Pattishall IP Blog

June 19, 2017

50 Years After Lanham Act’s Enactment, The Supreme Court’s Slants Decision Unanimously Holds Its Clause Barring Disparaging Marks Unconstitutional Under First Amendment; Far-Reaching Impact Will Cover The Washington Redskins and Likely Far Beyond

Filed under: Constitution, Litigation, TM Registration, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:23 pm

By Belinda J. Scrimenti

As its 2016-17 term concluded, the U.S. Supreme Court held unanimously in Matal v. Tam[1] that the disparagement clause of the Lanham Act, Section 2(a), is unconstitutional in violation of the First Amendment’s Free Speech Clause.  The clause at issue—a provision unchanged from the original 1946 enactment of the Lanham Act—prohibits registration of marks which “may disparage . . .  persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.” [2]  The Opinion of the Court, written by Justice Alito – joined in various parts by all of the Justices – reflected the sacred nature of the First Amendment protections at stake when applicants seek to register trademarks deemed offensive.  A concurring opinion by Justice Kennedy, joined by Justices Ginsburg, Sotomayor and Kagan, further highlighted the fundamental simplicity of the First Amendment protection that must be accorded trademark registration to prevent the slippery slope of governmental censorship.

The decision was issued in the case involving an Asian rock band seeking to trademark its name the “Slants,” which band founder Simon Tam asserts he selected in order “‘reclaim’  the term and drain its denigrating force as a derogatory term for Asian persons.”  But the decision’s repercussions will be much broader – most directly to the efforts by the Washington Redskins ownership to defend against longstanding efforts by Native American activists to cancel its trademark registrations under the same provision of the Lanham Act.

The Court’s opinion began with a primer on trademark law, outlining its history and origins, and purposes. Among the authorities cited were two articles by this Firm’s name partner, Beverly Pattishall, a highly recognized trademark expert of his generation.[3]  The Court also noted the now more than 2 million active marks on the federal register.  The Court next quickly dispensed with the argument put forth by Tam (which may have distinguished the case from that of the Redskins’ case, as cancellation actions brought by individual Native American persons) that the clause did not apply to Tam’s band name because the definition of “persons” included only “natural and juristic” persons, not “non-juristic” entities such as racial and ethnic groups.  Although Tam had not raised the argument in the Federal Circuit or on the writ of certiorari, the Court nevertheless expressed the necessity of rejecting this claim.[4]  The Court concluded that the disparagement clause did prohibit registration of terms that “disparage persons who share a common race or ethnicity.”[5]

The Court then turned to the fundamental issue of whether the clause violates the Free Speech Clause of the First Amendment.  The Court first rejected the Government’s arguments that the registration of trademarks constitutes government speech, not private speech.  The Court pointed out that if “private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”[6]  The Court concluded that “it is far-fetched to suggest that the content of a registered mark is government speech,” noting that if the federal registration makes a mark government speech, “the Federal Government is babbling prodigiously and incoherently.”[7]  Significantly, the Court noted the “most worrisome implication” of the Government’s argument concerned the copyright registration system, in that such a ruling could eliminate similar protections for books and writings based on the expressive content.[8]

In the next section of the Opinion, Justice Alito (joined by an unusual mix of Justices – Roberts, Thomas and Breyer) rejected the Government’s assertion that the clause should be upheld because it is “subsidized speech.” The Court handily rejected the argument, noting that the situation was readily distinguished from cases involving government cash or equivalent subsidies, because, in contrast, the trademark applicant must pay fees.[9]  The Court concluded that the clause also could not be protected as analogous to cases in which a unit of government creates a limited public forum for private speech where some content and speaker-based provisions may be allowed, noting that even in such situations “viewpoint discrimination” is forbidden.[10]

Having concluded that trademark registration is not government speech, Justice Alito’s Opinion next turned to the question of whether trademarks are commercial speech and therefore subject to relaxed scrutiny. Quickly dismissing the competing claims of the Government and Tam as to whether trademarks are all commercial speech or have an expressive component, he found that the disparagement clause failed even the relaxed test of a commercial speech restriction that must serve “a substantial interest” and be “narrowly drawn.”[11]  Justice Alito rejected as “substantial interests, the Government’s interest in preventing offensive speech as “that idea strikes at the heart of the First Amendment.”  Finally, he rejected the asserted interest in protecting the “orderly flow of commerce” as “far too broad.”

