The TMCA

Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these circumstances, will judgment be entered against the applicant and in favor of opposer in the proceeding? It depends on how the settlement agreement is phrased, according to a recent decision of the TTAB on reconsideration in Kathy Michael d/b/a Cedar Cove Inn v. Debbie Macomber, Inc., Opp. No. 91239859 (non-precedential). Unless the settlement agreement specifically states that the opposer expressly consents to the abandonment of the application, judgment will be entered against the applicant. The opposer in Macomber entered into a settlement agreement with the applicant that included a number of substantive provisions concerning ongoing use and registration of the parties’ respective marks. With respect to the opposed application, the agreement specified: “Express Withdrawal of Application. [Applicant] shall, by December 14, 2018, expressly withdraw pending U.S. Trademark Application No. 87586893.” The Agreement did not include a specific provision as to how the opposition proceeding itself would be resolved. After the settlement agreement was executed, the applicant filed a motion to abandon its application without opposer’s written consent. Three days later, the TTAB entered judgment against the applicant, the opposition was sustained, and the application refused. So far so good for opposer. But the next day, the applicant filed a “corrected” motion to abandon the application, this time including an allegation of opposer’s consent based on the signed settlement agreement. The Board then issued an order noting the corrected motion to abandon the application with opposer’s written consent and dismissed the opposition without prejudice. Not so good for opposer. So the opposer filed a request for reconsideration, arguing that the Board had erred in accepting applicant’s assertion in the “corrected” motion that the signed settlement agreement constituted the required written consent to abandonment of the application that would result in a dismissal of the opposition without prejudice. On take three for the TTAB, the Board agreed that it had indeed erred by dismissing the opposition without prejudice in response to the “corrected” motion. According to the Board, Trademark Rule 2.135 provides that after an opposition has been commenced, if the applicant files a written abandonment of its application “without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant.” The Board agreed with opposer that at no point in the settlement agreement did it provide its express consent to withdrawal of the application. According to the Board, signing the settlement agreement just “means that the parties consent to settling their dispute on the terms set forth in the agreement.” The Board further rejected applicant’s argument that the reciprocal promises included in the settlement agreement should be construed as a consent to the withdrawal, even though the settlement agreement did in fact provide for the withdrawal of the application. In other words, just including terms in a settlement agreement requiring the applicant to withdraw the opposed application -- but without also specifying either that opposer consents to the withdrawal or that the parties agree that the opposition will be withdrawn instead of being sustained -- will not be considered the equivalent to express consent by opposer that will lead to a dismissal of the opposition without prejudice. Here are the takeaways from the Board’s decision on reconsideration: If an applicant wants to withdraw its application and not have judgment entered against it in the proceeding, the settlement agreement must specifically provide that the withdrawal will be with the express consent of opposer One way to ensure that the parties mutually understand how an application will be abandoned is to attach an exhibit with the form of abandonment (and exact language) agreed to If an opposer wants to have judgment entered against the applicant, silence in a settlement agreement about whether consent will be provided to the abandonment of the application will be construed against the applicant, and opposer will be entitled to judgment sustaining the opposition.

