the publication period expires.
Although not stated expressly in the PTO’s materials, this pilot program seems to have a purpose similar to some of the PTO’s other programs, like the proposed streamlined cancellation process described here and the audit program originally described here (and which went into effect in November, 2017). All seem generally designed to promote the accuracy and integrity of the federal trademark register.
This PTO program seems to be seeking assistance in identifying a particular type of improper specimen, namely, mock ups or fabricated specimens. Current technology makes it all too easy to create an image that could appear to be a genuine specimen even though the applicant has not made use of the mark in commerce. On the flip side, there are some specimens that are accepted as genuine even if it doesn’t look like much effort went into creating them.
In In re Kohr Brothers, Inc., 121 U.S.P.Q.2d 1793 (TTAB 2017), a precedential TTAB decision, the TTAB affirmed a refusal to register the mark CONEY ISLAND BOARDWALK CUSTARD for use with frozen desserts when the specimen consisted of the following:
The examining attorney had refused registration of the mark, observing in part “The specimen is a piece of paper taped to a wall with the mark and a stylized image of a cone dessert printed on it. The location on the wall appears to be above the top of a garbage can.”
On appeal in Kohr, the issue was whether the specimen satisfied the requirements for a point-of-purchase display for goods. The TTAB decided that it did not, but refrained from judging the nature of the specimen itself. When the applicant filed a new application seeking registration of the mark in connection with retail services featuring frozen desserts, the PTO accepted the same specimen displayed in a slightly different location:
The PTO’s mission to preserve the integrity of the federal trademark database is laudable. This program is one tool designed to help achieve that goal, but will necessarily be underinclusive. If you spot an improper specimen, consider taking the time to notify the PTO. If you are an applicant seeking to register a mark, be extra conscientious about working with your attorney to confirm that the mark is being used in commerce and that the specimen accurately reflects this.
There has been a lot of talk lately about the idea that the supply of trademarks is running short. A recent article in the Harvard Law Review supported that idea: after some “big data” analysis, the authors concluded that (1) there is a finite number of good word trademarks, (2) the supply of those good marks that are not already claimed is dwindling (what the authors call “depletion”), and (3) marks that are already claimed are often claimed by a number of different owners (what the authors call “congestion”). The authors found particular evidence of depletion in the area of trademarks for beverages.
Which brings us to beer. Through most of the post-Prohibition years of the 20th Century, there was a relatively modest number of beer trademarks in use in the U.S. There were regional brews in addition to the mega-brews, but even those were mostly large-scale operations. With Americans growing increasingly used to what might charitably be called “light, easy-drinking” brews, there was a lot of consolidation. According to the Brewers Association, by the end of the 1970s there were only 44 brewing companies in the U.S.
Then began the rise of the craft brew. Inspired partly by the dismal state of the brewing industry, beer enthusiasts took to homebrewing, and some of those homebrewers started businesses. Microbreweries and brewpubs began to sprout in the 1980s. Their numbers – along with the volume of their output – increased dramatically in the 1990s and beyond. By 1994 there were over 500 craft breweries in the U.S., and that number stands at over 6,000 in 2018.
Six thousand breweries, the great majority of them putting out multiple types of beer, means a whole lot of potential beer trademarks. It also means a whole lot of potential conflicts between trademarks, particularly given craft brewers’ penchant for giving their brews playful names. As one brewer put it after a little beer trademark dust-up: “There is a finite number of lame hop puns to be used.”
Predictably, a fair number of beer name trademarks have wound up before the Trademark Trial and Appeal Board. The TTAB hears applicants’ appeals when the Trademark Office refuses applications to register trademarks, and it also hears challenges to registrations by other parties. The key issue in many of those proceedings is whether the mark shown in an application is confusingly similar to a mark that has already been registered.
