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.

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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March 21, 2012

Federal Circuit Rejects “Reasonable Manners” Test For Determining Scope of Standard Character Mark During Ex Parte Examination

Filed under: TM Registration — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:41 am

By Seth Appel, Trademark Attorney

Viterra Inc. applied to register XCEED in standard character form for “agricultural seed.”  The examining attorney refused registration, and the Board affirmed, based on likelihood of confusion with the following registered mark for “agricultural seeds.”

On appeal to the Federal Circuit, Viterra conceded that the goods were the same, but it argued that there was no likelihood of confusion as a result of differences in the marks.  Viterra contended that its proposed standard character mark should not be construed so broadly as to cover the distinctive form of the registered mark.  The court disagreed and affirmed the Board’s decision refusing registration.  In re Viterra Inc., 101 U.S.P.Q.2d 1905 (Fed. Cir. March 6, 2012).

As the court observed, an application to register a standard character mark is “without claim to any particular font style, size, or color.”  37 C.F.R. § 2.52(a).  Traditionally, the Board used the “reasonable manners” test to determine the scope of a standard character mark.  That is, it considered all reasonable depictions of the mark when comparing it to another mark to determine the presence or absence of likelihood of confusion.  However, the Federal Circuit rejected this “reasonable manners” test in Citigroup v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011), an inter partes proceeding involving competing standard character marks.  In Viterra, the court held that the “reasonable manners” test is also improper when comparing a standard character mark and a word/design composite mark in the context of ex parte examination.

The court explained, quoting Citigroup:  “The T.T.A.B. should not first determine whether certain depictions are ‘reasonable’ and then apply the Du Pont analysis to only a subset of variations of a standard character mark.”  Rather, “the T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font style, size, and color and the other mark.”  The court found no basis for limiting Citigroup to comparisons of word marks, and no basis for distinguishing between inter partes proceedings and ex parte examination.

In view of the foregoing, the court concluded, the Board was correct to find likelihood of confusion between the marks at issue.  After all, the applicant’s XCEED mark could be depicted as a capital “X” followed by “ceed” in small letters, making it similar to the registered mark.  Insofar as the T.T.A.B. applied the more restrictive and outdated “reasonable manners” test, it was harmless error.

Trademark users must remember Viterra when considering new marks, and trademark practitioners must keep Viterra in mind during clearance.  A registered word/design composite mark might create a conflict with a would-be applicant’s standard character mark – even if the applicant would never consider depicting its mark in that fashion.

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 Seth I. Appel is an associate attorney at 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. Appel’s practice focuses on litigation, transactions, and counseling with respect to trademark, trade dress, copyright and Internet law.

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December 6, 2011

“WE THE PEOPLE” Should Avoid Trashing Our Own Trademarks

Filed under: TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:52 pm

By Janet Marvel, Trademark Attorney

One of the most common reasons trademark applications are refused registration is that the applied-for marks are confusingly similar to other marks that are already registered.  There may be a great temptation to argue that the applicant’s and registrant’s marks are not confusing because they are among many similar marks.  Therefore, the argument goes, consumers are likely to be able to make fine distinctions among these marks in a “crowded field.”

Such arguments are risky.  They may significantly diminish the value of any resulting registration.  In re Bernstein, 2011 WL 6012206 (TTAB, Nov. 17, 2011 (non-precedential)) illustrates.  There, the Trademark Trial and Appeal Board (“TTAB”) refused to register applicant’s mark WE THE PEOPLE PLAN, for “information about political elections; providing an internet website featuring news and information in the field of national and international politics; providing information regarding political issues, knowing how to vote and knowing how to register to vote.”  The TTAB found the mark confusingly similar to a prior registration for WE THE PEOPLE for “promotion of public awareness of the need for political reform.”

Arguing against the refusal, Applicant, who represented himself, stated:

… [I]t can only be that which follows that can distinguish one mark from another, … It [is] beyond the scope of this letter to even begin to argue against the initial trademark of the sole expression “We The People”, all universal expressions, be it We The People, The Declaration of Independence, LIFE, LIBERTY, and The PURSUIT OF HAPPINESS, … should be required to ADD a follow-on qualifier (as in our case, the word PLAN). To my mind, it’s akin to someone simply registering “United States” … it should be forbidden. It should ONLY be allowed WITH a qualifier “United States X”. … As stated, the weighted emphasis shouldn’t simply be on the WE THE PEOPLE, because it is common to both, … it is vital to look at the next word or series of words keeping in mind that we make NO claim to the expression “we the people” by itself (and as I stated previously, I’m surprised that ANYONE was allowed to because this is one [of] those few expressions that I think belongs to all of us, as Americans … what comes after “we the people” it’s the first phrase in The U.S. Constitution; it’s the expression that identifies ALL Americans AS Americans … the fact, that we are having difficulty being We The People PLAN because someone was allowed to be “we the people” seems strange….