Earlier this year the United States Patent and Trademark Office proposed a rule requiring foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board Proceedings to be represented by licensed U.S. attorneys. Following public comments, the PTO issued the final rule on July 2, which will become effective on August 3, 2019. The comments revealed that stakeholders such as the International Trademark Association, the American Bar Association, and the American Intellectual Property Law Association, as well as corporations were supportive of the proposed rule, and generally pleased to see the PTO’s action to help maintain the integrity of the register and prevent fraudulent filings. While many commenters showed support for the rule, they also expressed concern that these measures are not enough, and that additional mechanisms should be required. The rule requires foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by licensed U.S. attorneys. According to the PTO, a “foreign-domiciled” trademark applicant, registrant, or party is 1) an individual with a permanent legal residence outside of the U.S. or its territories; and / or 2) an entity with its principal place of business outside of the U.S. or its territories. U.S.-licensed attorneys representing applicants, registrants, or parties to USPTO proceedings already must provide their name and contact information and identify the jurisdiction of their bar licensure. Because of the new rule, U.S.-licensed attorneys will now also need to provide their bar identification number (if available) and their year of admission to the jurisdiction. The applicability of the new rule to Section 66a filings under the Madrid Protocol is more nuanced. For the very small percentage of Madrid Protocol filings that comply with all formalities and statutory requirements upon filing and are in a condition for publication, the U.S. counsel requirement will not apply. As the PTO explained, there is currently no provision for designating a U.S. or any other local attorney in an application submitted to the International Bureau of the World Intellectual Property Organization, and so until the Madrid system is updated to allow for the designation of a U.S. attorney upon filing, the requirement would be waived. (The USPTO reported that only 2.9% of all Madrid applications in 2017 met this criteria). However, for Madrid applications that do not comply with all requirements upon filing, the requirement of a U.S.-licensed attorney will be made in all provisional refusals. The rule also carves out an exception for countries that have reached an official understanding with the PTO to allow substantially reciprocal privileges to U.S. practitioners representing U.S. entities in their trademark office. At this time, only the United States and Canada have such a relationship. The impact of this rule will be to continue to let Canadian trademark attorneys and trademark agents represent clients, but to prohibit Canadian patent agents from representing clients in new filings. The PTO sought comments on whether the PTO should 1) defer examination until the applicant appoints U.S. counsel, or 2) conduct a complete examination of the application and include the representation requirement among the issues in an office action that gives applicants six months to correct the deficiencies. Most commenters strongly encouraged the PTO to defer examination on any application until U.S. counsel is appointed, so the PTO would not be held up by potentially fraudulent applications filed by foreign applicants. Despite stakeholders’ recommendation, the PTO decided against deferral, explaining that its current electronic systems cannot accommodate this method, but that it would explore ways to update its system to do so. Interestingly, however, the PTO adopted a course stronger than deferment for TEAS Plus applications. The PTO made the U.S. attorney and bar information required fields and applications will be refused a filing date unless these fields are completed. The new rule is just one new measure from the PTO to curb fraudulent filings with the USPTO. Now that the rule will take effect on August 3, 2019, it will be interesting to see whether the requirement of a licensed U.S.-attorney will lessen the number of fraudulent filings with PTO. Watch The TMCA for updates regarding this new rule and related issues.

Many practitioners take for granted the fact that any TTAB deadlines that fall on a Saturday, Sunday or Federal holiday are automatically extended to the following business day. As it turns out, this isn’t always the case. A recent decision on a Petition to the Director in Asustek Computer Incorporation v. Chengdu Westhouse Interactive Entertainment Co. affirmed a precedential TTAB decision that a motion to compel was not timely filed on Monday, September 25, 2017, the day after the deadline that fell on a Sunday. Under Trademark Rule, 2.120(f)(1), “[a] motion to compel discovery must be filed prior to the deadline for pretrial disclosures for the first testimony period.” Because the deadline for pretrial disclosures was Monday, September 25, 2017, Petitioner had until Sunday, September 24, 2017 to file its motion to compel. Petitioner argued that its deadline to file the motion to compel rolled over to Monday, relying on Trademark Rule 2.196. That Rule provides that when the last day fixed by statute or regulation for taking any action falls on a Saturday, Sunday or Federal holiday, “the action may be taken…on the next succeeding day that is not a Saturday, Sunday or a Federal holiday.” The TTAB disagreed that the motion to compel deadline extended to Monday. The due date for pretrial disclosures was unaffected by Trademark Rule 2.196 and remained Monday, September 25, 2017. Petitioner therefore remained obligated to file any motion to compel no later than the day before that date. As the Board explained, Trademark Rule, 2.120(f)(1) does not fix a particular deadline for filing a motion to compel but, instead, ensures that any such motion must be filed before pretrial disclosures occur. Because Trademark Rule 2.196 does not apply, the TTAB declined to consider Petitioner’s motion to compel as untimely. These particular facts are not the only scenario in which a deadline may not extend through a weekend/holiday. For example, the TTAB has already held that Trademark Rule 2.196 does not apply to the requirement that discovery be served early enough so responses will be due no later than close of discovery. So next time your docket says that a deadline falls on a weekend or federal holiday, think twice before assuming that the deadline will roll over to the next business day. Practitioners need to look at the nature of the deadline to see if it is a prescribed deadline that is governed by Trademark Rule 2.196, or a deadline that may fall outside the scope of Trademark Rule 2.196, for example because it is based on an action that needs to occur before another deadline occurs. This post is part of a regular series called Quirky Questions: TMCA Edition. Our labor and employment colleagues have a great blog, Quirky Questions, where they answer unanticipated questions regarding the workforce. We liked the concept (and their blog) so much that we’ve started a series of quirky question posts here on The TMCA. We hope you enjoy the series — feel free to send in your suggestions for quirky questions about trademarks, copyrights and advertising.

