Articles Posted in Trademark Court Decisions

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Last week the U.S. Supreme Court issued its long awaited decision in Iancu v Brunetti   588 U.S. ____, 2019 USPQ2d 232043 (2019).  The Lanham Act Section 2(a) states that trademarks should be refused on the Principal Register if the trademark consists of immoral or scandalous matter. Erik Brunetti was seeking to register the mark, “FUCT” for various apparel items. The Examining Attorney refused to register the mark because it was the phonetic equivalent of a vulgar term.

Brunetti appealed to the Trademark Trial and Appeal Board (the “Board”), and it affirmed the refusal based on the mark, “FUCT” being prohibited under Section 2(a) of the Lanham Act for being immoral or scandalous. Brunetti then appealed to the U.S. Court of Appeals for the Federal Circuit (“CAFC”), and the Court reversed the Board’s holding. Since the CAFC invalidated Section 2(a) of the Lanham, the U.S. Supreme Court agreed to hear the case. Now the U.S. Supreme Court has ruled that Section 2(a) of the Lanham Act is unconstitutional because it violates the First Amendment.

Undoubtedly, the decision in Matal v. Tam influenced this ruling. See our blog post entitled, Two Significant Court Decisions Impacting USPTO Trademark Practice, for a more detailed analysis of the Tam case. In Tam, the U.S. Supreme Court held that Section 2(a) of the Lanham Act is unconstitutional under the Free Speech Clause of the First Amendment. Section 2(a) of the Trademark Act has been used to deny federal registration to trademarks that disparage or bring into contempt any persons living or dead. The applicant in Tam wanted to register the mark THE SLANTS for his Asian rock band. The Tam decision was a unanimous ruling holding the Disparagement Provision to discriminate based on viewpoint.

After the Tam decision, the USPTO had to remove certain cases from suspension (those refused on the Disparagement Provision) and reexamine the cases for other requirements. The Justices rendering the decisions of both cases (Tam & Brunetti) agree on the core principal that the government cannot discriminate against speech based on the ideas or opinions that the speech conveys. One of the Justices explained in Tam that the disparagement bar only allowed an applicant to register a mark if it conveyed a positive idea about a party, but not if it conveyed a derogatory message. In other words, the government cannot deny registration of a trademark based on views expressed by the mark.

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In a recent decision issued by the U.S. Court of Appeals for the Federal Circuit (“CAFC”), the CAFC affirmed the Trademark Trial and Appeal Board’s decision (the “Board”) to refuse a specimen under the Lanham Act.  See In re Siny Corp., 2019 USPQ2d 11362 (Fed. Cir. 2019) [precedential].  The court stated that the specimen did not qualify as a display associated with the goods. The applicant had tried to register the mark CASALANA for “knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories”. The applicant argued that its specimen, images of its website should be acceptable as a point of sale display associated with the goods. The Examining Attorney objected because the specimen did not include a means for ordering the goods.

The image of the webpage showed the goods with the mark CASALANA, and an explanation of the goods. Near the bottom of the webpage it stated, “For sales information” and there was a telephone number and email address in close proximity inviting customers to call. The Board relied on the case of In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014), for the rule that an invitation to call the applicant for additional information, including obtaining a quote for an order, does not provide a means for ordering the product. The rationale for this rule is that before acquiring this information via telephone, the customer did not have enough information to place an order.

Typically a display associated with the goods will contain information such as pricing details, order size, payment options, and information about shipping. If such information is provided, enough to allow the customer make a purchasing decision, along with contact information, it’s possible that a website could act as a display associated with the goods (assuming purchasers actually placed orders over the phone or through an email after viewing the information).  If all the important information to purchase the goods was acquired through another means other than the website, the website did not function as an example of use of the mark in commerce. See our webpage entitled, For Purposes Of Trademark Law, What Is Use In Commerce, for more information on this topic.

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The United States Court of Appeals for the Federal Circuit vacated and remanded the Board’s findings in Teresa H. Earnhardt v. Kerry Earnhardt, Inc., Opposition Nos. 91205331 and 91205338 (February 26, 2016). The Applicant sought to register the mark EARNHARDT COLLECTION for furniture in class 20 and custom construction of homes in class 37. A third party opposed the registration on grounds of likelihood of confusion and priority and on the ground that the proposed mark EARNHARDT COLLECTION is primarily merely a surname. The Opposer’s mark is DALE EARNHARDT for a variety of goods and services. The Applicant and Opposer agreed that the term Earnhardt alone is primarily merely a surname. However, they disagree about whether adding the term “Collection” to “Earnhardt” changes the commercial impression and diminishes the surname impression.