Here is a sampling of some of the recent TTAB proceedings involving beer marks, with images of the marks where they were available. In all of the applications below, the examining attorney at the Trademark Office refused registration of the applicant’s mark (the first of each pair of marks shown below) based on a likelihood of confusion with the previously-registered mark.
8-BIT ALEWORKS versus 8 BIT BREWING COMPANY (refusal to register affirmed by the TTAB)
TIME TRAVELER BLONDE versus TIME TRAVELER (refusal to register affirmed despite the parties’ agreement to coexist)
BLACK FOREST versus BLACK FOREST BREWERY (refusal to register affirmed)
THE SAISON D’HERETIQUE versus HERETIC BREWING COMPANY (refusal to register affirmed for beer, but allow registration for root beer and other non-alcoholic beverages allowed)
MUTT versus LAZY MUTT (refusal to register affirmed)
WOODY WHEAT versus WOODY STOUT and WOODY BROWN ALE (refusal to register affirmed)
PRINCESS YUM YUM RASPBERRY ALE versus YUMYUM (registration allowed)
Some of the applicants in those appeals argued that small differences between the marks were enough to avoid confusion because craft brew drinkers are a sophisticated lot and could be expected to distinguish between the marks despite their similarities. The TTAB routinely rejected that argument. As a general matter, the TTAB will presume that consumers will not make careful distinctions between similar marks on similar goods when the goods are inexpensive. It can’t help the applicants’ case that, with beer marks, the goods are often ordered in noisy bars without the opportunity to examine the labels, and sometimes when the consumer’s ability to distinguish is compromised by having partaken of the goods.
The crowding of beer marks will only get worse, particularly if brewers try to protect the names of multiple beers in their product line. One option for brewers is to focus on choosing a protectable mark for the brewery, register that where appropriate, and not worry so much about the name of each different beer that the brewery sells. With the popularity of IPAs and other styles, it’s not uncommon for one brewer to offer multiple different versions of the same style of beer, so it may be necessary to name each beer – with or without “lame hop puns” – meaning lots of marks. The reporting indicates that craft brewers have a history of a “live and let live” attitude unless there is a clear problem, and that attitude is probably a good approach in the case of most beer trademarks. As the Godfather of homebrewing, the great Charlie Papazian, would say: “Relax. Don’t worry. Have a homebrew.”
The opening ceremonies for the 2018 Olympic winter games take place Friday, February 9, but competition has already begun. In addition to competitions on the ice and slopes, there are competitions among brand owners. Official sponsors of the Olympic games pour lots of dollars into exclusivity, promotions, and advertisements related to the Olympics. And sometimes the competitors of those sponsors engage in ambush marketing.
But what about marks related to the Olympics themselves?
The marks surrounding the Olympics receive extra special protection. As regular readers of this blog know, in the United States, one obtains some common law rights in trademarks through use. Obtaining federal registration greatly strengthens those rights. And once a mark is deemed famous within the meaning of the Lanham Act, it may be protected against dilution. But there is yet another form of protection, afforded to only a very select few marks. These marks have statutes that specifically protect them.
Congress has given the United States Olympic Committee (the “USOC”) the exclusive right to make commercial use of certain marks, including OLYMPIC, OLYMPIAD, CITIUS ALTIUS FORTIUS, and other marks related to the Olympics. The USOC protects its statutory right zealously, and has a WEBSITE that identifies logos, words, and phrases it owns or has the exclusive right to control. Part of the website is dedicated to informing the public about permitted and unauthorized uses of the USOC’s intellectual property. As explained on the website, the USOC’s funding comes from sponsorships, so it has an interest in controlling use of the marks to maintain and obtain future sponsors. The USOC may seek civil remedies available to trademark owners under the Lanham Act against unauthorized uses of words and symbols related to the Olympics. The USOC has authority to permit contributors and suppliers to use the marks.