Recently, the Court of Appeals for the Federal Circuit vacated and remanded to the Trademark Trial and Appeal Board a decision on an ex parte appeal regarding a likelihood of confusion between the applicant’s mark GUILD MORTGAGE COMPANY & Design for mortgage banking services and a registration for GUILD INVESTMENT MANAGEMENT for mortgage investment advisory services. The TTAB’s ruling denying registration of the GUILD MORTGAGE COMPANY & Design mark did not take into consideration the evidence of long-standing co-existence in the marketplace of the applicant and the registrant. During the prosecution phase, the applicant submitted a Declaration from its President and CEO that applicant was not aware of any instances of actual confusion with the GUILD INVESTMENT MANAGEMENT mark during more than 40 years of co-existence in the marketplace of the two trademark owners. The Examiner rejected this argument in a final office action, and on appeal to the TTAB, the Board did not even address the applicant’s Declaration when it affirmed the refusal of registration. The Federal Circuit vacated the Board’s decision, holding that the Board had failed to consider relevant argument and evidence on the issue of likelihood of confusion. As the appellate court explained, in a likelihood of confusion analysis, the TTAB is supposed to consider thirteen potentially relevant factors enunciated in In re E.I. Du Pont De Nemours & Co., 476 F.2d 1357 (CCPA 1973), some of which are more persuasive than others. For example, Factors 1 and 2 (the similarity of the marks and the similarity of the goods/services) generally play a very significant role in the overall assessment of likely confusion. Factor 8 is “The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.” In its decision on the registrability of the GUILD MORTGAGE COMPANY & Design mark, the TTAB analyzed four DuPont factors pertaining to the similarity of marks, the overlap of goods/services, the sophistication of the consumers, and the number and nature of similar marks in use on similar goods/services. But it wholly ignored the 8th factor in its opinion, notwithstanding the evidence in the record in the form of the Declaration attesting to the absence of actual confusion over a 40 year period of co-existence. On appeal to the Federal Circuit, the PTO contended that the Board did not have to credit the applicant’s Declaration in an ex parte registration proceeding because it was an “uncorroborated statement,” “irrelevant” and outweighed by other factors favoring a finding of likely confusion. The Federal Circuit disagreed, faulting the Board’s analysis because there was “no indication that it considered DuPont factor 8, for which there was argument and evidence. The Board’s opinion does not mention factor 8 let alone address [applicant’s] argument and evidence directed to that factor.” And because the evidence of long term co-existence without likelihood of confusion would have weighed in favor of a finding of no likelihood of confusion, the Board’s error could not be considered “harmless.” As the court stated, “We make no assessment as to the evidentiary weight that should be given to Guild’s CEO’s declaration and simply hold that it was error to not consider it. We leave it to the Board to reconsider its likelihood of confusion determination in the first instance in light of all the evidence.” On remand, will the TTAB’s further focus on the 8th factor be enough to change its prior decision affirming the refusal of registration?  Given the overall analysis and weighing of the DuPont factors, the TTAB may not change its position.  But it will be required to finish its assessment of all of the DuPont factors on which there was evidence and argument. On its face, it could be that the TTAB just wrote an incomplete opinion.  If so, the CAFC’s remand of the decision to the TTAB could be little more than a parent making a child more thoroughly complete a homework assignment, but with the same end result. How might this have been approached differently? First, where there are no instances of actual confusion and a longstanding co-existence in the marketplace, an applicant could seek a Letter of Consent from the registrant for submission to the PTO, particularly if the applicant had priority of use vs. the registrant and some leverage for requesting the consent. It is not part of the public record, but it is possible that the applicant did seek consent and the registrant refused. Second, why did the applicant wait such a long period of time to seek registration of its mark at the PTO?  If use commenced over 40 years ago, it would have been a good idea to file an application for the mark at the PTO as soon as interstate commerce commenced, or to file on an intent-to-use basis at a minimum.  Applicant instead was left to deal with an intervening registration at the PTO and a registration effort that turned into a complicated and certainly expensive endeavor.  The applicant still has common law rights in the mark (provided it remains in use), but that’s what it started with when it began the registration process. Trademark Filing Tips File trademark applications at the PTO as soon as practicable. Obtaining presumptive nationwide registration rights for a trademark is highly valuable, particularly for a growing company. Conduct trademark searches before filing to identify any obvious obstacles to use or registration of a trademark. Seek consent from a prior registrant if possible, or consider buying rights in the registrant’s mark to remove an obstacle to registration at the PTO. Keep an eye on valuable trademark rights by subscribing to trademark watching services so that action can be taken to stop others from using identical or confusingly similar trademarks as early as possible.