The concluding remarks by Justice Alito are particularly notable in this era of a super-charged political environment:  “The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates.  If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.”[12]

The ramifications of the Court’s decision are yet to be seen.  The first, nearly certain result, will be the upholding of the Washington Redskin’s registrations in the face of challenge under Section 2(a).[13]  Less certain is the greater fallout.  Will the ruling open the floodgates for applications seeking registrations of any number of offensive, hateful and otherwise distasteful marks?  While recognizing the source and consumer protection functions of trademarks, Justice Kennedy noted in his concurrence that there remain only “a few categories of speech that the government can regulate or punish—for instance, fraud, defamation, or incitement . . . and a few other narrow exceptions.”[14]  It seems that the next wave of litigation in the trademark arena may now revolve around these narrow First Amendment exceptions, rather than traditional trademark principles.  Will today’s nasty tweet or violent Facebook rant become tomorrow’s trademark?  While the Tam decision decisively answers one question, it may open the door to many more questions of what trademarks are permissible, assuming no traditional trademark grounds for refusal.

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[1] Matal, Interim Director, USPTO v. Tam, No. 15-1293 (June 19, 2017) (8-0 decision; Justice  Gorsuch took no part in the decision).  The full opinion can be found at: https://www.supremeCourt.gov/opinions/16pdf/15-1293_1o13.pdf.
[2] 15 U.S.C. § 1052(a).
[3] Slip Op. at 2-5. Citing, treatises and compendiums including 3 J. McCarthy, Trademarks and Unfair Competition §19:8 (4th ed. 2017); Pattishall, The Constitutional Foundations of American Trademark Law, 78 Trademark Rep. 456, 457–458 (1988); Pattishall, Two Hundred Years of American Trademark Law, 68 Trademark Rep. 121, 121–123 (1978), Id. at 2.
[4] All Justices concurred in this portion of the opinion with the exception of Justice Thomas who saw “no reason to address this legal question.”  J. Thomas concurring, Slip. Op. at 1.
[5] Slip. Op., at 11.
[6] Id. at 14.
[7] Id. at 14-15, citing Pro-Football, Inc. (Washington Redskins) Amicus brief and numerous examples of such phrases.
[8] Id. at 18.
[9] Id. at 18-20.
[10] Id. at 22.  But in dicta, the Court noted it left open the question of whether such analysis framework is appropriate for free speech challenges to the provisions of the Lanham Act.
[11] Id. at 23-24, citing Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U.S. 557 (1980), but leaving open the question of whether Central Hudson provides the appropriate test for deciding free speech challenges to provisions of the Lanham Act.
[12] Id. at 26.
[13] Pro Football, Inc. v. Blackhorse, Case No. 15-1874 (4th Circ.).
[14] J. Kennedy concurring, Slip. Op. at 2, citing United States v. Stevens, 559 U. S. 460, 468 (2010).

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

June 14, 2017

Drake Copied Jimmy Smith’s Rap. But Court Says it’s not Copyright Infringement, it’s Transformative Fair Use.

Filed under: Copyright, Litigation — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:42 am

By Jason Koransky

Jimmy Smith is considered to have been one of the most influential and accomplished organists in the history of jazz. His soulful and swinging Hammond B-3 playing cemented the organ as a fixture in jazz, and laid the musical groundwork for generations of players to come. And while Smith, who died in 2005, was not known for his rapping, on the last track of his 1982 album Off The Top, he laid down the track “Jimmy Smith Rap,” which is a spoken word narrative about the album’s recording session. The “rap” goes as follows:

Good God Almighty, like back in the old days.

You know, years ago they had the A&R men to tell you what to play, how to play it and you know whether it’s disco rock, but we just told Bruce that we want a straight edge jazz so we got the fellas together Grady Tate, Ron Carter, George Benson, Stanley Turrentine.

Stanley was coming off a cool jazz festival, Ron was coming off a cool jazz festival. And we just went in the studio and we did it.

We had the champagne in the studio, of course, you know, compliments of the company and we just laid back and did it.

Also, Grady Tate’s wife brought us down some home cooked chicken and we just laid back and we was chomping on chicken and having a ball.

Jazz is the only real music that’s gonna last. All that other bullshit is here today and gone tomorrow. But jazz was, is and always will be.