The USOC may even consent to third party registration of marks that include one or more of the terms restricted by the statute. The USOC has done this on some occasions. For example, it permitted the French soccer club, Olympique Lyonnais, to register the mark OLYMPIQUE LYONNAIS (& design) and use it in connection with the soccer club and related merchandise that had been used in the past. However, on most occasions when the USOC is consenting to third party registration of a mark containing a term protected by the statute, the consent relates to an application filed by the International Olympic Committee (the “IOC”). The IOC has filed applications in the United States based on foreign registrations owned by the IOC and then has assigned (most of) the US applications to the USOC.
If you were to file a trademark application that includes a term related to the Olympics, like OLYMPIAD or CITIUS ALTIUS FORTIUS, you would receive an office action citing to the statute above and presenting it as a complete bar to registration. Without consent from USOC, you would likely be out of luck.
But there are some exceptions to the statute. Notably, anyone who used the restricted words or symbols for lawful purposes prior to 1950 is not restricted from continuing to use them. Also, the term “Olympic” is not prohibited when it is not used with other insignia protected by the statute, it refers to naturally occurring geography that received its name prior to 1998, the and use is primarily limited to the western part of Washington state.
So enjoy the Olympic games, but maybe look elsewhere for the inspiration for your next branding campaign.
Fans of the tear-jerking NBC drama This Is Us will be aware of a certain incident with a kitchen appliance that had a big effect on the show’s Pearson family. (Fans who don’t know what I’m talking about and don’t like spoilers should read no further.)
Fans already knew that one of the main characters died prematurely, but the cause was not revealed until a January episode showing what happened. Turns out that a slow cooker with a temperamental switch caused a spark, which ignited a towel, which ignited the draperies, and things went from bad to worse.
Fans freaked out, taking to social media with tales (and gifs) of throwing away their Crock-Pots. The Crock-Pot Brand people leapt into action, quickly creating a Twitter account (@CrockPotCares) to deal with the public relations problem that had been dropped in their lap like a delicious and family-pleasing but nevertheless painful batch of hot soup.
By all accounts, the Crock-Pot folks did a pretty good job of dealing with the public relations fallout. They tweeted out messages of empathy and information about their product’s enviable safety record:
They also released a statement – too lengthy for Twitter – saying in part: “For nearly 50 years, with over 100 million Crock-Pots sold, we have never received any consumer complaints similar to the fictional events portrayed in last night’s episode. In fact, the safety and design of our product renders this type of event nearly impossible.” That statement even invited NBC’s help in correcting the misunderstanding, and the show’s creator obliged with his own tweet:
Something they did not do, which is a little surprising, is point out that the device in the show was not branded as a Crock-Pot. As shown below, the slow cooker in the Pearson home lacks the prominent RIVAL CROCK-POT branding from Crock-Pot slow cookers of the era . . . although other parts of the Pearson device, such as the switch and the handles, do suggest that the This Is Us props department may have de-branded a Crock-Pot brand cooker. Perhaps they did that at the same time they were rigging it to emit the deadly sparks – a thing which, from what I’m told, a genuine Crock-Pot brand slow cooker has never done and simply would not do.
So the Crock-Pot people seem to have passed up an opportunity to say “that’s not us” to fans of This Is Us. This despite the fact that the owner of the mark, Sunbeam Products, in 2014 obtained a registration for the mark IF IT DOESN’T SAY CROCK-POT THEN IT’S NOT THE ORIGINAL.
And there’s a related trademark issue here. Every so often we have discussed on this blog the possibility of “genericide,” which is the death of trademark that occurs when the trademark becomes the generic name for the product. Genericide is relatively rare, but when it happens, it is often because the company that first commercialized the product enjoyed such success that it dominated the market and, in the mind of the consuming public, the trademark became not only the name of the product but also the name of the type of product. Companies whose brands have achieved such prominent status that they threaten to become generic often take steps to ensure that the public is aware of the difference between the trademark and the generic term. If the public considers it a generic term, it can no longer be protected as a trademark and it becomes available for use by competitors. No brand owner wants that.