The United States Patent & Trademark Office will refuse a trademark on the Principal Register if the primary significance of the mark as a whole is a surname. See our web page entitled, Can You Use Your Name As A Trademark?, to review the test to determine if a mark is primarily merely a surname. Since the subject mark has two terms, the trademark must be evaluated in its entirety and not as two separate parts.

In addition, the mark must be considered in relationship to the goods and services that are identified in the trademark application. One important part of the analysis is the relative distinctiveness of the second term of the mark. This can be evaluated by classifying the second term as, fanciful, arbitrary, suggestive, descriptive or generic. Where the mark falls on this continuum is a question of fact. One question to ask in this analysis is does the mark as a whole convey a distinctive source identifying impression rather than conveying information about some aspect of the goods or services.

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Two recent decisions, one before the U.S. Supreme Court and one pending before the Federal Circuit have kept the United States Patent & Trademark Office (“USPTO”) busy writing Examination Guidance for Section 2(a) of the Lanham Act’s Disparagement Provision and Scandalous Provision. See Examination Guide 1-17. See also our webpage entitled, Trademarks That Falsely Suggest A Connection With Other Persons, where it is discussed that Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a) bars registration of trademarks that are immoral, deceptive, scandalous or if the mark falsely suggests a connection with other persons (living or dead), institutions, national symbols, or beliefs.

In Matal v. Tam, also known as “The Slants” case, the U.S. Supreme Court held that the provision of the Lanham Act Section 2(a) which has denied federal registration to trademarks that disparage or bring into contempt or disrepute any persons living or dead is unconstitutional under the Free Speech Clause of the First Amendment. This decision was issued on June 19, 2017. In this case, the applicant Simon Shiao Tam filed a trademark application with the USPTO for the name of his Asian-American rock band. The Slants are seeking to register the name for entertainment services in the nature of live musical performances. Mr. Tam was the lead singer of the band and he stated that he wanted to take back ownership of a word that created stereotypes in the Asian culture. See In re Simon Shiao Tam, 108 USPQ2d 1305 (TTAB 2013) [precedential].

The USPTO refused the application under Section 2(a) of the Lanham Act as being disparaging and offensive to a substantial composite of people of Asian descent. The U.S. Supreme Court unanimously held that the Disparagement Provision discriminates on the basis of viewpoint. Based on this decision, the Disparagement Provision of Section 2(a) is no longer a valid ground for refusal by the USPTO. The portions of the Trademark Manual of Examining Procedure §1203 that relate to examination under the Disparagement Provision no longer apply.

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David Elliot (“Plaintiff” or “Elliot”) filed an action in the Arizona District Court (later joined by Chris Gillespie), petitioning for cancellation of the GOOGLE trademark, claiming that it evolved into a generic term. The parties filed cross motions for summary judgment. In Elliot’s motion for summary judgment, he alleged that the majority of the relevant public uses the word “google” as a verb. Plaintiff argued that it is common to state “I googled it”. The Plaintiff argued that as a matter of law using a trademark as a verb constitutes generic use. In response, Google Inc. argued that verb use in and of itself does not constitute generic use.

The matter arrived in Court after the parties participated in arbitration before the National Arbitration Forum (“NAF”). Chris Gillespie had purchased over 760 domains incorporating the term “google” and pairing the term “google” with a brand, person or product. Google Inc. objected to the domain registrations and filed a complaint with NAF claiming domain name infringement, also known as cybersquatting. Google Inc. prevailed and the subject domain names were transferred to Google Inc.

The Plaintiff in the court case argued that the term “google” has become generic because it no longer identifys the source of the goods. The following marks are examples of trademarks that have been appropriated by the public and used as a generic name for a particular type of goods: (1) ASPIRIN, (2) CELLOPHANE AND (3) THERMOS. A trademark only becomes generic when the primary significance of the mark to the public is the name of a particular type of goods or services regardless of the source. In other words, the question to ask is does the relevant public perceive the primary significance of the term as identifying the producer or as identifying a type of product or service. To avoid “genercide”, a term should identify the producer. For more general information regarding how a trademark becomes generic, see our web page entitled, Merely Descriptive Or Generic?