The U.S. Supreme Court’s blockbuster rulings in Bell Atlantic Corp. v. Twombly and Ashcroft v. Iqbal represented a major shift in federal pleading standards. Resolution of motions to dismiss frequently turns on whether a complaint meets Twombly’s so-called “plausibility” standard. In the context of a motion to dismiss a petition for cancellation of a trademark registration, however, not much appears to have changed since Twombly and Iqbal, at least in the context of a claim of abandonment. Late last year, in Lewis Silkin LLP v. Firebrand LLC, the Trademark Trial and Appeal Board denied a motion to dismiss, holding that an allegation that a trademark owner is not using a mark with its goods and services, and has no intent to resume use, is legally sufficient to plead an abandonment claim. Notably, the Board reiterated its position that the “the same pleading standard for abandonment claims has been in effect since the 1989 implementation of the [Trademark Law Revision Act of 1988].” Is the Board simply ignoring Twombly? And can it really do that? The answer to the latter is certainly no – indeed, the Board noted that it follows the “federal standard of notice pleading,” including the plausibility standard articulated in Twombly and Iqbal. Whether the Board is properly applying Twombly is a closer question, one that probably will not be definitively answered until the Court of Appeals for the Federal Circuit weighs in on the pleading standard for cancellation claims. In the Lewis Silkin proceeding, Respondent Firebrand moved to dismiss a petition for cancellation of its registration for the mark FIREBRAND for a “newsletter dealing with brand and product development” and “business consultation services.” The cancellation petition pleads merely that “[o]n information and belief, Respondent is not using Respondent’s Mark on or in connection with Respondent’s Goods and Services with no intent to resume such use.” Under the Lanham Act, a mark is deemed to be “abandoned” when its use has been discontinued with intent not to resume such use. Applying that statutory definition, the Board held that “an abandonment claim must plead nonuse, which is use that has been discontinued, plus ‘intent not to resume such use.’” Firebrand argued that Lewis Silkin’s mere recitation of the statutory elements is insufficient to meet the Iqbal/Twombly standard for pleadings. That standard requires that a complaint “state a claim to relief that is plausible on its face,” and cautions that “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” While Firebrand seems to have a point, the Board did not agree. Rather, it observed that the “much-quoted reference to ‘threadbare’ recitals does not establish a per se pleading standard” and, quoting Iqbal, stated that “[d]etermining whether a complaint states a plausible claim for relief will . . . be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” In other words, “while the Iqbal/Twombly standard applies to all civil complaints, the Supreme Court makes clear that there is flexibility in application of the standard.” The Board then noted that, while the Federal Circuit has not applied the Iqbal/Twombly standard to abandonment claims, its application of that standard to pleadings of patent infringement is “instructive,” as the Federal Circuit has repeatedly denied motions to dismiss that seek overly-detailed pleading. The Board also referenced three previous cases in which it had occasion to apply the Iqbal/Twombly standard to abandonment claims. In each of those cases, the Board held that the Iqbal/Twombly standard did not require more than the traditional pleading of nonuse plus intent not to resume. Finally, the Board distinguished its pre-Iqbal decision in Otto Int’l Inc. v. Otto Kern Gmbh because in that case, the petition to cancel, among other things, failed to allege that the respondent had discontinued use of its mark with an intent not to resume use. By contrast, in Lewis Silkin, the Petitioner’s “abandonment claim is not merely a formulaic recitation of the elements of the claim, because . . . the allegations of nonuse plus intent serve both to describe the claim and to describe the necessary facts to support the claim.” The Board did provide some clues as to the policy rationale for its arguably questionable application of the Iqbal/Twombly standard to cancellation claims. Specifically, the Board stated that it saw no purpose in requiring detailed pleading requirements for an abandonment claim, particularly in light of the fact that there is no list of activities that always show trademark use, and actual intent not to resume use “also must relate to the use in commerce of the mark.” The Board was also “reluctant to see pleadings devolve into wrangling over whether specific factual allegations offered to demonstrate nonuse and intent not to resume use are sufficient to support the abandonment claim,” as “matters addressing what activities constitute use in commerce under the Trademark Act are best, and