We may not do this sort of recording again, I may not get with the fellas again. George, Ron, Grady Tate, Stanley Turrentine.

So we hope you enjoy listening to this album half as much as we enjoyed playing it for you.

Because we had a ball.

There’s nothing particularly enlightening or interesting about the “rap,” but I included all the words for a reason — it became the subject of a copyright case pitting jazz against rap.

Hip-hop artist Drake is not known for jazz organ, yet he’s become one of the most popular rappers on the planet. He apparently also has an ear for jazz. On his 2013 album Nothing Was The Same, he recorded “Pound Cake/Paris Morton Music 2,” on which Drake samples about 35 seconds of “Jimmy Smith Rap,” including the following lines:

Good God Almighty, like back in the old days.

You know, years ago they had the A&R men to tell you what to play, how to play it and  you know whether it’s disco rock, but we just went in the studio and we did it.

We had champagne in the studio, of course, you know, compliments of the company, and we just laid back and did it.

So we hope you enjoy listening to this album half as much as we enjoyed playing it for you. Because we had a ball.

Only real music is gonna last, all that other bullshit is here today and gone tomorrow.

A comparison between Smith’s text and Drake’s rap shows that Drake sampled a substantial portion of Smith’s work. While Drake and his record label obtained a license for the sound recording of “Jimmy Smith Rap,” they did not obtain a license for the composition. This led to Smith’s estate suing Drake, his record label, and numerous other entities for copyright infringement. Estate of James Oscar Smith v. Cash Money Records, Inc., et al., Case No. 14-cv-2703 (S.D.N.Y.).

On its face, this case does not appear to be appropriate for a summary judgment fair use ruling. Yet on May 30, the court granted the defendants’ motion for summary judgment, ruling that Drake’s use of the composition was a transformative fair use. The court’s analysis of the first fair use factor — the purpose and character of the use — was particularly interesting. The court focused on Drake removing material from Smith’s line, “Jazz is the only real music that’s gonna last. All that other bullshit is here today and gone tomorrow. But jazz was, is and always will be,” so that it read “Only real music is gonna last, all that other bullshit is here today and gone tomorrow.” The court found that the purpose of Drake’s track was “sharply different” from the purpose of Smith’s track. It found that while Smith focused on the primacy of jazz, Drake transformed the song to discuss just “real music” — without any mention of jazz.

This decision will likely be cited frequently by defendants who claim fair use in copyright litigation, as it provides an extremely broad interpretation of  what constitutes a transformative use. Simply put, according to this decision, a small change in lyrics which arguably shifts their meaning can constitute a transformative fair use. This rationale arguably could be applied to other media subject to a copyright claim.

 

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

June 8, 2017

PICK THE RIGHT TRADEMARK AND YOU WON’T HAVE TO SUE PEOPLE

Filed under: Trademark (General) — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:29 am

By Janet Marvel

A case filed recently is an object lesson in the best way to pick a trademark.  The Color Run, LLC sued My School Color Run, LLC for using COLOR RUN for organizing 5K races where people pay to be covered with dyed cornstarch.

If I were the defendant, I would argue that COLOR RUN describes races where participants end up covered in different colors, and the mark, as descriptive, is not legally protected.

If I were the plaintiff, I would argue that COLOR only suggests the nature of the race, i.e., you have to think about it to determine what the race is about, and suggestive marks are legally protected.  I would also argue that I have set up COLOR RUN races for such a long time, they are well-known and my trademark rights are very strong.

If The Color Run tolerates unauthorized use of its mark, it might lose its rights.  That is true of every trademark owner.  But enforcement burdens can be eased by picking a mark in the first place that is easier to protect.  Had The Color Run picked a made-up word for its races, the mark would be easier and less expensive to protect.  On the other hand, no one would have any idea of the nature of the race just by hearing the name.

There is a trick to picking a good mark.  Trademarks are divided into four categories of protection.  The first category includes made-up and arbitrary terms.  Made-up terms, like GOOGLE for web searching services, and arbitrary terms (dictionary words used to designate something other than their standard meaning), like APPLE computers, are easiest to protect.  After all, why would anyone need to use a made-up or arbitrary word to describe what their product is, or what it does?