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A few weeks ago, I posted a blog on a Sixth Circuit trademark case that addressed whether an entire application should be voided if a bona fide intent to use the mark in commerce was lacking. See our blog post entitled, Should An Entire Application Be Voided If A Bona Fide Intent To Use The Mark Is Lacking? In our blog, we discussed the Trademark Trial and Appeal Board’s (the “Board”) position on the issue which was not consistent. Seeking further guidance, we turn to the Federal Circuit, wherein the issue was addressed in Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463 (TTAB 2013) [precedential]. Here, the applicant filed for the mark IWATCH in standard character format for watches, clocks and watch accessories. The opposer Swatch AG (Swatch SA and Swatch Ltd.) challenged the application on grounds of likelihood of confusion with its registered mark for SWATCH for watches and lack of bona fide intent to use the mark in commerce.

The Board analyzed the marks IWATCH and SWATCH and determined that the marks differed significantly in sound, meaning, and commercial impression. The claim under 2(d) of the Trademark Act was dismissed and the Board moved on to address the second claim of lack of bona fide intent to use the mark in commerce. Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), states in part that: “[A] person who has a bona fide intention, under circumstances showing the good faith of such person to use a trademark in commerce may request registration of its trademark on the principal register…” The burden is on the opposer to demonstrate by a preponderance of the evidence that the applicant lacked a bona fide intent to use the mark in commerce at the time it filed the application. There must be evidence in the form of documentation substantiating action taken by the applicant. The inquiry does not delve into the applicant’s subjective state of mind.

One method often implemented by the opposer is to prove that the applicant does not have documentary evidence to support its claim of a bona fide intent to use the mark. Such a showing is typically sufficient to prove lack of intention under Section 1(b) of the Trademark Act. Then, the burden shifts to the applicant to produce evidence explaining the failure to have documentary evidence.

Here, the applicant did produce several documents, but the Board determined the evidence was insufficient. The applicant produced a trademark search, an email summarizing a call with the Examining Attorney wherein there was a discussion that the IWATCH did not have interactive features, and three internal emails showing stylized versions of the mark and an image of a clock and two images of watches featuring the IWATCH mark. However, the images were created to support the trademark application and not for promotional activity. The Board concluded that the documents presented did not establish an intent to use the mark in commerce.

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The Sixth Circuit recently answered this question. See Kelly Servs., et al. v. Creative Harbor, Case No. 16-1200 (6th Cir., Jan. 23, 2017), where the Sixth Circuit remanded the case back to the district court to evaluate all the goods and services in the trademark application and to determine if a bona fide intent existed for some of the goods and services. The parties in this matter both filed a trademark application at the United States Patent & Trademark Office (“USPTO”) for the mark WORKWIRE for mobile software applications in the employment field.

Creative Harbor, LLC (“Creative Harbor”) filed its intent-to-use application on February 19, 2014. The other party Kelly Services, Inc. (“Kelly Services”) filed its intent-to-use application for the mark WORKWIRE on August 13, 2014. Creative Harbor discovered that Kelly Services was using the mark WORKWIRE and sent a Cease & Desist demand. In response, Kelly Services filed a declaratory judgment action challenging Creative Harbor’s claim that it had priority.

The district court held that Creative Harbor lacked a bona fide intent to use the mark in commerce for some of the goods and services identified in the trademark application. The district court voided the entire application and Creative Harbor appealed to the Sixth Circuit. The Circuit Court placed emphasis on the deposition testimony of the CEO of Creative Harbor. The CEO stated that he wanted the intent-to-use application to cover goods and services, not only for the present, but also for the future. He further testified that the identification in the application was to cover goods for future exploration and expansion; “to keep the option open to at some point do that”. The Sixth Circuit concluded that Creative Harbor did not have a firm intention to use the mark with all the goods and services, but instead was reserving a right in the mark in case it ever wanted to expand its commercial line of goods.

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The United States Court of Appeals for the Federal Circuit had to determine if JobDiva Inc. (“Appellant” or “JobDiva”) used its trademark JOBDIVA in conjunction with the services registered in its registration, “personnel placement and recruitment services; computer services, namely, providing databases featuring recruitment and employment, employment advertising, career information and resources, resume creation, resume transmittals and communication of responses thereto via a global computer network.” The Court started out by citing the general principle that a registrant must use its mark in accordance with goods and services recited in the trademark registration. For more details pertaining to service marks, see our webpage entitled, What Is A Service Mark And How Can It Be Protected?

The Board summarized the offerings of JobDiva as “Software-as-a-Service”. In other words, JobDiva allows users to access its software over the Internet. By hosting the software remotely, there is no need to download the software onto one’s own personal computer. The Board reviewed dictionary definitions for JobDiva’s services and decided that JobDiva had to show that it was finding and placing people in jobs at other companies. There was evidence in the record via testimony from JobDiva’s CEO that JobDiva’s software performed personnel placement and recruitment functions. After JobDiva presented its evidence, the Board held that it only provided software, and not additional personnel placement and recruitment services. The Board demanded that JobDiva prove it placed clients in jobs independent of the activity performed through the software. The Federal Circuit disagreed with the Board’s approach. See In re JobDiva, Inc., 1122 (Fed. Cir. 2016) [precedential].

