Pattishall IP Blog

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: http://ttabvue.uspto.gov/ttabvue/ttabvue-86520135-EXA-31.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.

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.

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.

November 22, 2013

“THANKSGIVUKKAH” Convergence of Thanksgiving and Hanukkah—The Latest Pop Culture Trademark Sensation

Filed under: TM Registration, Trademark (General), Uncategorized — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:54 am

By Belinda Scrimenti, Partner

Many media outlets are asking:  Where is Adam Sandler when you need him?[1]  His well-known Hanukkah Song is due for a new verse that celebrates a hot new holiday “trademark.”

Popular culture events frequently are reflected in trademark filings.  The latest:  “THANKSGIVUKKAH” – This year’s rare convergence of Thanksgiving with the first full day of Hanukkah.   According to reports, the last time the overlap occurred was in 1888, and physicist Jonathan Mizrahi has calculated that the event will not occur for another 79,000 years.[2]

Indeed, this “once-in-eternity” event has brought a “cornucopia of money-making” opportunities as described by USA Today.[3]  And where there’s a money-making opportunity, there must be a trademark.

Reportedly, the “Thanksgivukkah” term was coined by a Boston resident, Dana Gitell,[4] who had the foresight to protect the mark by obtaining trademark registrations for the term, in Class 16 for greeting cards and other party goods, and in Class 25 for t-shirts and baby garments.  The applications, based on a stated first use date of December 3, 2012, were filed one day later, but nearly a year before the 2013 holiday.[5]

In another oft-reported story, a 9-year-old New York boy, Asher Weintraub, “invented” the “Menurkey” – a turkey-shaped menorah – and with his parents’ help, raised more than $48,000 on Kickstarter for the product.[6]   They have already filed for a federal trademark registration.[7]

Anxious to get in on the “Thanksgivukkah” trademark action?  Despite many media references to “Gobble tov,” as of this writing nobody has sought to register a trademark for it.  Also available:  “Hanu-Giving” and “Challahday Greetings,” the latter of which was first registered back in 1985 and has long since expired.

The trademark office is often a reflection of popular culture, but not surprisingly, many of these marks either never make it to registration, or are quickly forgotten and abandoned.  Government and historical events often spawn these filings.   For example, seven applications have been filed that incorporate the term “Obamacare” – mostly related to insurance services.  Three have already been abandoned, and four have pending office actions.  Nevertheless, this volume of filings pales in comparison to the adoption of other government catchphrases.

Remember the Iraq War’s “Shock & Awe”?  Within hours and days following the initial attack on Baghdad, applications for “SHOCK & AWE” in various formulations started flooding in to the USPTO.  Not counting applications for other marks incorporating the terms, 36 “SHOCK & AWE” applications were filed for everything from golf clubs to pesticides, lingerie to fireworks, and even “infant action crib toys.”  Of that, only four were eventually registered and remain on the register today.

During the same period, the ire over France’s lackluster support of the United States in the Iraq War led to another pop culture trademark spat.  French fries became “Freedom Fries.”   Within 60 days of the controversy, six companies sought to obtain a trademark registration for the term, and one tried two years later.  The first user of the mark ultimately prevailed in the registration battle, but years later, allowed the registration to go abandoned for failure to file the Section 8 maintenance declaration.[8]

The king of pop culture filings, however, occurred at the 2000 year millennium.  USPTO records reflect over 320 filings for trademarks incorporating the term “Y2K.”  Of that number, only 27 ultimately registered.  Today, only one registration remains on the register – for business consulting and information services.[9]

In contrast, the USPTO records may well be a good barometer of what is highly unpopular in the United States – as no one sought to register “FISCAL CLIFF,” “DEBT CEILING” or “GOVERNMENT SHUTDOWN”!

With no threats of the fiscal cliff, debt ceiling negotiations or a government shutdown hanging over the month of November, that brings us back to Thanksgiving.  A far more enjoyable government event remains free of trademark interlopers – no one has applied to register “TURKEY PARDON.”