Made-up and arbitrary marks work well in the tech sector, where people are accustomed to them.  But in some more sober business environments, (say, industrial equipment) these terms might seem over-the-top.

Many marketers prefer the category comprising “descriptive marks.”  Descriptive marks, not surprisingly, describe some characteristics of products.  They can become trademarks if they are used for a long time and become well-known, but they don’t start out as trademarks.  You will have to prove they are distinctive to win your case (there are exceptions, but that’s a post for another day).  Examples of descriptive marks include HOLIDAY INN and BANK OF AMERICA.

Generic terms can never be trademarks.  No pencil manufacturer can stop a competitor from calling its products “pencils.”  “Pencil” is the generic name of the type of thing.

The holy grail for trademark owners may be the “suggestive” mark.  Suggestive marks evoke a characteristic of a product, but they don’t describe it.  They aren’t too weird for markets where consumers want marks that evoke trust (e.g. manufacturing supplies).  They aren’t too boring for the tech market.  Examples include CHICKEN OF THE SEA for tuna, PLAYBOY for men’s magazines, GLASS DOCTOR window repair, and EXTEND YOUR BEAUTY for eyelash extensions.

Unfortunately, the distinction between terms that merely describe a product (descriptive marks) and terms that suggest a product characteristic (suggestive marks) is murky.  A trademark lawyer can help you determine where your mark likely fits.

The bottom line:  If you can pick a mark that is coined or arbitrary, then go for it.  Fewer people will copy it; and if they do, they probably intend to infringe.  That makes your case much easier.  If you can’t pick a coined or arbitrary mark, go for one that is suggestive.  You won’t have to prove that the mark has become distinctive in the marketplace to protect it (although in litigation you may do it anyway, just to be on the safe side).  Suggestive marks are more distinctive than descriptive ones, so there is less justification for copying.  You are likely to face fewer infringers, and you have a better chance of winning disputes.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

May 22, 2017

11th Circuit Requires Copyright Registration Certificate in Hand to File Infringement Action, Deepening Circuit Split

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:13 pm

By Jason Koransky

The Copyright Act sets what seems to be a straightforward threshold for a plaintiff to bring an infringement claim — “preregistration or registration of the copyright claim.” 17 U.S.C. § 411(a). This seemingly simple requirement, however, has led to a significant circuit split on whether “registration” occurs upon merely filing an application with the Copyright Office or when the Copyright Office actually issues a registration certificate. This split only deepened on May 18, 2017, when the Eleventh Circuit ruled in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC (Case No. 16-13726) that a plaintiff must have a registration certificate in order to bring a claim.[1]

The Eleventh Circuit detailed the existing circuit split, and sided with the Tenth Circuit to adopt the registration requirement. In contrast, the Ninth and Fifth Circuits have both held a plaintiff needs only to have filed an application for the asserted copyright in order to bring a suit. This approach assumes that the registration itself eventually issues in due course.  The “application” rule was approved by the Eighth Circuit in dicta, while the Seventh Circuit has endorsed — also in dicta — both approaches in separate matters. Further, the First and Second Circuits have discussed this split, yet neither court has expressly endorsed an approach.

Considering the potentially long delays in obtaining a registration after filing an application with the Copyright Office, the Eleventh Circuit’s decision in Fourth Estate emphasizes that copyright owners should be diligent in filing copyright applications in a timely manner. Otherwise, if the proper venue for an infringement claim is the Eleventh Circuit, a party could be left with no recourse in court while waiting . . . and waiting . . . to obtain a copyright registration.

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[1] The decision is available for download at the court’s website, http://media.ca11.uscourts.gov/opinions/pub/files/201613726.pdf.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

May 12, 2017

Humanity Hates Trump may ________ Cards Against Humanity’s Trademark and Copyrights

Filed under: Copyright, Licensing, Trade Dress, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:42 am

By Paul A. Borovay

Chicago’s own Cards Against Humanity, the vulgar/raunchy/funny/the-opposite-of-politically-correct card game, filed a lawsuit against SCS Direct for its selling card sets called “Humanity Hates Trump.”[1]  Humanity Hates Trump – along with Humanity Hates Hillary Too!, to be non-partisan about it all – card sets are available on its website.[2]

SCS Direct displays the following disclaimer on its website:

This set is in no way endorsed or affiliated with Donald J. Trump himself or Cards Against Humanity™, a registered trademark of Cards Against Humanity LLC, nor does it represent the views of SCS Direct Inc.