The Federal Circuit Court pointed out that a trademark that is used with a web-based offering will require careful analysis to determine whether the offering is a product or a service or potentially both a product and a service. In fact, the Court held that the Board erred in understanding the law when requiring that JobDiva produce evidence that it provided personnel placement and recruitment services independent of the offering of its software. The Court further held that even though a service may be performed by a company’s software, the company may still be rendering a service. See also, On-Line Careline Inc. v. Am. OnLine Inc., 229 F.3d 1080 (Fed. Cir. 2000), where this Court held that AOL used its trademark ONLINE TODAY in connection with services, even though the services were provided by software. In that case, the Federal Circuit recognized that software may be used by companies to provide services. Indeed, a trademark applicant may file a trademark application wherein it identifies both goods and services under the same mark. See 37 C.F.R. §2.86.

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The United States Court of Appeals, Federal Circuit issued a ruling on November 14, 2016 that encouraged small business owners all over the country. This was a David and Goliath battle that started in 2009. The Christian Faith Fellowship Church (the “Church” or “Appellant”) takes on Goliath, Adidas AG, the apparel giant (“Adidas” or the “Appellee”). The Church started selling apparel and caps with the mark ADD A ZERO in January 2005 as a campaign to encourage fundraising for the church by increasing the contribution of the donor by adding one zero. In February 2005, the Church made one sale of two caps to an out-of-state resident bearing the mark ADD A ZERO. One month later, the Appellant filed for federal trademark registration with the United States Patent & Trademark Office (“USPTO”). Approximately four years later, Adidas filed a trademark application for the mark ADIZERO for clothing.

The USPTO refused Adidas’ application based on likelihood of confusion grounds citing the Church’s mark ADD A ZERO as a conflict. Adidas filed a petition to cancel with the Trademark Trial and Appeal Board (the “Board”) based on various grounds, one of which was failure to use the mark in commerce prior to filing the trademark application. The Board found in Adidas’ favor holding the one sale made by the Church was de minimus and thus not sufficient to satisfy the “use in commerce” requirement. The Church filed this appeal.

The Board further held that the sale for $38.34 did not effect interstate commerce. The Federal Circuit reversed the Board’s decision, holding that it was in error for the Board to rely on a precedent that required a trademark applicant to engage in commercial activity beyond the Commerce Clause’s threshold. The Lanham Act defines commerce as all activity lawfully regulated by Congress. The Federal Circuit held that Congress did have power to regulate the out-of-state sale of the two caps made by the Church. For a basic understanding of use in commerce, see our webpage entitled, For The Purposes Of Trademark Law What Is Use In Commerce.

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A year ago,  I posted a blog that featured a case that had appealed to the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) and the Court reversed a decision by the Trademark Trial and Appeal Board (“TTAB” or the “Board”). The case of In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential], expanded the “something more” standard. I see more and more cases relying on the “something more” standard to prevail in likelihood of confusion disputes. To provide readers with a thorough understanding of this standard, it is necessary to review the cases of In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003) and Jacobs v. International Multifoods Corp., 668 F.2d 1234 (CCPA 1982) (the “Jacobs” case).

The Coors Brewing Company (“Coors”) was seeking to register the mark BLUE MOON & Design for a brand of beer. The Examining Attorney refused the trademark application for BLUE MOON & Design on the ground that it would cause a likelihood of confusion with another registered mark for BLUE MOON & Design for restaurant services. The Board upheld the Examiner’s refusal based on the determination that the two marks were similar for likelihood of confusion purposes and that restaurant services and beer were related goods and services.

The Federal Circuit court agreed with the determination that the trademarks were similar with regard to appearance, sound, meaning and commercial impression, but disagreed with the conclusion that restaurant services were related to beer. The Federal Circuit compared the two design marks and found that generally the marks were similar due to the literal portion of the marks being identical “BLUE MOON”. However, there were differences in the design logos that dictated that the finding of similarity between the marks was less important.

The Court in Coors refers to the earlier decision in Jacobs to highlight the ruling that restaurants serving both food and beverages will not be enough to render food and beverages related to restaurant services for purposes of likelihood of confusion. The Jacobs Case held that something more needs to be demonstrated to prove a likelihood of confusion between even identical marks used for food products and restaurant services. Coors offered exceptionally persuasive evidence on the issue of whether beer is related to restaurant services.

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