Pattishall IP Blog

July 18, 2017

“Brandverbing Your Trademark.” Is that a good thing?

Filed under: Litigation, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:43 am

By Janet Marvel

Trademark lawyers get nervous when clients use their trademarks as verbs.  Using a trademark as verb, the lawyers say, might kill the trademark by making it the generic name for a type of product instead of a brand of the product.  But increasingly, modern businesses try to create “brandverbs” (e.g. “Bing and  Decide,” to use a rather ill-fated example).  They praise “brandverbs” as some of the best expressions of brand leadership.  In Elliott v. Google, Inc., 20178 WL 2655528 (9th Cir. June 14, 2017), Google got away with it, arguably because GOOGLE is one of the most famous trademarks in the world.  For many “mere mortal” brand owners, using a trademark as a verb is still risky and companies need to weigh the risk before doing or encouraging it.

In Elliott v. Google, a cybersquatter argued that “googling” to describe the act of looking for information via a search engine made GOOGLE generic, thus forfeiting legally protectable trademark status. The plaintiff contended that “verb use constitutes generic use as a matter of law.”  Interestingly, “the district court assumed on summary judgment that the majority of the public uses the verb “google” to refer to the act of “searching on the internet without regard to [the] search engine used.  In other words, it assumed that a majority of the public uses the verb ‘google’ in a generic and indiscriminate sense.”

However, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  It then held that Elliott’s examples of allegedly generic use of “googling” were not persuasive because they referred to use of “google” as a verb for searching and not to the search engine itself.  Moreover, Google presented overwhelming evidence that GOOGLE was a brand name for a particular search engine, and not a generic term for the general class of search engines.  According to a survey, 93 percent of consumers recognized GOOGLE as a brand.

Trademark lawyers still typically recommend against “brandverbing” because it contributes to a slippery slope leading to a potential finding that a mark is generic.  Trademarks are proper adjectives.  They modify the generic name of a product, e.g. Band-Aid bandages, not Band-Aids, or Kleenex tissues, not Kleenex. The use of a term as a modifier encourages consumers to think that not all bandages are “Band-Aids,” for example.  Similarly, using a trademark as a verb leads consumers to think that, for example, any in-line skate can be used for “rollerblading,” and any photocopying machine can be used “to xerox.”  It is a short step to call all in-line skates “Rollerblades” and all photocopiers “Xeroxes.”

The bottom line is that you can “brandverb” if you think the marketplace rewards outweigh the legal risks, but you should think about the long term consequences, and talk to your lawyers about mitigating risks.

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.

July 11, 2017

Buzz Kill: TTAB Reaffirms Prohibition on Medical Marijuana Registrations

Filed under: Trademark (General), TTAB — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:41 pm

By Jason Koransky

The USPTO has consistently refused registration of marks for goods and services related to the medical and recreational marijuana industries. The Trademark Trial and Appeal Board has unanimously affirmed these refusals. The rationale behind these rejections is that the applicants cannot have a bona fide intent to use the marks in commerce, as the distribution and sale of marijuana is illegal under the federal Controlled Substances Act (“CSA”). Even though medical marijuana is now legal in 29 states and the District of Columbia, and selling recreational marijuana is legal in five states, federal law supremacy bars the acquisition of federal trademark rights for most marijuana-related goods and services.

Yet this prohibition has not deterred businesses and individuals in this booming industry from trying to obtain registrations, and they often come prepared with creative arguments.

The TTAB rebuffed the latest argument brought by a medical marijuana provider in its June 16, 2017, precedential opinion in the matter In re PharmaCann LLC. Here, Oak Park, Illinois-based PharmaCann LLC attempted to obtain registrations for PHARMACANN and PHARMACANNIS for “retail store services featuring medical marijuana” and “dispensing of pharmaceuticals featuring medical marijuana.” This case was destined for an appeal to the Board, as there was no chance that an Examiner would allow a mark with these services to proceed to publication.