The focus of the case is whether the Humanity Hates Trump cards infringe Cards Against Humanity’s trademark and copyrights.

Cards Against Humanity makes its cards available for free download through a Creative Commons license, namely, the “Attribution-Non Commercial-ShareAlike 2.0 Generic (CC BY-NC-SA 2.0)” license.[3]  While the name is a mouthful, the license is actually rather simple.  Licensees can share, copy, and adapt the Cards Against Humanity game as long as they give credit to Cards Against Humanity, make their adapted product available under the same license, and not use the borrowed material for commercial purposes.[4]

SCS Direct clearly sells its Humanity Hates Trump cards online for commercial gain, and its cards use the same simplistic, black and white appearance of the Cards Against Humanity products.

The case touches on several interesting issues.  Is Cards Against product appearance protected under trade dress law?  Are its cards protected under copyright law?  Do the Humanity Hates Trump cards “remix, transform, and build upon the [Cards Against Humanity] material,” as described in the Creative Commons license?  Or, are the Humanity Hates Trump cards a separate product not covered under the CC BY-NC-SA 2.0 license?  How much latitude do licensees have under the license, or Creative Commons licenses in general, with respect to making, offering (for free), or selling “adapted” products?  Maybe none, maybe some.  We’ll see.

_____________________________

[1] Cards Against Humanity LLC v. SCS Direct Inc. et al., case number 1:17-cv-02781 (E.D.N.Y. May 8, 2017).
[2] See https://humanityhatestrump.com/.
[3] See https://cardsagainsthumanity.com/ and http://s3.amazonaws.com/cah/CAH_MainGame.pdf.
[4] The license is available on the Creative Commons website.  See https://creativecommons.org/licenses/by-nc-sa/2.0/.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

May 9, 2017

Charging Bull vs. Fearless Girl

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:48 am

 

By Robert W. Sacoff

Charging Bull vs. Fearless Girl.  Now here’s a cultural and legal tangle you don’t see every day.  On the copyright front, Fortune Magazine had an interesting article at http://fortune.com/2017/04/16/fearless-girl-copyright/ suggesting that the contrarian little girl statue confronting the charging Wall Street Bull would not violate the Visual Artist Protection Act.  Even if the Bull were considered in the category of site-specific art, which has not fared well under VARA, as a University of Michigan blog post discusses at http://artsatmichigan.umich.edu/ink/2014/02/19/site-specific-art-and-the-law/.  The socio-economic debate will likely outlive any legal challenge or threat.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 31, 2017

2017 “Women of Influence” Awards

Filed under: Pattishall — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:21 am


Ashly Boesche
was recognized as a Chicago Nominee for the 2017 “Women of Influence” Awards, an inaugural award presented by the Coalition of Women’s Initiatives in Law and Best Lawyers. Ashly is among a select few identified by her colleagues as an exceptional practitioner of law. The 2017 Women of Influence feature appears in Best Lawyers’ Spring 2017 Business Edition. Click here for more info.

 

 

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 23, 2017

“Give Me A C . . .” (for Copyrightable)

Filed under: Copyright — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:06 pm

By Seth I. Appel

On March 22, the Supreme Court found that Varsity Brands’ cheerleader uniform designs –arrangements of colors, shapes, stripes and chevrons, shown below  – may be subject to copyright protection.  Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. __ (2017), https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf.

Varsity Brands, the leading producer of cheerleader uniforms, brought suit for copyright infringement based on a competitor’s sale of similar uniforms.  In order to prevail, Varsity Brands had to prove that it owned valid copyrights in its designs.

Copyright protects “works of authorship” including “pictorial, graphic, and sculptural works.”  17 U.S.C. § 102(a)(5).  It typically does not protect useful articles.  However, the design of a useful article may be protected to the extent that “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  17 U.S.C. § 101.

In yesterday’s  decision, the Supreme Court clarified the “separability” analysis.  It held that a feature incorporated into the design of a useful article is eligible for copyright if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work on its own or when fixed in some other medium.  Under this test, Varsity Brands’ designs were sufficiently separable to permit copyright protection.

