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Audio of Federal Circuit Oral Argument case: THE SLANTS

Posted by ipelton on: January 9th, 2015

This morning, the United States Court of Appeal for the Federal Circuit heard oral arguments regarding the trademark application for THE SLANTS. The TTAB had denied registration of the mark as disparaging under Section 2(a) of the Trademark Act in a precedential opinion October of 2013. See TTAB opinion here.

The argument today touched on multiple issues, including First Amendment issues. Of course, the REDSKINS trademark registration cancellation decision from the TTAB has been appealed to a District Court in Virginia and the issues raised in that appeal also include the Constitution and first amendment.

The audio of today’s hearing in THE SLANTS case (In Re Tam) at the Federal Circuit can be heard here:

http://www.cafc.uscourts.gov/oral-argument-recordings/search/audio.html

United States Court of Appeals for the Federal Circuit

 

Top Trademark TrendsSM of 2014

By Erik M. Pelton & Associates® – The Nontraditional Trademark Lawyers®

Once again, trademarks and pop culture collided frequently in 2014. For example, more than 50 “JOHNNY ____” applications were filed this year as quarterback Johnny Manziel was drafted by the Cleveland Browns including JOHNNY MAN’Z ALE, JOHNNY CLEVELAND, JOHNNY HOCKEY, JOHNNY PIGSKIN, and JOHNNY BENCHWARMER. Another football trademark story made big news as the U.S. Patent and Trademark Office (“USPTO”) ruled in a case to cancel the Redskins trademark registrations.  Other big news stories, like the ebola outbreak, also were reflected the trademark filings. Another remarkable trademark story from 2014 was the Supreme Court, for the first time in several years, hearing a trademark case (B&B Hardware, Inc. v. Hargis Industries, Inc.). The case involves the differences in proceedings before the USPTO’s trademark appeal board and the Federal courts, and the Court will likely rule on it in the spring of 2015. Here is a summary of the year’s major trademark related developments:

Washington, DC Professional Football Team Trademark. In June, the USPTO’s Trademark Trial and Appeal Board granted a request filed by several Native Americans to cancel those trademarks that feature the term “Redskins.” However, the decision is now on appeal and the ongoing dispute, which has lasted for over a decade, continues. Following the decision, many other applicants filed trademark applications for potential team names, such as WASHINGTON AMERICANS, WASHINGTON NATIVES, WASHINGTON FEDSKINS, WASHINGTON WARRIORS.

Popular Terms: Selfie, Drone, Weed, Vape, and more. Once again, the most popular words and phenomena in pop culture made their way into many trademark filings. The 2014 word of the year, according to Oxford English Dictionary, is “Vape.”  And business owners certainly agree as more than 300 applications were filed at the USPTO featuring the word VAPE. Other popular trademark terms in 2014 included SELFIE (140+ applications), DRONE (100+ applications), and WEED (150+ applications). More than 100 filings in 2014 contain the “#” hashtag symbol. Online and environmental branding trends from the last few years contained in 2014 as SOCIAL remained popular (400+ applications), along with CLOUD (700+ applications), while more than 1,000 applications were filed featuring GREEN.

Logo Trends. As even more business and advertising moves online and via mobile devices, logos are trending to simpler smaller designs, which make them faster to load and easier to see on mobile screens. Terrific logo redesigns from popular online businesses include those from FOURSQUARE , PayPal, and AirBnB.

 PayPal Logo

Ebola. The spread of ebola was certainly a big story in 2014. At the USPTO, there were several applications filed for ebola related treatments and products including ZMAPP (Pharmaceutical preparations for treatment of Ebola virus infections), EBOLAHOL (antiviral disinfectant products for Ebola), EBOLAWAY (Antibacterial and antiviral sprays and wipes for eliminating bacteria and virii), and EBOLA OUTBREAK MAP.