On appeal, PharmaCann advanced two arguments. The first mirrored one already rejected by the Board, namely, that because the Department of Justice (based on the 2013 Cole Memorandum) has not enforced the CSA in regard to medical marijuana, the federal government does not treat medical marijuana as illegal. The Board cited its decision in In re JJ206, LLC, 120 USPQ2d 1568 (TTAB 2016), in which it decided this exact issue, and held that the DOJ’s refusal to act does not provide a means to obtain a federal trademark registration.

The second argument was a new one. Congress in its recent Appropriations Acts has prevented the Department of Justice from spending money to stop states from implementing laws that authorize the use, distribution, possession, or cultivation of medical marijuana. PharmaCann argued that because of “Congress’ decision not to fund the Department of Justice to enforce the Controlled Substances Act against medical marijuana, it would make no sense and serve no purpose for the Board to take a different position in ruling on Applicant’s trademark application for medical marijuana.”

The Board rejected this argument. It cited a 2016 Ninth Circuit case, United States v. McIntosh, 833 F.3d 1163, in which the court held that the Appropriations Acts did not make medical marijuana legal under the CSA. Therefore, the Board found that PharmaCann’s applied-for services violated the CSA, and therefore were not eligible for federal trademark registrations.

While owners of medical and recreational businesses cannot get federal registrations for their core goods and services, they can still obtain some IP protections, such as federal registrations for ancillary goods (such as apparel other promotional goods), state registrations for marijuana goods and services, and copyright registrations for logos.

The Board’s decision in this matter is available at its website:


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 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.


[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:
[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 8, 2017


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 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
[3] See and
[4] The license is available on the Creative Commons website.  See

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), 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.

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.

August 15, 2016

2016 INTA/Pattishall Medal For Teaching Excellence: Annette Kur

Filed under: Pattishall, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:08 am

rws_high_resby Robert W. Sacoff, Partner

As a student at Northwestern University School of Law, I had the good fortune to take Beverly Pattishall’s course on “Trademarks, Trade Identity and Unfair Competition.” This year, I chaired the INTA Pattishall Medal Committee. Here’s a little background on Mr. Pattishall, the Medal and the 2016 recipient, Dr. Annette Kur.

Mr. Pattishall (1916-2002) was born in Atlanta, Georgia, educated at Northwestern and the University of Virginia, and rose to the rank of Lieutenant-Commander in the U.S. Navy, commanding combat ships in World War II. After the war he returned to Chicago and began his distinguished legal career, focusing on trademark and unfair competition cases, and also devoted his energies to teaching the subject in law school courses. He unveiled this fascinating and important field of law to me and many others, at a time when it was not widely taught in depth in law schools. An active trial lawyer, he brought his classes to life with case experiences and litigation tips from the trenches.

To honor his educational contributions, the Pattishall, McAuliffe firm created the Pattishall Medal for Teaching Excellence in 1997, in conjunction with INTA’s Brand Names Education Foundation. This quadrennial Medal is awarded to top educators in the field, who have been nominated by their peers and students based on their:

  • Professional and academic recognition
  • Peer and student evaluation
  • Innovation in methodology and commitment to education in the field of trademarks and trade identity

Past recipients of the Medal are:

  • 1997 Arthur J. Greenbaum
  • 2000 J. Thomas McCarthy
  • 2004 Roger Schecter
  • 2008 Graeme Dinwoodie
  • 2012 David Vaver


March 1, 2016

Nominate Your Favorite Trademark Law Professor for INTA’s Pattishall Medal

Filed under: Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:52 pm

rws_high_resby Robert W. Sacoff

The Pattishall Medal for Teaching Excellence was established in 2008 by the law firm of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, in cooperation with the International Trademark Association (INTA), in honor of Beverly W. Pattishall. The Medal is awarded every four years to recognize distinguished legal and business educators for outstanding instruction in the trademark, branding and trade identity field.

University, law school or graduate school professors are nominated by their peers or students, and the Pattishall Medal is presented to the individual who best exemplifies excellence and innovation in trademark, branding and trade identity education.  This year’s nominations are open until April 29, 2016.  Click here for details.

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