traditionally, left to trial.” The Board further remarked that any concerns about an increase in unwarranted abandonment claims could be addressed by participation in discovery conferences, the imposition of sanctions, and the issuance of precedential orders. Although not explicitly touched on by the Board, a less stringent pleading standard for abandonment claims makes some sense in view of the fact that evidence of lack of intent to resume use will generally only be in the possession of the mark owner. As such, it would be unrealistic to expect a petitioner for cancellation to know and plead all the facts necessary to prevail on an abandonment claim. Perhaps this is what the Board was getting it when it noted that Iqbal requires “the reviewing court to draw on its judicial experience and common sense” in applying the Iqbal/Twombly standard. Whether the Board is ultimately right – and whether its standard for cancellation claims passes muster under Iqbal and Twombly – will have to await a decision by the Federal Circuit or, better yet, the Supreme Court. Until that happens, however, cancellation petitioners need only plead that a trademark owner is not using a mark with its goods and services, and has no intent to resume use to survive a motion to dismiss.

In the magical land of the U.S. Patent and Trademark Office, a new chapter has been added to the trademark fairytale: consumers may have a real interest in preventing the exclusive appropriation of merely descriptive or generic terms by trademark owners. The Trademark Trial and Appeal Board recently ruled that Suffolk University Law Professor Rebecca Curtin, as a consumer who asserted that she “participates amongst other consumers in the marketplace for dolls and toy figures of fairytale characters, including Rapunzel”, has standing to oppose an application for “Rapunzel” for dolls and toy figures. The Board rejected the applicant’s argument that only competitors have standing to oppose an application. The Board determined that “[c]consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain, to prevent the owner of a mark from inhibiting competition in the sale of particular goods and to maintain freedom of the public to use the language involved.” This decision has less to do with Curtain’s commercial interests, but is anchored in the principle that an applied-for mark that is merely descriptive of or generic for a class of goods or services cannot be protected as a trademark, and may cause damage to consumers (not just competitors) who are prospective purchasers of goods bearing a descriptive or generic mark. In an attempt to convince the TTAB that Curtin lacked a “real interest” or a personal stake in the outcome of its registration, applicant United Trademark Holdings argued that Curtin needed to have a specific interest in using the term “Rapunzel” in her “business” or in any fashion beyond her mere status as a consumer of Rapunzel brand dolls. But the Board determined that this is too narrow an interpretation of the issue of standing. An opposer is “not required to allege that she is a competitor” to support her claims that the applied-for mark fails to function as a trademark because it is descriptive or generic. To initiate an opposition or cancellation proceeding before the Board, an opposer must show that she has a “real interest” in the registration of the mark, and a “reasonable basis” to believe she would be damaged by the grant of a trademark registration. Curtin’s “real interest” in the registration of “Rapunzel” is as a consumer of dolls and toy figures of fairytale characters that she has purchased and will continue to purchase. Her “reasonable basis” to oppose this application, the board determined, is because registration would “constrain the marketplace of such goods sold under the name ‘Rapunzel,’ raise prices of ‘Rapunzel’ dolls and toy figures, and deny consumers [ ] the ability to purchase ‘Rapunzel’ dolls offered by other manufacturers.” Though the TTAB, protector of the trademark realm, has merely refused to dismiss Curtain’s case, this case presents an interesting point: will extending standing to include any consumers open the floodgates for intermeddlers to oppose and petition to cancel any and all marks, adding to the Board’s docket and jeopardizing applicants and trademark holders? A reasonable guess is that this concern will not come to pass. The Board did not do away with the safeguards of having a “real interest,” a reasonable basis for damage, and a viable claim as to why a mark is not entitled to registration. Mere consumers will likely not get far in TTAB proceedings without articulating a sound basis for questioning a mark that is fanciful just because it will prevent her from using the term in other ways. The Board did dismiss Curtin’s claim that the mark was “functional” as inapplicable to the Rapunzel word mark. We will keep our eye on this dispute to see whether Curtin can get her happily ever after based on the surviving claims.