The CROCK-POT trademark seems like one that is so closely associated with the type of product that there could be a concern about genericide. That’s presumably the reason for the IF IT DOESN’T SAY CROCK-POT THEN IT’S NOT THE ORIGINAL mark.
Given all that, this might have been a good opportunity for Sunbeam’s people to point out that a malfunctioning slow cooker is not the same as a malfunctioning Crock-Pot® brand slow cooker. They might have pointed out that the guilty slow cooker couldn’t have been a Crock-Pot® brand cooker, because it didn’t say Crock-Pot, and, as a wise person once said, “if it doesn’t say Crock-Pot then it’s not the original.” They could have kindly requested that people not refer to the Pearson’s cooker as a “crockpot” when they freak out on social media. And they could have playfully lectured Mr. Fogelman, who didn’t help them out on the genericide point when he seemed to use “crockpot” as a generic term in his tweet about “those lovely hardworking crockpots.” But if Sunbeam has made any effort to do that, I haven’t found it. I would guess that they were so busy with the public relations rapid-response team that the trademark team couldn’t get a word in.
A final note: the Pearson Family Crock Pot even has its own Twitter account (@ThisIsUsCrckPt), but I’m not absolutely sure it’s genuine. The picture looks pretty different. But you know these Hollywood stars – maybe it’s just had some work done.
Since becoming a Nashvillian a little over a year ago, I’ve fallen in love with a new sport: hockey. Hockey fever is infectious and its contraction was almost unavoidable as the Nashville Predators made it all the way to the Stanley Cup Final for the 2016-2017 season.
This year, there is a new team that has attracted attention both on and off the ice: the Las Vegas Golden Knights. Despite being an expansion team, the Vegas Golden Knights have had a record-setting inaugural season, are currently first in their division, and have even positioned themselves for a run at the 2017-2018 Stanley Cup. In fact, if you check the odds, Vegas is betting on Vegas.
Off the ice, however, the Vegas Golden Knights have found themselves in a bit of hot water as they continue to encounter opposition regarding four of their federal trademark applications. Trademarkology readers might recall that these trademark troubles began back in 2016. For a primer on this subject, check out our prior post: NHL Team Trademark Gets Iced.
Shortly after the Las Vegas NHL hockey franchise announced that it would be known as the Golden Knights in November 2016, office actions were issued by the USPTO which refused the marks “VEGAS GOLDEN KNIGHTS” and “LAS VEGAS GOLDEN KNIGHTS,” associated with clothing items, on the basis of potential likelihood of confusion with a prior-registered mark for “GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE” owned by the College of Saint Rose in Albany, NY. The Vegas Golden Knights responded to the office actions in June 2017; however, final disposition has been stalled as the Vegas Golden Knights’ applications have been suspended pending disposition of earlier filed applications.
More recently, two other applications for “VEGAS GOLDEN KNIGHTS” and “LAS VEGAS GOLDEN KNIGHTS,” for use in connection with entertainment services, namely, professional ice hockey exhibitions, have also been attacked – but this time by none other than the United States Department of Army (yes – THE ARMY)! These two applications for entertainment services were published for opposition in August 2017. The College of Saint Rose responded by requesting an extension of time to oppose. The Army responded by filing its formal Notice of Opposition with the Trademark Trial and Appeal Board (“TTAB”) on January 10, 2018, requesting that the Vegas Golden Knights’ applications be refused registration. The Army believes that allowing registration of the “VEGAS GOLDEN KNIGHTS” or “LAS VEGAS GOLDEN KNIGHTS” would cause likelihood of confusion, dilution of their brand, and perhaps even cause people to think that the Vegas NHL team is connected or affiliated with the Army.
The renowned U.S. Army Parachute Team has been nicknamed the “Golden Knights” since 1962 and also uses a “yellow/gold, black, and white” color scheme.
