It is almost that time of year — football season is approaching and with the anticipation of tailgating and touchdowns comes, of course, talk of trademarks. For years, the Washington Redskins have been fighting battles regarding their REDSKINS trademark. The issues have created much controversy due to the purported negative connotation the REDSKINS term gives to Native American groups.

Section 2(a) of the Lanham Act prohibits registration of “disparaging” marks. A number of REDSKINS trademark registrations were challenged on this basis and the Trademark Trial and Appeal Board has agreed, cancelling several such registrations. In fact, for a while it looked like the Washington Redskins might be forced to lose all trademark rights to REDSKINS and even possibly change the team name.

However, the REDSKINS case raised the question of whether Section 2(a) of the Lanham Act violated the Constitution because it constituted a government restraint of free speech. That is, to what extent can the government pass substantive review on terms that are meant for use in the private sector for commercial purposes?

THE SLANTS, SCOTUS and Disparagement

Simon Tam is a musician and formed a band. About eight years ago he sought trademark registration for the band name, which is not uncommon. Here though, the trademark at issue was THE SLANTS. The mark was refused registration because SLANT was viewed as a disparaging term directed toward Asians. Mr. Tam challenged that refusal and it ultimately found its way to the Supreme Court.

On June 19, 2017, the Supreme Court ruled in favor of Mr. Tam finding that Section 2(a) the disparagement clause of Section 2(a) of the Lanham Act was unconstitutional because it constituted viewpoint discrimination. Accordingly, the refusal to register THE SLANTS based on the government’s conclusion that the term was disparaging was improper.

The fate of the REDSKINS mark has been somewhat contingent on the outcome reached in Tam because the argument supporting cancellation of the REDSKINS trademarks was based on Section 2(a) in that REDSKINS was disparaging. With that section of the Lanham Act declared unconstitutional, the Washington Redskins have the opportunity to regain protection for the REDSKINS mark.

Thank you to our Summer Associate Madison Allen for her contributions to this post!

Photo courtesy of Keith Allison Under Flickr Creative Commons License

pro-basketball-team-1594634_1920(1)While we have written on this topic in the past, because the NCAA Basketball Tournament is an annual event and the NCAA gets more aggressive each year, this information bears repeating. Because businesses sometimes tie promotions to the Tournament and use it as a marketing activity, they should be careful how they do so.

The Problem

Continue Reading Don’t Foul Out with MARCH MADNESS Marketing

Eagles_in_concert_September_2014(To the tune of Hotel California)

Once in Northern Virginia, a trademark was filed
A Mexican company a long list compiled
Cosmetics and phone cases, purses, hair gel and shoes
The list went on for six classes, just what did they have to lose?

During examination, a disclaimer was sought
The applicant gladly complied, any fear of refusal was for naught.

Then the mark was published, but the Eagles they did see
Their lawyers got involved
Said you can’t use this for free

Registering HOTEL CALIFORNIA
Such a lovely try (such a lovely try) Such a lovely cry
Don’t even try to use HOTEL CALIFORNIA
For any goods (for any goods) in our neighborhoods….

What Can That “Song” Possibly Mean?

Continue Reading Litigating it up at the HOTEL CALIFORNIA

BrexitBy a slim margin, the United Kingdom voted to leave the European Union (EU) last week. Via the European Union Trademark System and the European Patent Convention a trademark or patent owner had the ability to secure protection across all EU member states by a single, unified registration. Of course, EU protection extended only to EU member states. So, with the UK on the way out of the EU, questions arise as to what protection will the owner of an EU right have in the UK once the BREXIT is complete? For companies that do business in Europe, this could have an impact on European Intellectual Property rights. Smart companies should start considering European options now.

Short Term

It will take at least two years for the UK to officially and fully withdraw from the EU. Until that time, all EU treaties and laws will continue to apply. So, for the near term, there does not appear to be any significant impact.

Long Term

Continue Reading BREXIT: What does it mean to your Intellectual Property in Europe?

220px-Flag_of_Cuba.svgPresident Obama’s historic visit to Cuba is yet another step on the “new course” for US/Cuba relations. Since late 2014 the US and Cuba have been working toward normalizing relations. In January 2015, a number of changes to US sanction and trade policies toward Cuba were implemented which are beginning to open up new business opportunities for US companies in Cuba. While change may be incremental and slow, companies that prepare now for business in Cuba will be ready. One area that US companies should begin to consider regarding conducting business in Cuba is protection of their intellectual property in that country.

Cuban Trademark System

Continue Reading Preparing for Business in Cuba

House_of_Cards_logo.svg

Trademarks are vitally important to business. The names of a business, product or service are the first things the public encounters. US trademark law protects the rights of the first party to use a mark against use of the same or similar mark by others for the same or similar goods and services. Among the rights a first user of a trademark has against others is the ability to seek injunctive relief, requesting a second user to stop all use of a trademark. This could stop a product launch dead in its tracks or result in significant re-branding costs if a product or service is already in the market. Because of this, businesses should carefully consider trademarks before adopting or using them. A very recent lawsuit highlights the importance making sure a trademark is available for use.