Late last year, in a decision that bears continued attention, the Trademark Trial and Appeal Board held that oppositions to Madrid Protocol applications filed under Section 66(a) are limited to the grounds set forth in the electronic filing ESTTA cover sheet. Serralles, Inc. v. Kabushiki Kaisha Donq. Moreover, an opposer is precluded from amending a notice of opposition to add grounds beyond those set forth in the cover sheet. In Serralles, the opposition was filed based on a likelihood of confusion with the opposer’s marks in various pleaded registrations, covering only rum. In its trial brief, the opposer further argued a likelihood of confusion based on its common law rights in the same marks as used on other goods/services (rum cakes, chocolates, and bar services). The applicant objected to any arguments based on the asserted common law rights, as opposer had not pleaded them in its ESTTA cover sheet. The Board treated the opposer’s position as an attempt to amend the pleadings to add common law rights, denied that attempt, and gave no consideration to the opposer’s common law rights. Its reasoning was simple: Trademark Rule 2.104(c) means strictly what it says and precludes asserting grounds other than those set forth in the cover sheet. Further, Trademark Rule 2.107(b) precludes any amendment to add grounds not set forth in the cover sheet. One might wonder whether attempting to introduce evidence of use of a pleaded mark for goods/services in addition to those set forth in the registration should be construed as new “grounds,” but it seems clear in light of the Board ruling that they are. The Board noted that the cover sheet includes a “check the box” ability to enter unregistered marks and their associated goods/services, and the opposer’s failure to avail itself of that option was essentially dispositive. Experienced practitioners should be aware of the desirability of alleging common law rights that may exist in addition to registration rights in a notice of opposition. Serralles highlights that it is “speak now or forever hold your peace” when opposing Madrid Protocol applications, and the speaking must be done on the cover sheet. What remedies would the opposer have in related proceedings? In fact, the opposer appealed to the Federal Circuit, and the parties reached a settlement in which the applicant amended its application to delete certain goods/services. Perhaps the opposer could have asserted its common law rights in a cancellation proceeding or a district court action, but res judicata may have prevented such procedural steps. In any event, the practice pointer is clear: an opposer to a Madrid Protocol application must be especially vigilant to assert all grounds for opposition and bases for asserted rights – both registered and unregistered – in the cover sheet.

Back in February, we covered the trademark dispute between the U.S. Army and the Las Vegas Golden Knights professional ice hockey team.  As we predicted, the Army and the Golden Knights have now settled that matter by executing a co-existence agreement allowing both parties to continue using their respective marks. Although that dispute is now resolved, and hockey stars are in the midst of their well-deserved off-season breaks, professional hockey continues to make trademark news this summer.  On July 23, the National Hockey League filed a federal lawsuit, accusing a group of Illinois-based companies and their owner of trademark infringement, false association, dilution, copyright infringement, and unfair competition.  According to the NHL’s complaint, defendants The Hockey Cup LLC, ABC Stein LLC, and A&R Collectibles, Inc. are all owned and managed by one Roger Dewey, who is also named as a defendant in the lawsuit.  The NHL alleges that the “unauthorized use of NHL intellectual property is the very foundation of Defendants’ businesses,” and that Defendants have “made extensive, unauthorized use of NHL and Member Club trademarks and trade dress when marketing and selling products to the public.”  The NHL takes particular exception to Defendants marketing and selling a plastic beer stein (which the complaint labels the “Infringing Stein”) that is a replica of the NHL’s famous Stanley Cup trophy.  