Pattishall IP Blog

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.

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[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 2, 2017

The Marshall Tucker Band is still “Searchin’ for a Rainbow”[1] – and a trademark infringement that works

Filed under: TM Registration, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:24 pm

Paul BorovayBy Paul A. Borovay

On March 1, 2017, a South Carolina federal judge dismissed The Marshall Tucker Band’s complaint against its publishing company alleging trademark infringement and dilution.[2]

The judge based her decision on the band’s failure to allege the publisher used the band’s trademarks in commerce.  The band relied entirely on the publisher’s trademark registrations, [3] as well as its statements to support its trademark applications that its marks were “now in use in . . . commerce.”

To establish trademark infringement under 15 U.S.C. § 1125(a) of the Lanham Act, a plaintiff must prove five elements, including that the defendant uses the mark “in commerce.”[4]  Section 15 U.S.C. § 1127 defines the term “use in commerce” to mean “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

Stating that a mark is “now in use in . . . commerce” while prosecuting a trademark application is not the same thing as “using” a mark “in commerce.”  Judge Lewis cited Kusek v. Family Circle, Inc., 894 F. Supp. 522, 532 (D. Mass. 1995) for this notable proposition: “a federal registration [of a trademark] gives the owner of a mark legal rights and benefits, [but] its mere registration does not create the mark nor amount to ‘use’ of the mark [, and, therefore,] trademark registration per se cannot be considered as a use in commerce.”

While it has certainly been a “Long Hard Ride”[5] for The Marshall Tucker Band, the decision shows that a plaintiff cannot rely solely on defendants’ statements while prosecuting a trademark application to meet the Lanham Act’s “use in commerce” requirement.

______________________________

[1] “Searchin’ for a Rainbow” is the fourth studio album by The Marshall Tucker Band.
[2] Marshall Tucker Band Inc, The et al v. M T Industries Inc et al, No. 7:16-cv-00420 (D.S.C. March 1, 2017)
[3] See United States Trademark Reg. Nos. 4616427 and 4616428.
[4] 15 U.S.C. § 1125(a) requires the plaintiff to prove the following five elements: (1) that it possesses a mark; (2) that the defendant used the mark; (3) that the defendant’s use of the mark occurred in commerce; (4) that the defendant used the mark in connection with the sale, offering for sale, distribution, or advertising of goods or services; and (5) that the defendant used the mark in a manner likely to confuse consumers.
[5] “Long Hard Ride” is the fifth studio album by The Marshall Tucker Band.

 

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.

December 22, 2015

Federal Circuit Holds: “Disparagement” Clause of Lanham Act Violates the First Amendment

Filed under: Constitution, TM Registration, Trademark (General), TTAB — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:13 pm

Widmaier_Uli_1 F LRBy: Uli Widmaier

I.  The Court’s Holding:

Section 2(a) of the Lanham Act, 15 USC § 1052(a), provides that trademarks that “disparage . . . persons, living or dead, institutions, beliefs, or national symbols” shall not be federally registered (emphasis added).

On December 22, 2015, the Court of Appeals for the Federal Circuit, ruling en banc, held that this clause “is unconstitutional because it violates the First Amendment.” See In re Simon Shiao Tam, No. 2014-1203, slip op. at 62 (Dec. 22, 2015). Based on this holding, the Court vacated the Trademark Trial and Appeal Board’s determination that the mark THE SLANTS for “Entertainment in the nature of live performances by a musical band” is unregistrable as disparaging people of Asian descent.

II.   Practical Consequences:

The Federal Circuit is the statutorily designated Court of Appeals for all USPTO actions, see 15 USC § 1071(a). By holding that Section 2(a)’s disparagement clause is unconstitutional, In re Tam necessarily invalidates not only that clause, but also all USPTO precedents and rules that are based on in. Therefore, In re Tam has several immediate practical consequences:

  • Any disparagement grounds in currently pending Office Actions are no longer valid.
  • Any disparagement claims in currently pending opposition actions or petitions for cancellation must be withdrawn or dismissed.
  • No future trademark applications can be refused registration on disparagement grounds.
  • No future opposition or cancellation actions can validly be based on disparagement claims.