Controversial Trademark Filings. The ALS Association rode a wave of viral social media activity last summer to raise more than $100 million dollars. Most of the activity was the result of the “ice bucket challenge.” The Association made quite a stir later in the summer when it applied to register four trademarks featuring the phrase, including ICE BUCKET CHALLENGE and #ICEBUCKETCHALLENGE. However, following a rapid backlash questioning the charitable intent and legality of claiming sole ownership and control of the phrase, the Association withdrew the applications.  Other questionable trademark filings included names related to tragedies, such as the MH17 and MH370 airplanes.  Last year’s trends noted the numerous BOSTON STRONG trademark application filings; as of today all but one of them has been abandoned.

Trademark scams continue. Despite one law firm’s successful quest to shutdown an operation preying on trademark holders, such scams from numerous companies offering negligible or questionable services remain prolific. Join a petition to “Request USPTO Investigation and Action Regarding Trademark Scams” here.

What to look for in 2015. Expect even more trademark disputes to go viral via social media, building upon the success of EAT MORE KALE fending off a claim from Chik-fil-A and Eat Mor Chikin. Also expect the number of nontraditional trademark filings to continue to grow as more brands protect colors, sounds, shapes, and other indicators of source featuring more than words or logos.

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© 2014 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

About Erik M. Pelton: Erik Pelton® has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates, PLLC®, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 2,000 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2014, Erik presented on trademark and branding issues to a variety of audiences, including the American Bar Association and a junior high school class.

Prior issues of Top Trademark TrendsSM

Yesterday, the Supreme Court heard a trademark case for the first time in several years. The issues in the case (B&B Hardware, Inc. v. Hargis Industries, Inc.) are not straightforward, and the procedural history is quite complex as the two parties involved have been engaged in various forms of trademark disputes with each other for more than a decade. For more details and the parties’ briefs, see SCOTUS blog here.

I anticipated the hearing on Tuesday would focus more on administrative law principles and the complex history in the case. I was wrong, the oral arguments and questions from the judges involved many fundamental trademark law issues. At its core, the argument came down to whether a TTAB proceeding is akin to full court dispute, and whether the issues and evidence available in an inter partes dispute at the TTAB are different from the issues and evidence available in an infringement action in District Court.

It was my first time ever inside the Supreme Court, and it did not dissappoint. Elegant, formal, and enormous. The building and the aura are impressive.

At its core, the discussion centered around whether a TTAB proceeding and a District Court infringement proceeding are similar enough such that if the TTAB has ruled regarding two marks used in commerce, should another action regarding the same marks and good/services in federal court be precluded?

While they are not identical proceedings, the differences are not huge, in my opinion. There really are no limitations in a TTAB proceeding other than no live testimony before the judges. And a TTAB litigant could remove the case to District Court if they believe infringement is an issue and the procedures or other aspects of the TTAB case harm the party’s potential to make their case. Furthermore, a TTAB case can be reviewed de novo on appeal, with new evidence, by a District Court. This point was reiterated by several of the judges on the Supreme Court multiple times.

A central issue that came up in the arguments repeatedly is whether, or how, the TTAB considers the circumstances of use. Despite some differences in the statutory language, most of the judges appeared ready to conclude that of course the TTAB considers the context of use on the goods or services. The Board often does consider those issues, in my experience. And a party that believe those issues are relevant can certainly introduce evidence about the issues. Furthermore, a party that believes that clarification of a description of goods at the USPTO would have a bearing on the proceeding may move, under Section 18 of the Trademark Act and/or a counterclaim, to restrict the registration or application at issue (although this was not raised by either of the parties or any of the judges). For example, a party in a Board proceeding could move for “shirts” to become “fireproof shirts sold for industrial purposes,”  or for “electronic publications in the field of healthcare” to become “electronic publications in the field of healthcare, namely, newsletters for cardiologists in the field of cardiology.” While it was not raised in the hearing before the Court, the availability of Section 18 means that the manner of use or the details of how a mark is used with the goods can be made at issue before a Board proceeding by any party if it properly raises the issue.

My Prediction:

After the hearing today, I believe it is likely that the Supreme Court will find preclusion, while allowing for standard exceptions.