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Belinda Scrimenti 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, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Belinda’s practice focuses on litigation in trademark, copyright, trade dress, and Internet law, as well as trademark prosecution and counseling.  She has worked on numerous matters relating to the registration, protection, and enforcement of trademarks, and litigated in over 40 U.S. federal district courts.

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[1] See, e.g., http://www.miamiherald.com/2013/11/12/3748399/this-year-thanksgiving-hanukkah.html; http://mainstreetmusingsblog.com/2013/11/04/thanksgiving-and-hanukkah-makes-thanksgivukkah/; http://www.kansascity.com/2013/11/11/4614193/this-year-thanksgiving-hanukkah.html
[2]
http://jonathanmizrahi.blogspot.com/2013/01/hanukkah-and-thanksgiving-once-in.html; see http://bigstory.ap.org/article/gobble-tov-american-jews-ready-thanksgivukkah
[3] http://www.usatoday.com/story/news/nation/2013/11/14/thanksgivukkah-products/3516299/
[4] http://en.wikipedia.org/wiki/Thanksgivukkah#cite_note-22
[5] See U.S. Registration Nos. 4,371,793 and 4,379,381.
[6] http://bigstory.ap.org/article/gobble-tov-american-jews-ready-thanksgivukkah; http://www.usatoday.com/story/news/nation/2013/11/14/thanksgivukkah-products/3516299/; http://online.wsj.com/news/articles/SB10001424052702304176904579112022682954300
[7] See U.S. Application Serial No. 85/956314.
[8] See U.S. Registration No. 3,220,999
[9] See U.S. Registration No. 3,677,414

August 22, 2012

The United States Patent and Trademark Office is Seeking Comments on Potentially Amending the Federal Trademark Act, the Lanham Act, to Require the Filing of a Declaration of Use After Three Years of Trademark Registration Rather Than the Current Five

Filed under: TM Registration — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:10 pm

by Phillip Barengolts, Partner

On August 16, 2012, the United States Patent and Trademark Office (USPTO) issued a Request for comment in the Federal Register on the potential amendment of the Federal Trademark Act – the Lanham Act – to require the filing of the first Affidavit or Declaration of Use or Excusable Nonuse (Affidavit) from between the third and fourth year after the issuance of a trademark registration, or the six-month grace period that follows.  See www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20130.pdf.  Specifically, the USPTO “is interested in receiving public input on whether and why such an amendment is or is not favored.”  The deadline to submit comments is October 15, 2012.

Currently, under Sections 8 and 71 of the Lanham Act, the period to file the required Affidavit is between the fifth and sixth years after the trademark registration issues.  This proposal would require Congress to amend the Lanham Act, and the USPTO cannot implement this change itself through a rulemaking or otherwise.

The purpose of the Affidavit is to eliminate “deadwood” (marks that are not actually used) from the federal trademark register.  For attorneys and companies actively involved in the clearance of potential trademarks, having an accurate trademark register is valuable, and reduces trademark selection costs.  However, as any diligent trademark attorney will tell you, just because a trademark registration has expired does not mean that the underlying trademark is not in use, nor does an active trademark registration reveal the scope of use in the marketplace – only an investigation can provide such details.

A potentially important consideration for this request by the USPTO is that an applicant for a trademark registration in the U.S. relying upon a foreign trademark registration (under Sections 44(e) an 66(a) of the Lanham Act) does not need to submit a specimen of use to obtain the registration.  Thus, such registrations would now be subject to a use requirement two years sooner.

The specific questions on which the USPTO seeks comment are:

1.    Is ‘‘deadwood’’ on the trademark register a concern of yours, and what impact do you believe it has?

2.   Do you favor or oppose an amendment to shorten the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 as a means of ensuring the accuracy of the trademark register? (Please explain why.)

3.   If you favor shortening the deadline, what time period do you believe would be most appropriate for the first filing deadline?

4.   Are you concerned that an amendment to the first Section 8 and 71 affidavit deadline would foreclose the ability to combine the filing with the filing of an Affidavit or Declaration of Incontestability under Section 15? What impact do you believe separating these filings would have?

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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, 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.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Oxford University Press.

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