Interestingly, the owner of the Vegas Golden Knights NHL team, Bill Foley, was a 1967 graduate of West Point and the Army believes his selection of the “Golden Knights” name and color scheme was intentional. The Army even cited a Tweet from the Vegas Golden Knights’ team manager, George McPhee in its Notice of Opposition.
Pursuant to trademark law, the Vegas Golden Knights initially had 40 days to answer the Army’s Notice of Opposition (which would have been Feb. 19, 2018). However, recent filings with the TTAB reflect that the parties are actively engaged in settlement negotiations and have agreed to suspend all deadlines for 90 days.
So what does this mean? Will the Vegas Golden Knights have to change their name?
TTAB proceedings only relate to whether the Vegas Golden Knights can obtain federal trademark registrations. (To obtain injunctive relief and/or damages against the Vegas Golden Knights, it would be necessary to file a lawsuit in court.) TTAB proceedings often lead to settlement agreements, which I’m sure all of the parties involved would prefer over expensive and protracted litigation.
We will be monitoring the TTAB proceedings and the status of this fight over the “Golden Knights” so stay tuned and subscribe for future updates!
We are two weeks into 2018. Have you kept your new year’s resolutions so far? If you are like me, you have good intentions, but that may be all you have.
If one of your intentions this year is to use a new mark with a good or service (or to begin using an existing mark with new goods or services), consider filing an intent-to-use application to register it.
Although in the United States trademark rights are generally acquired through use, there are some exceptions. If you file an intent to use application seeking federal registration of the mark, and your application proceeds to registration, your protection in the mark dates back to your application filing date, even though you were not actually using the mark at that time. This can provide you with valuable time to prepare and launch the new brand knowing that you do not have to worry about intervening filers at the United States Patent and Trademark Office (the “PTO”). If you are not sure which mark you will use for your new product line, you can file applications for more than one and defer that decision until later. But not too much later, because you will have to prove use of the mark in U.S. commerce before you can get a registration (and you may request only a limited number of extensions of time to do so).
There are some things to think about when filing an intent-to-use application. One thing to consider is that once your application is on file, it becomes publicly accessible. So your intent to use a new mark becomes public knowledge.
Most people do not spend their days combing through the PTO database (those who do become trademark attorneys). But sometimes industry publications make a practice of doing this periodically to see what new applications by major market competitors are on file and to speculate about the implications.
Recently, an online magazine speculated about what H-D U.S.A., LLC’s (Harley-Davidson’s) newly-filed intent-to-use application for the mark 48X could mean: for example, whether it would be a new product or a celebration of the anniversary of an existing one. Another publication targeting the motor vehicle market noticed that Volkswagen Aktiengesellschaft had recently filed a new intent-to-use application for the mark AMAROK. Currently, Volkswagen sells a truck under that mark outside of the U.S. and Canada, so the publication speculated that this signals a plan to begin selling the truck here as well. A little more investigation would have revealed that this is the second time Volkswagen has filed a US application for this mark. The second application was filed just as the first one was expiring because Volkswagen had exhausted all extensions of time to prove use without proving use.
Perhaps Harley-Davidson and Volkswagen enjoy this unsolicited media attention. Maybe articles like the ones cited above help generate buzz among consumers and help build interest until it is time for launch. For brand owners that are more secretive, or who wish to exert more control over the publicity surrounding their new brand, there are strategies for taking advantage of the intent-to-use application and prolonging the secrecy of a potent new mark. What are those, you ask?
We intend to resolve that mystery in a subsequent post. Stay tuned!
Many Trademarkology readers will recall that the Supreme Court in June 2017 held that the Patent and Trademark Office could not legally refuse registration of a mark on the ground that it was disparaging. As a result, a mark that the PTO considered a racial slur could be registered. That case reversed years of Trademark Office practice and struck down a longstanding provision of the federal trademark law. The trademark register was now open to offensive racial or ethnic terms and other disses.