Why? Because while the TTAB and infringement proceedings are not identical they are similar enough such that: (A) the TTAB always suspends its proceedings if there is a separate District Court action between the parties, and (B) I am not aware of any case in which the TTAB did not follow the same findings and outcome of  District Court decision. In other words, I’m not aware of any time when a District Court – while considering all the conditions of sale and marketplace factors – has ever reached an outcome that the TTAB did not follow, even thou the scope of the issues on the table at the TTAB relating to “four corners” of the application or registration were not precisely the same.

If the Supreme Court does find preclusion, how might that changes trademark practice and the types of proceedings before the TTAB? If my predicted outcome is correct, will it lead to more TTAB litigation or less in the future? I believe it could lead to more, because TTAB cases are more manageable and more predictable and less expensive. TTAB disputes fit better into the budgets and plans of corporations. I think that using Section 18 to limit the scope of marks involved in proceedings – so that on paper they match the circumstances in the marketplace – will certainly continue to grow as a option used by parties.

A few other notes from the hearing:

The Solicitor General’s office pronounced TTAB as “T-T-A-B.” Counsel for both parties used “T-Tab.”

Counsel for both parties and the Solicitor’s office all did a terrific job addressing the many questions from the Court.

Below is a photo if me on a cold wet morning in front of the mighty steps of the highest court in the land.

 

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Last week, several notable and interesting trademark opposition cases were filed at the Trademark Trial and Appeal Board of the USPTO:

Trademark image Trademark image

  • Selfie Inc. opposed registration of SELFIE + for Downloadable camera app for photo distribution
  • The Edison Institute DBA The Henry Ford (which includes the Henry Ford museum and attracts nearly 2 million visitors) opposed THE WRIGHT BROTHERS bumper stickers and other items from The Wright Family Foundation

As with Oppositions in general, many of these cases will be likely settled. Some of the application will likely be abandoned. Neither action is necessarily an indication of whether the claims had legal merit.

 

Major League Baseball teams oppose many trademark applications. Got a “W” or a “C” in your logo? Better be prepared to hear from Washington Nationals or Chicago Cubs. Got “Boston” or “Detroit” in your name? You might be hearing from the Red Sox or the Tigers.

For example, the Chicago Cubs recently opposed this logo:

In one recent week, MLB teams filed at least 8 oppositions at the USPTO. See below for details — click TTABvue for the full USPTO records.

Are MLB teams pushing the boundaries of reasonable trademark enforcement? Are they trademark bullies? Are they using their power and money to expand their trademark protection beyond where the law is meant to allow? I think these questions are worthy of discussion. For now, I will leave the answers up to you.

For more filings at the TTAB, including those from MLB, see www.TTABulator.com.

TTABVue 91215978 CFAN DESIGNS, INC. 85945826 C/FAN Chicago Cubs Baseball Club, LLC
TTABVue 91216093 BROOKLYN ARENA, LLC 85837679 BROOKLYNTASTE Los Angeles Dodgers, LLC
TTABVue 91216090 CAPTURE MEDIA INC. 86028767 C CAPTURE Chicago Cubs Baseball Club, LLC
TTABVue 91215982 EBSCO INDUSTRIES, INC. 85944984 PAWS N CLAWS Detroit Tigers, Inc.
TTABVue 91216073 EDGE ATHLETIC CLUB, INC. 85313268 EDGE ATHLETICS Athletics Investment Group d/b/a The Oakland Athletics Baseball Company
TTABVue 91215980 GRAND PRIX ENTERTAINMENT HOLDINGS, LLC 85918689 ROYAL Kansas City Royals Baseball Corporation
TTABVue 91215977 MG ENTERTAINMENT GROUP INC, MG ENTERTAINMENT GROUP, INC. 85929544 DUELO DE GIGANTES San Francisco Baseball Associates LLC
TTABVue 91216104 UBISOFT ENTERTAINMENT 85966322 RAYMAN Tampa Bay Rays Baseball Ltd.