This describes the situation today. But it may not be the end of the matter. The issue may be bound for Supreme Court review, particularly given that a circuit split may emerge in short order. The famous REDSKINS case, in which the Board used the disparagement clause to cancel six trademark registrations of the NFL’s Washington Redskins, Pro-Football, Inc. v. Blackhorse, No. 1-14-CV-01043-GBL, 2015 WL 4096277 (E.D. Va. July 8, 2015), is currently on appeal before the Fourth Circuit. The case turns in substantial part on whether Section 2(a)’s disparagement clause violates the First Amendment. If the Fourth Circuit disagrees with the Federal Circuit’s holding and decides that there is no constitutional violation, then the Supreme Court is likely to step in and resolve the split between the Fourth and Federal Circuits on this important question of constitutional law.

If the Supreme Court were to agree with the Federal Circuit and hold that the disparagement clause is unconstitutional, then the practical implications listed above remain as they are at the moment. But if the Supreme Court were to hold that the disparagement clause is not unconstitutional, then the clause—and the USPTO regulations that depend on it—would be reinstated. What would that mean to any “disparaging” trademark registrations that were issued in the meantime? The answer is that such registrations would potentially be subject to cancellation on disparagement grounds.

III.   Takeaway:

For the time being, the practical takeaway from the Federal Circuit’s In re Tam decision is this. Trademark owners are now free to register disparaging marks, since the USPTO cannot refuse to register them on the ground of disparagement. And third parties cannot oppose applications or seek to cancel registrations on the ground of disparagement.

But any resulting registrations remain at some risk for cancellation, since the Supreme Court may well decide to review this issue. If so, the Supreme Court may overrule the Federal Circuit’s holding, whereupon the disparagement clause and the USPTO rules and precedents based on it would be reinstated.

Furthermore, a disparagement attack (should it be reinstated) cannot be averted via incontestability, since Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3), expressly permits incontestable registrations to be challenged on Section 2(a) grounds.

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Uli Widmaier is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals. The firm advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Uli’s practice focuses on domestic and international trademark, copyright, trade dress and Internet law and litigation.

 

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July 8, 2015

REDSKINS Trademark Registrations Still Canceled After Appeal to Federal Court

Filed under: Constitution, Litigation, TM Registration — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:45 pm

PB LRby Phillip Barengolts, Partner

Today, the District Court for the Eastern District of Virginia has upheld an administrative ruling that canceled federal trademark registrations for the REDSKINS nickname of the Washington football team despite the team’s constitutional and other challenges. Pro-Football, Inc. v. Blackhorse, Case No. 14-cv-01043 (E.D. Va. July 8, 2015). [1]

Last year, on June 18, 2014, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“TTAB”) canceled six of Washington’s federal registrations for the trademark REDSKINS because the name disparages Native Americans.[2] The team appealed the ruling to federal court. It argued, essentially, that Section 2(a) of the Federal Trademark Act (the “Lanham Act”), which prohibits the federal registration of potentially disparaging trademarks, is unconstitutional and that the Native American petitioners did not prove that the REDSKINS trademark is, in fact, disparaging. On cross-motions for summary judgment, the Eastern District of Virginia sided with the Native American petitioners on all counts.

The decision highlights an important aspect of trademark practice. As the Court admonished the parties, this case concerns the right of the Washington football team to register the REDSKINS trademark– not the team’s right to use the mark. The TTAB also highlighted this point in its decision, but mass media, and even many attorneys, confused this point.

The rights conferred by registration are important and valuable , but the TTAB only has the right to decide whether a trademark may be registered, it has no authority to stop the use of a trademark. Section 2(a) of the Lanham Act, at issue in this dispute, only applies to registration of trademarks. As the Court stated, “Thus, regardless of this Court’s ruling, [the team] can still use the Redskins Marks in commerce.”

As a practical matter, however, a trademark owner who is not permitted to register its preferred mark often chooses not to use that mark, but, ultimately, it is the trademark owner’s choice. This point is crucial for the Court’s decision and crucial for an understanding of when and why to bring an action before the TTAB.[3]

As a result of this limited application of Section 2(a) of the Lanham Act, the statute survived the constitutional challenge brought by the team. In particular, the Court found that Section 2(a) does not even implicate the First Amendment precisely because it does not prohibit the use of a trademark, and therefore, does not prohibit or impinge on any speech.