But maybe trademarks that disparage people aren’t your thing. Maybe you just want to register a trademark that is more generally considered vulgar or offensive. Scatological terms, perhaps, or vulgar terms for sex acts? Well, great news! In December, the court that oversees the PTO held that registration of those types of terms cannot be refused just because they’re offensive.
The earlier case, Matal v. Tam, involved the mark THE SLANTS, which the applicant used as the name of a music group whose members were of Asian heritage. The PTO refused registration based on a provision in §2(a) of the Lanham Act prohibiting registration of marks that “disparage . . . or bring . . . into contemp[t] or disrepute” persons living or dead, concluding that a substantial portion of Asians would consider the term offensive. The Court of Appeals for the Federal Circuit held that that prohibition violated the First Amendment because it discriminated among trademarks based on the expressive content of the marks and particularly on the viewpoint being expressed. The Supreme Court agreed, noting that “If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”
The December 2017 case, In re: Brunetti, involved an application to register the mark FUCT for use with clothing. The PTO refused registration, finding that the mark comprises “immoral” or “scandalous matter” and is therefore unregistrable. That decision was made before the Tam case was decided in either the Federal Circuit or the Supreme Court, so there was no reason to believe the ground was shifting for offensive trademarks, and it was based on a different part of §2(a) than the one at issue in Tam.
After the decision in the SLANTS case, the outcome in Brunetti seemed pretty obvious, but the government gamely made its arguments. One argument was that because the “immoral or scandalous” prohibition was viewpoint-neutral in that it did not only prohibit registration of marks that said bad things about people as in Tam, it was not covered by the earlier case and also did not violate the First Amendment. The applicant, for his part, did his best to undermine his own credibility by arguing that FUCT would not be seen as vulgar but was a term coined from the words Friends U Can’t Trust – “Wait, what did you think it meant, your honor?”
The court wasn’t buying any of those arguments. It agreed with the PTO that a significant part of the public would find the term vulgar and offensive, so that registration was banned by the “immoral or scandalous” provision. But the court held that registration could not legally be refused for that reason. Because the “immoral or scandalous” prohibition is a content-based restriction on speech, it is only valid if it serves a compelling government interest and is narrowly drawn to serve that interest. It is not. It also is vague, as illustrated by the fact that different examining attorneys at the Trademark Office came to different conclusions about whether terms including BS, COCAINE, TURD, and MILF were so immoral or scandalous as to preclude registration. So the court concluded that the “immoral or scandalous” provision is unconstitutional.
Neither this case nor the SLANTS case probably portends the end of society as we know it. A quick search for perhaps the most obviously offensive racial slur shows that there has been precisely one application to register a mark including the “N-word” since the Supreme Court’s decision, and that application was filed on the very day the decision came down. It may be that business owners recognize that most people are not lining up to buy products bearing that term.
There does seem to be a greater enthusiasm for marks that would potentially have been refused registration as immoral or scandalous. A search for marks incorporating what I will delicately call “the F-word” shows 34 pending applications filed after the Tam decision, about half of them based on a claim of actual use of the term as a mark. (An interesting tidbit in that regard is that about a week after the oral argument at which Mr. Brunetti was claiming that FUCT was a coined term and an acronym, he had filed an application to register the standard F-word for use with clothing. It is not clear what that is an acronym for.) The standard “S-word” is even more popular, with 42 applications. It strikes me as unlikely that any of these will prove to be great trademarks, and most probably never will be registered for other reasons. But who knows – “S-word” happens.
I will leave you with a small gallery of specimens of use for a few of these applications, including the specimen showing Mr. Brunetti’s use of his mark.
Less than three years ago, the United States Supreme Court issued its decision in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015), holding that so long as other ordinary elements of issue preclusion are met, when the usages adjudicated by the Trademark Trial and Appeal Board are materially the same as those before the district court, issue preclusion should apply.