Courts previously have struggled with the “separability” analysis, leading to different tests throughout the country.  The Supreme Court yesterday rejected the notion of “physical” separability adopted by some courts and commentators.  The statutory text of the Copyright Act, the Court explained, indicates that “separability is a conceptual undertaking.”

The Copyright Act does not expressly protect fashion designs, but yesterday’s decision will make it easier for designers to protect and enforce their creative works.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 17, 2017

Game Over for EMPORIUM ARCADE BAR service mark: “Merely Descriptive”

Filed under: TM Registration, Trademark (General), TTAB — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:31 am

 

 

 

 

By Jacquelyn R. Prom

On March 8, 2017, the Federal Circuit ruled[1] that the phrase ‘Emporium Arcade Bar’ is merely descriptive of arcade and bar services.

Emporium Arcade Bar is a popular Chicago bar offering a variety of old-school arcade games, pinball machines, draft beers, and cocktails. This crowd-pleasing spot opened its first location in 2012 in Wicker Park. In 2014, it opened a second location in Logan Square.

In 2014, Emporium also applied to register     as a service mark.[2] The Examining Attorney refused registration on the ground that the phrase is merely descriptive of Emporium’s arcade and bar services. Emporium tried to overcome the refusal by disclaiming the exclusive right to use ‘arcade bar’ apart from the mark as a whole. The Examining Attorney, however, required the additional disclaimer of ’emporium’ before the trademark could register. Emporium refused. It argued a disclaimer for ’emporium’ was unnecessary because the term does not immediately convey knowledge of its arcade and bar services. The Examining Attorney disagreed and issued a final refusal. Emporium appealed to the Trademark Trial and Appeal Board.

The TTAB affirmed the refusal,[3] finding ’emporium’ to be merely descriptive of arcade and bar services. Emporium again appealed, this time to the Federal Circuit.

The Federal Circuit affirmed the TTAB’s decision, ruling that the composite mark could not be registered without a disclaimer of all the wording due to each term’s descriptive nature. In reaching this conclusion, the court relied on dictionary definitions of emporium, arcade, and bar, as well as third-party trademark registrations that disclaimed ’emporium’ for restaurant, catering, and bar services.[4] The Federal Circuit also rejected Emporium’s argument that ‘Emporium Arcade Bar’ is a unitary mark. For these reasons, the court held ‘Emporium Arcade Bar’ was merely descriptive.

So for now it is game over for ‘Emporium Arcade Bar’ unless it is willing to disclaim all the wording in the composite mark, including emporium.

_________________

[1] In re: Ddmb, Inc., Appellant, No. 2016-2037, 2017 WL 915102 (Fed. Cir. Mar. 8, 2017)

[2] Ser. No. 86/312,296

[3] In re Ddmb Inc., 86312296, 2016 WL 552609 (Jan. 29, 2016)

[4] E.g., Reg. No. 2216510 for the mark THE FLYING SAUCER DRAUGHT EMPORIUM, registered with a disclaimer of DRAUGHT EMPORIUM for “restaurant and bar services”; Reg. No. 3304948 for the mark MCDADE’S EMPORIUM, registered on the Supplemental Register with a disclaimer of EMPORIUM for “restaurant and bar services”; Reg. No. 2741163 for the mark THE FOOD EMPORIUM, registered under Section 2(f) with a claim of acquired distinctiveness and with a disclaimer of EMPORIUM for “retail grocery store and delicatessen services” and “catering and take-out delicatessen services”; and Reg. No. 2352358 for the mark GARDEN EMPORIUM, registered with a disclaimer of EMPORIUM for “catering services and restaurant services.”

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 8, 2017

Pattishall Prevails in 5th Circuit

Filed under: Litigation, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:02 pm

By Phillip Barengolts

Phil Barengolts and Jessica Ekhoff prevailed in the U.S. Court of Appeals for the Fifth Circuit for Insignia Marketing and Christine McAtee in Vetter v. McAtee, No. 15-20575 (5th Cir. March 1, 2017), http://www.ca5.uscourts.gov/opinions/pub/15/15-20575-CV0.pdf. The Court upheld Insignia Marketing’s trial victory and affirmed the denial of Vetter’s request for attorneys’ fees against our clients.  The Court held the Lanham Act’s “fee-shifting provision vests significant discretion in the district courts to grant or deny attorneys’ fees on a case-by-case basis.”  The case was held not “exceptional” under the standards announced in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

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