The Court also found that the federal trademark registration program is government speech under the Supreme Court’s recent decision in Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015).[4] Basically, this means that “the federal government may determine the contents and limits of programs that it creates and manages.” The Court also ruled that the term “may disparage” in Section 2(a) of the Lanham Act is not impermissibly vague – generally or as applied to the team. Finally, the TTAB’s ruling was not an impermissible taking because a trademark registration is not a property interest, as opposed to the underlying trademark itself, which is.

As to the team’s challenges to the ruling that the term REDSKINS may disparage Native Americans, the Court found that evidence found in dictionaries, scholarly and media references, and statements from Native Americans were sufficient to uphold the TTAB’s ruling.

In the previous iteration of this battle, the D.C. Circuit Court of Appeals upheld a ruling that laches barred the Native Americans’ suit. Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005).[5] Here, for reasons not worth getting into, the District Court found that laches did not apply.

Undoubtedly, the team will appeal this decision to the Fourth Circuit. So, the saga of the REDSKINS trademark registration continues.

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Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, false advertising, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and advertising issues. Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, advertising, unfair competition, trade secret, Internet, and copyright law. He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Lexis Publishing.

Footnotes:

[1] The full 70-page opinion can be found here: http://www.pattishall.com/pdf/PFI%20v%20Blackhorse%20Decision.pdf

[2] Further background and earlier coverage on the TTAB decision can be found here: https://blog.pattishall.com/2014/06/18/redskins-trademark-registrations-canceled-after-8-more-years-of-litigation/.

[3] The recent decision in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 575 U.S. __ (2015), may have changed this calculus. See https://blog.pattishall.com/2015/03/25/supreme-court-holds-that-issues-decided-by-the-ttab-may-be-preclusive-in-federal-court/. The decision can be found here: http://scholar.google.com/scholar_case?case=15316530830472719965.

[4] http://scholar.google.com/scholar_case?case=2629371590163032730.

[5] http://scholar.google.com/scholar_case?case=2204191829610278162.

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June 4, 2015

Wait, Wait, Don’t Tell Me – The Gov’t has Reduced Filing Fees ?

Filed under: TM Registration, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:33 pm

rws_high_resby Robert W. Sacoff, Partner

The big news (this will sound a little wonky, but you really should know it) is that the USPTO has just recently (effective January 17, 2015) reduced certain trademark filing fees.  How often does that happen ?

Previously, the government fee for the filing mode most commonly used, TEAS, was $325 per class, for an electronic filing. Paper filing is still possible, at a higher fee, $375 per class, but hardly anybody does it any more.  Many applicants eschewed the “TEAS PLUS” option, even though it had and still has a lower filing fee (previously $275, reduced now to $225, per class) because it handcuffs you to using only the exact wording for the goods and services that comes straight out of the Acceptable ID Manual, which can be problematic for all but the simplest product descriptions.  But now, the USPTO has created a new filing mode, called TEAS RF, for Trademark Electronic Application System Reduced Fee (they do love their acronyms), which is an attractive hybrid.  It lowers the filing fee to $275 per class, and requires only that you do what you probably do anyway, like file everything electronically, provide an email address, and agree to email communications with the USPTO. It does not restrict you to using the exact ID Manual terminology like the TEAS PLUS option still does. USPTO data since January shows the desired results: “regular” TEAS applications have dropped, TEAS RF applications have increased, and overall efficiency has improved. See the Director’s Forum blog post of May 29, 2015 at http://www.uspto.gov/blog/.

The recent rulemaking also reduced the renewal filing fee from $400 to $300 per class.  You will still have to file a Section 8 Declaration of Use when you renew (the procedure was bifurcated previously to comply with the TLT, Trademark Law Treaty), and the Section 8 filing fee is still $100 per class.

The filing options, fees and requirements are laid out in a nice USPTO chart at http://www.uspto.gov/trademarks-application-process/filing-online/reduced-fees-teas-application-filing-options

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Robert Sacoff is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.

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June 18, 2014

REDSKINS Trademark Registrations Canceled After 8 More Years of Litigation

Filed under: TM Registration, Trademark (General), TTAB — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:38 pm

 

PB LRby Phillip Barengolts, Partner, and Kristine A. Bergman, Summer Associate

In the long-running dispute between representatives of Native Americans and Pro-Football, Inc. AKA the Washington Redskins (“Washington”), the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“TTAB”) cancelled six of Washington’s registrations for the mark REDSKINS.[1] It was not the first time the TTAB ruled against Washington, finding that the REDSKINS trademark was disparaging and, therefore, not registrable under Section 2(a) of the Federal Trademark Act.[2] Of course, that has been the nickname of the Washington football team since 1932.