As a reminder, the elements of issue preclusion are (1) that the issues in both proceedings are identical, (2) the issue in the earlier proceeding was fully litigated and decided, (3) there was a full and fair opportunity for litigation in the prior proceeding, and (4) the issue decided was necessary to support a valid and final judgment on the merits. When all elements are present, the earlier decision of the issue precludes re-litigation of it in the later proceeding.
B&B Hardware surprised trademark practitioners who had not contemplated that a TTAB case would be the basis for issue preclusion in an infringement action brought in district court. But they received some reassurance. In her concurrence, Justice Ginsburg explained that she joined the Court’s majority opinion with the understanding that issue preclusion would rarely apply because most TTAB decisions are based on a comparison of marks in the abstract. (By contrast, courts hearing infringement suits consider the marks in the context of the marketplace.)
Two of those rare cases occurred this year.
First, in Buzz Seating, Inc. v. Encore Seating, Inc., 2017 U.S. Dist. LEXIS 93002, (S.D. Ohio June 16, 2017) Buzz sued Encore, alleging that the latter’s use of FLITE with executive chairs infringes the former’s mark FLITE for use with office chairs. This suit was filed after Buzz Seating had prevailed before the TTAB in opposing registration of Encore’s application on the ground of likelihood of confusion. Buzz Seating obtained registration of FLITE for side chairs upon conclusion of the TTAB proceeding. When Buzz Seating sued for infringement, Encore Seating counterclaimed for declaratory judgment of non-infringement. Buzz Seating moved to dismiss that counterclaim on the ground of issue preclusion because of the TTAB’s decision. Encore argued there was no issue preclusion because the TTAB decision had focused on the category of goods recited in its application, whereas it was asking the court to focus on the goods actually sold. But the court did not see a material difference between the ‘office furniture, including chairs’ at issue in the TTAB proceeding and the ‘executive chairs’ it was asked to consider. Therefore, it gave preclusive effect to the TTAB decision and dismissed Encore’s counterclaim for declaratory judgment of non-infringement.
A more recent decision occurred in Cesari S.R.L. v. Peju Province Winery L.P. et al, 1:17-cv-00873 (SDNY Dec 11, 2017). Here, Cesari sued Peju Province (and co-defendants) for infringement when Peju Province continued using its mark for thirteen years after Cesari had successfully opposed registration of it before the TTAB. Before the TTAB, Cesari had opposed registration of Peju Province’s applied-for mark, LIANA, for wine on the ground of likelihood of confusion with Cesari’s mark, LIANO, which registered for use with wines just over a month before Peju Province had filed its intent-to-use application. In court, Cesari moved for partial summary judgment, seeking to preclude Peju Province and its co-defendants from re-litigating the likelihood of confusion issue decided by the TTAB. Peju Province argued that its marketplace usage differed from the description of goods in the application considered by the TTAB because it was a narrower subset (eg, wines from particular types of grapes, sold through certain trade channels, etc.). The court disagreed and found issue preclusion with respect to Peju Province, though it denied the motion with respect to the co-defendants. The court noted that because Peju Province had not offered evidence that its mark was used with respect to goods other than wines, there was no ‘usage’ that the TTAB had not considered.
These cases are worth noting because they are examples of courts applying B&B Hardware to the issue of likelihood of confusion (as opposed to a narrower issue or a factor of the likelihood of confusion analysis). In both cases, the court gave great weight to the fact that the goods at issue were identical to (or not materially different from) those at issue in the TTAB decision. As more time passes and more cases involving the actual (or potential) application of B&B Hardware arise, we will see just how rarely it is applied.