The complaint includes the following depictions of the Stanley Cup and the “Infringing Stein”: [one_half]The STANLEY CUP Trophy [/one_half] [one_half_last]The Infringing Stein [/one_half_last] A cause of further distress to the NHL is the fact that Defendants allegedly market the Infringing Stein to create a false impression that the NHL is associated with Defendants and their products.  For example, the complaint claims that Defendants have called the Infringing Stein “The Stanley Stein” and “The Hockey Cup,” have paired images of the Infringing Stein with other NHL trademarks, and use packaging that imitates what the NHL calls the “well-known travel case for the actual Stanley Cup trophy” (depicted in the complaint with the below illustrations). [one_half]The STANLEY CUP Trophy Case [/one_half] [one_half_last]The Infringing Stein Case [/one_half_last] To make matters even worse (from the NHL’s perspective), the Infringing Stein is allegedly “poorly designed and made cheaply,” which the NHL contends causes additional damage to its goodwill and reputation.  Indeed, the complaint quotes Amazon.com reviews as stating that the Infringing Stein is “impossible to clean,” has “no beer flow,” and (gasp!) is “terribly difficult to fill and drink out of and results in flat bear [sic].”[1]  As hockey fans will know, drinking champagne from the Stanley Cup is a time-honored tradition for trophy winners (Alex Ovechkin was pictured in a Las Vegas club drinking champagne from Lord Stanley’s trophy after winning the Cup this spring).  We have yet to hear of a Stanley Cup winner complaining that the Cup is difficult to drink out of or that it “results in flat [champagne]”! As one might expect, the NHL’s lawsuit is not the opening volley in this battle.  Indeed, had Defendants simply gone about their business, quietly selling cheap plastic Stanley Cup replicas, it’s possible the NHL would have left them alone.  Instead, however, Defendants filed intent-to-use trademark applications in the PTO in 2017 for the following design marks to be used on mugs and beer cups: [one_half][/one_half] [one_half_last][/one_half_last] The NHL then filed an opposition to Defendants’ trademark applications, citing twelve NHL Stanley Cup-related trademark registrations and alleging Defendants’ marks would create a likelihood of confusion.  Defendants responded aggressively, to say the least – filing counterclaims in the PTO seeking cancellation of all twelve of the Stanley Cup registrations cited in the NHL’s opposition.  Apparently incensed by Defendants’ cheek, the NHL then commenced this lawsuit. Given their past conduct in the PTO, Defendants are not likely to fold easily.  Legally speaking, however, they may be on thin ice.  Notably, even though the NHL does not appear to currently sell beer mugs or steins in the shape of the Stanley Cup, it is not required to prove lost sales to prevail in this lawsuit.  Instead, the NHL need only show that there is a likelihood of confusion as to source, sponsorship, connection, or affiliation.  In other words, if a consumer goes online, sees the Infringing Stein, and is likely to think that the product or its manufacturer is affiliated with the NHL (not an unreasonable assumption), that is probably enough.  We will continue to follow the developments in this case but – as of now – the smart money seems to be on the NHL emerging victorious. [1] A review of Amazon.com reveals that the Infringing Stein is actually fairly popular – with a review score of 4.2 out of 5 – suggesting that the NHL may have cherry-picked some of the less enthusiastic reviews.

TheTMCA.com blog has had a busy first half of 2018 with a total of 62 posts so far this year. Thank you to our loyal readership, which keeps growing. In case you missed them, here are our top 8 posts of 2018 so far, with topics including the new GDPR privacy law, the Trump brand loss in a trademark license battle, music copyright issues and the large number of works entering the public domain next year. What's up with WHOIS? The GDPR May Limit or Prevent Access to Domain Name Registration Info Trump Brand Loses Trademark Licensing Dispute – Rules of Contract Law Prevail "Sleevey Wonders" are "Arm Tight" in California Lawsuit Tune Up: Initial Lessons from Gibson's Most Recent Trade Dress Lawsuit Adnan Syed Won a New Trial (Again), But the Serial Podcast Lost its Own Appeal Large Number of Works Set to Enter the Public Domain in 2019 Extra Foam, Please: Common Sense Prevails and Court Finds that Starbucks Lattes Contain Foam Did The 9th Circuit "Blur the Lines" in its Latest Music Copyright Case?