Despite mass media misinterpretation of the implications of this opinion, as the TTAB expressly stated, “This decision concerns only the statutory right to registration under Section 2(a). We lack statutory authority to issue rulings concerning the right to use trademarks.” (emphasis original). This decision does not require the Washington team to change its name. It does not prevent the team from continuing to use the REDSKINS nickname in marketing. It does not affect the team’s ability to license merchandise using the REDSKINS name.[3] Furthermore, it does not prevent the team from suing to enforce its rights in the REDSKINS name against others who may try to use it.[4] It merely prevents the team from enjoying the special protections afforded to an owner of a federal registration.[5]

Ultimately, the TTAB found that the registrations for REDSKINS “were disparaging to Native Americans at the respective times they were registered…” This finding is remarkable because the original registration for THE REDSKINS issued in 1967.

In its analysis, the TTAB first determined that the term “redskins,” although associated with the football team, had not been “stripped” of its ethnic meaning. Second, the TTAB found that a “substantial composite” of Native Americans were disparaged by the mark. [6] The primary basis for this conclusion was a resolution issued in 1993 by the National Congress of American Indians (“NCAI”), which represented approximately 30 percent of Native Americans during the relevant time. This resolution also was found to be competent evidence of the past views of Native Americans.

The TTAB also revisited Washington’s laches defense, which was discussed in the Harjo case. The TTAB rejected the defense because it “does not apply to a disparagement claim where the disparagement pertains to a group of which the individual petitioner or petitioners comprise one or more members.” Laches is an equitable defense and, therefore, the TTAB highlighted that “it is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity.” Moreover, the TTAB noted that laches is inapplicable in cases presenting a broader public policy concern. Finally, the TTAB stated that, even on the merits, the defense could not stand because there was no showing that the petitioners had unreasonably delayed in bringing the petition after each reached the age of majority or that there was economic prejudice to Washington due to the delay.

Unusually for a TTAB decision, there was a dissent. Lest the dissenting judge be deemed insensitive, the primary criticism levelled at the majority was that the evidence presented by the petitioners was insufficient to prove that “redskins” was a disparaging term in 1967 (and when the subsequent trademark registrations issued). For purposes of the eventual appeal, the dissent has some merit because the evidence relied on by the petitioners was the same as that relied on by the Harjo petitioners – and which was deemed insufficient by the D.C. Circuit to support the TTAB’s original decision finding REDSKINS disparaging.

Despite pressure from the Obama administration, Washington team owner Dan Snyder has refused to change the team’s name.[7] So, stay tuned for the eventual appeal.

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Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both petitioners and defendants in trademark, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, unfair competition, trade secret, Internet, and copyright law. He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Lexis Publishing.

Kristine A. Bergman is a summer associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP.

 

[1] http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199.

[2] The original petition to cancel the REDSKINS trademark registrations was brought on September 10, 1992, and the petitioners prevailed before the TTAB. See Harjo v. Pro Football, Inc., 30 U.S.P.Q.3d 1828 (TTAB 1994). The United States District Court for the District of Columbia reversed the TTAB’s original decision, which was upheld by D.C. Circuit Court of Appeals. However, that ruling relied on the defense of laches because the petitioners had waited too long to bring the petition to cancel after reaching the age of majority — the issue of disparagement on the merits was not resolved.

[3] Unless a specific license had a requirement that the mark be registered, which the NFL undoubtedly would not have agreed to, given the long pendency of this objection.

[4] But see http://tushnet.blogspot.com/2014/06/unregistrable-means-unprotectable-by.html. The decision discussed by Prof. Tushnet here addresses very different facts, but it raises an interesting potential defense to any infringement claims Washington may bring over the REDSKINS mark in the future, if the TTAB decisions is upheld on appeal, of course.

[5] Perhaps of greatest importance in the context of merchandising would be the unavailability of a claim of counterfeiting, for which registration is required.

[6] Of note, the TTAB stated that a “substantial composite” need not be a majority and ultimately found that “thirty percent is without doubt a substantial composite.”