Some types of applications have a more difficult time than others proceeding to registration before the United States Patent and Trademark Office (the “PTO”). Sometimes the nature of a mark (such as product packaging) requires more evidence to demonstrate eligibility for registration. But sometimes the industry or goods with which the mark is used present a special challenge for the application. For example, marks chosen for use with heavily-regulated goods or services like pharmaceutical products may face unique challenges that require extra planning and strategy. Here we will talk about just one factor that makes the road to trademark registration more difficult for pharmaceutical products than for more other products: time.
Pharmaceutical products undergo review by the Food and Drug Administration (the “FDA”). This review can take a very long time, much longer than takes to examine a trademark application. What is a trademark applicant to do if the PTO completes its examination of the application and/or requires proof of use of the mark in commerce before the FDA completes its review of the product? There are some things the trademark applicant can do to buy itself more time in the trademark application process.
At the outset, the trademark applicant could consider filing an application in a jurisdiction outside the U.S. that is party to the Paris Convention or a similar treaty. This way, the applicant can delay filing the application in the US for up to six months and still rely on the foreign application’s filing date for priority in the U.S. This can potentially extend the period of time between the applicant’s selection of a mark and the date it will have to prove use by up to six months.
When filing the application with the PTO, the applicant will usually file on an intent-to-use basis since it has not already used the mark in commerce. (And if it is able to file the application to register the mark on the basis of foreign registration, it should consider adding that basis as well.) Once the application has been filed with the PTO, it will usually take approximately three months for the application to be assigned to an examining attorney for review. If the examining attorney raises any substantive issues or formalities, the applicant will have up to six months to respond to the office action. Once the applicant satisfactorily addresses any substantive concerns or formalities raised by the examining attorney, the application will be published. If no third party opposes registration of the mark after publication, the PTO will issue a notice of allowance giving the applicant six months to prove use of its mark in commerce.
At this point, the applicant may be in a position to prove use even if the FDA has not approved the product for the marketplace if the applicant has already begun clinical trials (depending on whether and how the mark is used in such clinical trials). But if the applicant’s product has not reached the clinical trial stage, or if the applicant cannot satisfy the criteria to prove use, the applicant may seek a six-month extension of time. The applicant may seek up to five such extensions if necessary.
If the applicant was able to file its application on both an intent-to-use basis and foreign registration basis, the applicant may have some advantages. If the application includes a foreign registration basis, and the applicant has exhausted the available extensions of time to prove use, the applicant may choose to drop the intent-to-use basis upon expiration of the last extension period. This would allow the application to proceed to registration without first having to prove use. If the application is not eligible for registration in the US on the basis of a foreign registration, then it will need to start the application process over again (and should think about the potential for this eventuality well before the application reaches this stage to decide whether to take alternative precautionary measures, including filing a new application).
If the mark proceeds to registration on the foreign registration basis, the registrant will have to prove use of the mark in commerce between the fifth and sixth anniversaries of the registration date. It is possible that third parties could challenge the registration on abandonment grounds before that deadline if the mark has not been used since registration (and such challenges would benefit from a presumption of abandonment if the mark has not been used for three or more years following registration). But if the registrant can demonstrate that its product is still progressing in the FDA review process, that it has documented plans for using the mark, and that but for the absence of FDA approval the mark would be in use, it may be able to defend against an allegation of abandonment successfully.
In short, while the length of time it takes to obtain FDA approval may pose an extra burden on applicants seeking to register marks for use with pharmaceutical products, applicants can implement strategies to overcome this obstacle, including (1) filing applications abroad first and taking advantage of the 6-month period during which the applicant may file in the US and claim priority back to the filing date of the foreign application, (2) filing on an intent-to-use basis (as well as foreign registration basis, if that is available), (3) maximizing the number of extensions available to prove use, and (5) dropping the intent-to-use basis to obtain registration based on the foreign registration alone (if that is available to applicant). Throughout the trademark application process, the applicant should regularly consult with the trademark attorney to keep her apprised of the status of the FDA’s review of the product. Together, the applicant and attorney can periodically assess whether FDA approval is likely to take so long that it is worth starting over with a new application.
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