HOUSE OF CARDS

HOUSE OF CARDS is a wildly popular series on Netflix that is all the more poignant in this election year. The popularity of HOUSE OF CARDS has spilled over into collateral branding, with the name appearing on, among other things, shirts, coffee mugs and slot machines. A Massachusetts company called D2 Holdings (D2) registered the mark HOUSE OF CARDS in 2009 for various entertainment services, including “comedy action and adventure” programs distributed by various platforms. In 2012, MRC II Distribution Company (MRC II), the producers of the Netflix HOUSE OF CARDS series, tried to register HOUSE OF CARDS for its own television entertainment. That trademark application was rejected because D2 had first registered HOUSE OF CARDS for similar services. The refusal to register the HOUSE OF CARDS trademark did not deter MRC II and it has proceeded to use the name, to great success. Indeed, to such success that the name has been licensed to a producer of gaming machines who now uses that mark on slot machines.

Continue Reading Important Lesson from HOUSE OF CARDS – Search Before Using a Trademark

10608742_10202856137579939_587007998374245216_oFall has arrived, which means professional football is in full swing on and off the field. While on-field activities are geared toward physical dominance, victory and relentless pursuit of the Lombardi Trophy, an equally competitive set of battles wages off field in the world of trademarks.

The National Football League (NFL) constitutes 30 teams and one of the strongest brands in the world. Not only do teams protect their names — BEARS, BUCCANEERS, PACKERS — but also their slogans – WE ARE ALL PATRIOTS, AMERICA’S TEAM, and of course logos. The 2015 football season, full of on-field excitement and drama, also brings two trademark cases that deserve mention.

SUPERB OWL confusing with SUPER BOWL?

Continue Reading 15 yards for Trademark Infringement?

iStock_000050275830_LargeHana Financial, Inc. v. Hana Bank is the final case we’ll discuss reviewing the recent Supreme Court decisions. This case involved review of a very specific issue, namely, whether “tacking” is a question of fact or law.

What is “Tacking”?

Under general principles of trademark law, the first party to use a mark generally has the superior rights. Technically, each time a party modifies a trademark, a new trademark is created and use of that mark relates only to that particular mark and not to any prior iterations of the mark.

However, the doctrine of “tacking” has evolved to allow trademark owners the ability to change their marks and still claim priority based on prior versions of a mark. Basically, a trademark owner may “tack” its use of an altered mark onto its use of the original, prior mark when both marks convey a “continuing commercial impression.” The determination of whether there is this “continuing commercial impression” involves an assessment of how consumers would perceive the original and altered forms of the marks as they appear in the marketplace. If the two would be considered as conveying this “continuing commercial impression,” then the rights in the mark would relate back to use of the original mark.

Facts of the Case

Continue Reading Judicial Update: SCOTUS Rules Tacking is a Fact Question for the Jury

TrademarkUnder the Lanham Act, before any trademark registration will issue, an application must first be published for opposition. This publication provides the public with an opportunity to challenge registration of a trademark by another party. An opposition action is an adversarial proceeding before the Trademark Trial and Appeal Board (TTAB) and though not generally as lengthy or formal as litigation in the courts, follows essentially the same process. While there are a number of bases for an opposition, the most common is based on an allegation from one party that the trademark of the other party is likely to be confused with its own. Oppositions involve pleadings, discovery, depositions, legal briefs and ultimately oral arguments in front of a panel of three administrative judges of the TTAB. This panel ultimately issues a written opinion and a decision as to whether the opposed mark is or is not entitled to registration.

An opposition action is very narrow, however, as it only relates to the question of whether a particular trademark is entitled to registration. Issues outside that (such as any actual infringement of a trademark or damages) are not addressed. Historically, those issues are addressed via trademark infringement litigation in federal court. There has always been a question, however, as to the impact of a TTAB decision regarding registrability of a given trademark in any other trademark litigation between the parties at issue. If the TTAB determines that A’s trademark is confusingly similar to B’s, does that automatically mean that A’s mark is confusingly similar to B’s in the courts? Per the recent B.B. Hardware v. Hargis Industries decision, the answer is potentially yes.

Facts of the Case

Continue Reading Judicial Update: TTAB Decisions Have Greater Impact After B&B Hardware Decision

4090049313_b3ae09a508_mMany people ask “Why do I need to register my trademark?” True, the owner of a mark will obtain some measure of common law rights by simply using a mark, but these rights are limited in scope when compared to the more important rights conferred by a Federal trademark registration.

Exclusivity Nationwide

One of the most important benefits of Federal registration is that a registration creates a legal presumption that you own that mark and have the exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in your registration. Therefore, a Federal registration confers exclusivity and for another party to claim otherwise and contend that a trademark owner does not have such rights requires a potentially significant showing.

Continue Reading Why You Should Seek Federal Registration of Your Trademark