[7] U.S. Patent and Trademark Office Cancels Redskins Trademark, Huff. Post (June 18, 2014 at 10:22 A.M), http://www.huffingtonpost.com/2014/06/18/redskins-trademark-canceled_n_5507169.html.

 

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May 20, 2014

Can California Chrome THREE-PEAT? Its Owners Sure Hope So

Filed under: Advertising, TM Registration — Tags: , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:28 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

California Chrome, the horse that won both the Kentucky Derby and the Preakness Stakes over the last three weeks, has the opportunity to be the first Triple Crown winner in 36 years if it wins the Belmont Stakes on June 7. While California Chrome flirts with history next month, its owners are securing its rights in the horse’s name to capitalize on its (potential) legacy.[1]

As ESPN.com reported this morning,[2] Steven and Carolyn Coburn and Perry and Denise Martin, who make up the horse’s ownership entity of Dumb Ass Partners, filed for the trademark CALIFORNIA CHROME, Ser. No. 86/281,678, for “[a]thletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.” According to the article, California Chrome’s owners hope to cash in on licensing deals that are likely dependent on California Chrome winning at the Belmont Stakes.

California Chrome’s owners will not be the only ones this spring hoping to cash in on an outcome dependent trademark. Pat Riley, the owner of the trademark THREEPEAT, Reg. No. 4,051,757, hopes to capitalize on the mark once again if the Miami Heat manage to repeat as NBA champions for a third straight year. [3] Riley first applied for the THREE-PEAT mark in 1988, Reg. No. 1,552,980, when his Los Angeles Lakers were on the cusp of winning three consecutive NBA championships only to be swept by the Detroit Pistons in the championship series.

While he was unable to exploit the mark in the 1980s, Riley has monetized it several times since then. For example, Riley reported earned over $300,000 in licensing revenue when the Chicago Bulls won three consecutive championships (twice) in the 1990s.[4]   Meanwhile, the New York Yankees and Los Angeles Lakers have also won three consecutive championships each, adding even more licensing revenue to Riley’s coffers.

Interestingly, Riley’s first registration for THREE-PEAT, the ’980 Registration discussed above, was cancelled in 2008 because he failed to file an acceptable declaration under Section 8 of the Trademark Act. Additionally, an individual filed a petition to cancel the ’980 Registration in 2001, arguing that the mark did not serve as a trademark and had become generic.[5] Holding that the petitioner failed to show that the mark did not function as a trademark or that the mark was generic, the Trademark Trial and Appeal Board (“TTAB”) noted that a type of athletic accomplishment in itself (i.e., winning three consecutive championships) did not necessarily indicate that the term “conveys any meaning, let alone a generic meaning, about [Riley’s] goods.” Pet. Cancel, p. 9. Additionally, the TTAB stated that the placement of Riley’s THREE-PEAT mark on t-shirts was consistent with how trademarks are generally used as a source identifier. Id. Last, the TTAB said that as long as Riley controls the nature and quality of his licensees’ goods, “the mark does not have to indicate a single physical source of the goods, but may also indicate a single, i.e., consistent, source of quality, regardless of the actual physical source or producer of the goods.” Id at 10.

While Riley’s most recent THREEPEAT mark, Reg. No. 4,051.757, was filed in 2010 under Section 2(f), there remains the question whether the mark has now become generic for the feat of winning three consecutive championships. While the petition to cancel the mark was unsuccessful in 2001, a mark can become generic over time. With more teams winning consecutive championships, and with more individuals invariably using the mark in a descriptive or generic manner for winning three consecutive championships, time will tell whether someone will contest the marks validity in the future and what will be the ultimate result.

With that said, Riley’s ability to monetize a mark that only has value when a series of exceptional events occurs in the future proves that patience really can pay off. While it may look like California Chrome’s owners’ gaze is affixed on the finish line on June 7, their foresight to file a trademark application last week demonstrates that their vision for both California Chrome and CALIFORNIA CHROME really starts when the race is over.

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

 

[1] ESPN.com reports that the horse was bred for $10,500 and has now won $3.45 million on the track. See http://espn.go.com/horse-racing/triplecrown2014/story/_/id/10957336/california-chrome-owners-file-trademark-horse-name

[2] Id.