Applicant also submitted a long list of federal registrations including “We the people” as evidence of extensive third party use.  The TTAB refused to consider these for a variety of reasons, including that the marks covered different goods from those of Applicant and Registrant.

Applicant’s arguments were unavailing, and the TTAB affirmed the Trademark Examining Attorney’s refusal to register WE THE PEOPLE PLAN.

Had applicant been successful, its arguments in the record of the prosecution of its registration would have severely limited its ability to enforce its mark against third parties.  Applicant had itself argued that WE THE PEOPLE was such a common phrase that only “PLAN” could distinguish it from other marks.  It would be easy for anyone Applicant accused of trademark infringement to quote Applicant’s own statements, and hence to make a strong showing of no likelihood of confusion.  Thus, while Applicant presumably wanted to register his mark to have a weapon against infringing use, he substantially undercut the value of any registration.

Federal registrations are valuable tools to use in attacking infringement.  However, one must be cognizant in prosecuting a trademark application to protect the value of the resulting registration.  While there is sometimes no alternative to arguing that a crowded field of similar marks allows room for one more, namely the one in the application, where this argument can be avoided, it is often wise to do so.

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Janet Marvel 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.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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April 22, 2011

The United States Patent and Trademark Office Seeks Comments on whether the Trademark Trial and Appeal Board should become More Involved in Settlement Discussions

Filed under: TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:09 pm

Categories: TTAB
Tags: TTAB, USPTO, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

The USPTO issued a notice of inquiry in the April 22, 2011 Federal Register seeking stakeholder comments on whether the TTAB “should become more directly involved in settlement discussions of parties to inter partes proceedings. . .”  See http://edocket.access.gpo.gov/2011/pdf/2011-9801.pdf.  Specifically, the USPTO wants to determine whether the involvement of an Administrative Trademark Judge (“ATJ”), Interlocutory Attorney (“IA”), or third-party mediator would be desirable.  The deadline to submit comments is June 21, 2011.

The comments on the notice of inquiry suggest that a procedural requirement to discuss settlement with Board personnel might increase the speed with which Board proceedings settle, if not the frequency.  The USPTO, therefore, also requests comments on when in a proceeding the Board should intervene, e.g., after initial disclosures or prior to the answer being filed.  The USPTO further posits that, even if Board involvement does not help settlement progress, it could help parties to narrow issues for trial.

The USPTO posed the following eight specific questions for commentators to answer:

(more…)

October 27, 2010

USPTO Registers Unique “Non-Traditional” Service Mark: A 109-Word Narrative Story — Registration of The Peabody Hotels’ “Legend of the Ducks” Follows Earlier Motion Mark Registration of its Iconic Duck March

Filed under: Pattishall, TM Registration — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:13 pm

Categories: Pattishall Involvement, Trademark (General)
Tags: Andrew N. Downer, Belinda J. Scrimenti, Non-Traditional Marks, Trademark Prosecution, TTAB, USPTO

By Belinda J. Scrimenti, Trademark Attorney

The famous Peabody Hotels in Memphis, Orlando and Little Rock are known for their iconic March of The Peabody Ducks, in which trained mallard ducks, guided by the “Duckmaster,” delight audiences twice-daily.  A red carpet is rolled out, and the ducks leave their rooftop “penthouse,” proceed down an elevator, and march across the red carpet, up steps and into the beautiful fountains in The Peabody Hotels’ lobbies.  The ducks spend their days leisurely swimming in the fountain, and at day’s end perform the March in reverse and retire for the night.  The Ducks have appeared on numerous television broadcasts, including Oprah and numerous travel programs, and received enormous print publicity.

Knowing that the Duck March had become synonymous with The Peabody Hotels, the Hotels’ owner recognized the importance of protecting the valuable intellectual property of both the Duck March and “The Legend of the Ducks” – the 109-word story about how decades ago the Ducks came to march daily to The Peabody fountain. (more…)

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