[3] As reported on this blog only July 25, 2012, there is some debate as to whether Riley or ex-Los Angeles Lake Byron Scott coined the term THREE-PEAT. Nevertheless, Riley owns the rights to the mark. See https://blog.pattishall.com/2012/07/25/who-owns-a-trademark-jeremy-lin-wins-linsanity-as-anthony-davis-fights-for-his-unibrow/

[4] http://espn.go.com/nba/story/_/id/9360787/miami-heat-owner-pat-riley-had-foresight-patent-three-peat-not-three-heat-espn-magazine

[5] Christopher Wade, Pet. Cancel No. 21,869, 2001 WL 1028372 (Trademark Tr. & App. Bd. Sept. 6, 2001).

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May 6, 2014

Doing Your Due Diligence Before Picking A Name

Filed under: Due Diligence, TM Registration — Tags: , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:04 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

Entrepreneur Magazine recently published an article about things to consider before naming your business.[1] It is a good (and short) read for anyone considering starting a company, or even for those individuals who have a company and are thinking about rebranding it under a new name or concept.

To start, consider what makes a company name so important: it must be unique, easy to spell, and nowadays, ideally, play nice with Google’s, Yahoo’s, and Bing’s be-all and end-all algorithms, among other necessaries. As the Entrepreneur article points out, several names, like Apple, Snapple, Oreo and Virgin, are fun to say and easy to spell – and they stick in consumers’ minds.

But the article fails to mention one important aspect about the “picking a name process:” entrepreneurs must do their due diligence before investing time and money in a name.[2] There is nothing worse than getting excited about the perfect name only to be sued for infringing someone else’s trademark after launch.

There are several ways to avoid this scenario. A good start is to check the United States Patent and Trademark Office (USPTO) website to see whether someone else is already using your name. The USPTO provides for both word and design mark searches. Next, conduct your own internet search. If you get several results with a name that is similar to your proposed name but covers different goods or services, you might be okay. Trademark attorneys focus on these types of risk analyses.

One of the most popular services trademark attorneys offer are clearance opinions. First, the attorney will conduct a clearance search for your proposed mark. A clearance search may be obtained from a professional search vendor and reviewed by the attorney. The professional search vendors offer the broadest coverage, including reviewing federal and state trademark registrations, business names across the country (or world if you would consider selling your goods or services abroad), similar internet and domain name references, and variations and colorable imitations of your proposed name revealed through their own proprietary databases.[3] These searches are far more comprehensive than anything you or I could do on our own. They are not cheap, but they really show just how unique and protectable your name might be. Following the search, a trademark attorney will provide you an opinion assessing whether the mark is available for use, as well as your likelihood of getting a state or federal registration.

If you plan to operate your business internationally, securing the advice of a trademark attorney is definitely the way to go, as different countries have very different trademark systems. If you don’t secure trademark rights in the countries where you want to do business, someone else might easily register your name there, and there might not be anything you could do about it.

Once you do secure your perfect company name, you should consider retaining a watch service. As the name suggests, a watch service watches federal and state trademark registrars for similar trademark applications. Getting an early start to protecting the brand you have spent so much time and money developing is imperative and will help keep the scope of your rights in your name as broad as possible.

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

 

[1] As a complete disclosure, neither I nor this law firm has any connection to Entrepreneur Magazine – though I do own a subscription.

[2] An Entrepreneur Magazine article published on April 8, 2011, titled How Can I Find Out Whether a Business Name Is Already Taken? did discuss the importance of trademark searches.

[3] For example, would you think to search for the term “Fit You” if you were conducting your own trademark clearance search for your proposed new company name “U Fit”? Maybe, but maybe not. See You Fit, Inc. v. Pleasanton Fitness, LLC, 8:12-CV-1917-T-27EAJ, 2013 WL 521784 (M.D. Fla. Feb. 11, 2013).

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January 17, 2014

CrossFit Cybersquatter Gets Dealt Multiple Blows

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:52 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

In CrossFit, Inc. v. Results Plus Personal Training Inc, the panel held that an unsubstantiated “consent to transfer” will not avoid an adverse ruling.  National Arbitration Claim Number: FA1305001498576 (June 28, 2013).  The domain names at issue were <crossfitagawam.com>, <crossfitansonia.com>, <crossfitbeaconfalls.com>, and many other “crossfit”-derivative .com domain names referring to different cities across the United States.

CrossFit, Inc. provided workout and gym products and services.  Its revenue mainly came from licensing its registered CROSSFIT marks and programs to affiliate gyms around the country.  Typically the affiliate would register a “crossfit” domain name that included a geographic designator, e.g., crossfitboston.com.  The Respondent, Results Plus Personal Training Inc., was a competitor of Crossfit.  It registered 113 domain names, most of which “do nothing but add the name of a famous or popular city [to] the CrossFit mark.”  Most were used for parked web pages, often with advertising hyperlinks for Respondent and other competitors.  The panel found that Respondent registered that large amount of domain names “to resell them exclusively to Complainant and its affiliates.”  It was a “bad faith endeavor to confuse Internet users into believing Complainant or its CrossFit mark is at the source of the content, all so Respondent can advance its goals to generate revenue.”

Results Plus argued that GoDaddy.com led it to believe that it could legally register and use these domain names in the manner that it did.  Although CrossFit had filed a federal court action seeking $9 million in damages, the Panel determined that it retained authority to proceed to decision.  To avoid an adverse ruling, Results Plus offered to transfer the domain names to Crossfit on the condition that Crossfit pay Results Plus $1,300, which Results Plus argued was “far less” than it had spent maintaining the 113 domain names.

The Panel observed that an effective consent to transfer does not ordinarily arise when the transfer is subject to the condition precedent of a markholder’s payment of fees. The Panel found that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel.  The Panel observed that this “consent-to-transfer” approach was one way cybersquatters tried to avoid adverse holdings, but it normally was ineffective, especially when the alleged “consent” required the transfer of money to the respondent.  The Panel ultimately found that Results Plus did not have any legitimate interest in the disputed domain names and had acted in bad faith, and ordered the domain names transferred to Cross Fit.

This case highlights that trademark owners can bring an action to transfer  multiple infringing domain names from a single cybersquatter under the Uniform Domain-Name Dispute Resolution Policy (commonly referred to as “UDRP”).  The UDRP sets forth the grounds on which arbitrators base their decisions, but there are several different dispute resolution forums from which to choose, all with their own local rules, procedures and leanings.  While I do not practice CrossFit myself, I know a good 1-2 punch when I see one – and, for now, Results Plus is down for the count.

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

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January 15, 2014

Ninth Circuit Declares GoDaddy Not Contributorily Liable For Cybersquatting

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:08 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

In December, the Ninth Circuit held that the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), does not support a cause of action for contributory cybersquatting.  Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 548 (9th Cir. 2013).[1]

Petrolium Nasional Berhad (Petronas), a major oil and gas company with its headquarters in Kuala Lumpur, Malaysia, owns the trademark PETRONAS.  In 2009, Petronas discovered that a third party had registered the domain names “petronastower.net” and “petronastowers.net.”  The third party then used GoDaddy’s domain name forwarding services to forward visitors of the two domain names to a pornographic web site. GoDaddy took no action against the alleged cybersquatting, claiming that (1) it did not host the site; and (2) it was prevented by the Uniform Domain Name Dispute Resolution Policy (“UDRP”) from participating in trademark disputes regarding domain name ownership.  Id. at 548.

Petronas sued GoDaddy in the United States District Court for the Northern District of California on a number of theories, including cybersquatting under 15 U.S.C. § 1125(d), and contributory cybersquatting. Following limited discovery, the district court granted summary judgment in favor of GoDaddy. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 897 F. Supp. 2d 856 (N.D. Cal. 2012) aff’d, 737 F.3d 546 (9th Cir. 2013).  Petronas appealed only with respect to its claim of contributory cybersquatting.

The Ninth Circuit defined cybersquatting as “registering a domain name associated with a protected trademark either to ransom the domain name to the mark holder or to divert business from the mark holder.” Petroliam, 737 F.3d at 550 n. 3 (citing Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 680 (9th Cir.2005)).  Under the ACPA, a person may be civilly liable “if … that person has a bad faith intent to profit from that mark … and registers, traffics in, or uses a [protected] domain name.” 15 U.S.C. § 1125(d)(1)(A). Petronas argued that the ACPA provided for a cause of action for contributory cybersquatting, claiming that “Congress intended to incorporate common law principles of secondary liability into the Act by legislating against the backdrop of the common law of trademark infringement and by placing the ACPA within the Lanham Act.”  Petroliam, 737 F.3d at 550.  The Ninth Circuit disagreed.

Beginning its analysis with the text of the ACPA, the Ninth Circuit noted that the ACPA imposes civil liability for cybersquatting on persons that “register[ ], traffic[ ] in, or use[ ] a domain name” with the “bad faith intent to profit” from that protected mark. 15 U.S.C. § 1125(d)(1)(A). The plain language of the statute thus prohibits the act of cybersquatting, but limits when a person can be considered to be a cybersquatter. Id.  Taking notice that the statute makes no express provision for secondary liability, the Ninth Circuit held that “[e]xtending liability to registrars or other third parties who are not cybersquatters, but whose actions may have the effect of aiding such cybersquatting, would expand the range of conduct prohibited by the statute from a bad faith intent to cybersquat on a trademark to the mere maintenance of a domain name by a registrar, with or without a bad faith intent to profit.” Petroliam, 737 F.3d at 550-51.

Petronas then argued that Congress incorporated the common law of trademark, including contributory infringement, into the ACPA, citing a number of district courts decisions that relied on that reasoning in finding a cause of action for contributory cybersquatting. See Verizon Cal., Inc. v. Above.com Pty Ltd., 881 F.Supp.2d 1173, 1176–79 (C.D.Cal.2011); Microsoft Corp. v. Shah, No. 10–0653, 2011 WL 108954, at *1–3 (W.D.Wash. Jan. 12, 2011); Solid Host, NL v. Namecheap, Inc., 652 F.Supp.2d 1092, 1111–12 (C.D.Cal.2009); Ford Motor Co. v. Greatdomains.com, Inc., 177 F.Supp.2d 635, 646–47 (E.D.Mich.2001).[2]  Again, the Ninth Circuit was not persuaded, holding that the “circumstances surrounding the enactment of the ACPA [. . . ] do not support the inference that Congress intended to incorporate theories of secondary liability into that Act.”  Distinguishing between the Lanham Act’s codification of unfair competition and common law trademark infringement and the ACPA, the Ninth Circuit stated that claims under traditional trademark law and the ACPA have distinct elements. Petroliam, 737 F.3d at 552  (for example, under the ACPA a mark holder must prove “bad faith,” which is not a requirement under traditional trademark infringement claims, and cybersquatting liability, unlike traditional trademark infringement, does not require commercial use of a domain name).[3]  As a consequence, the Ninth Circuit held that the ACPA simply created a new statutory cause of action to address the new cybersquatting problem and that imposing secondary liability on domain name registrars would unnecessarily expand the scope of the ACPA.

The Ninth Circuit’s decision was not surprising.  The purpose of the ACPA and the UDRP is to provide trademark owners with a remedy against those actively using their trademarks in “bad faith.”  As a domain name forwarding provider, GoDaddy simply did not meet the explicit definition of a “cybersquatter.”  Consequently, trademark owners must use the tools the ACPA and the UDRP provide to go after those the ACPA defines as liable, that is, the cybersquatters themselves.[4]

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.


[2] The Ninth Circuit commented that some of these district courts that recognized a cause of action for contributory liability required that a plaintiff show “exceptional circumstances” in order to hold a registrar liable under that theory. See Above.com Pty Ltd., 881 F.Supp.2d at 1178; Shah, 2011 WL 108954, at *2; Greatdomains.com, Inc., 177 F.Supp.2d at 647. The Ninth Circuit noted that the “exceptional circumstances” test has no basis in either the Act, or in the common law of trademark. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 553 (9th Cir. 2013).  Rather than attempt to cabin a judicially discovered cause of action for contributory cybersquatting with a limitation created out of whole cloth, the Ninth Circuit explicitly declined to recognize such a cause of action in the first place.  Id.

[3] As a practical point, the Ninth Circuit noted that GoDaddy, a registrar holding over 50 million domain names, would have to presumably analyze its customer’s subjective intent with respect to each domain name, using the nine factor statutory test outlined in 15 U.S.C. § 1125(d)(1)(B).  Moreover, domain name service providers would then be forced to inject themselves into trademark and domain name disputes. which is contrary to the purpose of the ACPA and the UDRP. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 549-54 (9th Cir. 2013).

[4] UDRP proceedings are a cost-effective means to protect your trademark online and to keep third parties from diverting people from your legitimate websites and siphoning off ad revenue.

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