Stop me if you’ve heard this one before: an OB-GYN you probably don’t know named Dr. Drai applies to register his name as a trademark and ends up in a dispute with famous rapper Dr. Dre because the rapper fears there will be confusion between the names. A three-judge administrative panel decides “DR. DRAI” looks and sounds like “DR. DRE,” and agrees that Dr. Dre is really famous and that his brand is strong and distinct, but ultimately rules that there’s no risk of confusion. This might sound like an elaborate setup to a geeky joke, but on May 3, 2018, the Trademark Trial and Appeal Board decided a case with just those facts, holding that Dr. Drai was entitled to register his trademarks. See Andre Young v. Draion M. Burch DO. News of the TTAB decision caused some head-scratching on social media, wondering, what was Dr. Dre thinking? Why did Dre—a famous rapper and headphone mogul—believe that consumers would confuse his brand with that of an OB-GYN? The answer likely lies in the goods and services covered by Dr. Drai’s trademark applications (one for the DR. DRAI word mark and the other for the logo form of his mark). Although Dr. Drai provides obstetrics and gynecological medical services, he’s also a motivational speaker, and uses his brand to promote books, make television and radio appearances, conduct Twitter chats, and participate in speaking engagements and online videos, all relating to women’s health and transgender health topics. In the broadest sense, this makes Dr. Drai—like Dr. Dre—an entertainer. In fact, the challenged Dr. Drai applications covered Classes 9 (Computers, Software, Electronic instruments, & Scientific appliances) and 41 (Education, Amusement, Entertainment, Reproduction)—two classes in which Dr. Dre’s marks are also registered. So, contrary to some of the biting online commentary that followed the TTAB’s decision, Dr. Dre’s action was not, on its face, totally surprising. Dr. Dre opposed the Dr. Drai applications on three grounds: confusion, dilution, and false suggestion of a connection to him as an individual, but the dilution claim was affirmatively waived prior to final hearing. The Board ultimately ruled against Dr. Dre on both the confusion and false connection claims. Likelihood of Confusion Analysis What’s striking about the TTAB’s analysis of the confusion claim is that only one of the 13 du Pont factors of likely confusion favored Dr. Drai. In contrast, Dr. Dre prevailed on six factors, with five found neutral and one ignored by the Board. Indeed, the decision is filled with findings favorable to Dr. Dre: (a) Dr. Drai’s marks look and sound like Dr. Dre’s marks; (b) Dr. Dre’s mark is inherently distinctive; (c) Dr. Dre’s mark has “achieved a degree of renown” and “is strong”; (d) the parties’ trade channels “generally overlap”; (e) some of Dr. Dre’s and Dr. Drai’s less sophisticated consumers may exercise “less care” in their purchases, making “confusion more likely”; and (f) Dr. Dre’s mark is used in connection with “collateral or promotional items,” making it more likely that relevant consumers will be confused. Nonetheless, the TTAB declined to find a likelihood of confusion because the factors favoring Dr. Dre were outweighed by the differences in their respective goods and services. More specifically, the Board found that although both Dr. Dre’s and Dr. Drai’s services fall under the general category of “entertainment services,” Dr. Dre failed to submit evidence showing that Dr. Drai’s “motivational and educational” speaker services were sufficiently similar to Dr. Dre’s “musical composition and production” services. Evidentiary issues played a significant role in Dr. Dre’s lack of success on the confusion claim. The TTAB found that “many of the facts asserted by [Dr. Dre] in his brief have no evidentiary support.” Notably, Dr. Dre provided no evidence of the volume of his sales or advertising expenditures in connection with musical sound recordings or production services. Moreover, the TTAB refused to give weight to much of the evidence submitted by Dr. Dre, finding that it failed to satisfy any exception to the rule against hearsay. Hearsay exceptions can be quite arcane in application, so it might surprise a lay reader to learn that the TTAB can treat “newspaper story submissions dated 1997 or earlier” as admissible, while refusing to admit more recent—and relevant—stories from popular websites such as grammy.com (Dr. Dre awards list), billboard.com (Dr. Dre chart history) and staticbrain.com (Dr. Dre album sales statistics), Genius (genius.com), IMDB (IMDB.com), Biography (biography.com), and All Music (allmusic.com). As a result, Dr. Dre was unable to establish facts relevant to his receipt of Grammy awards, record sales, and rank on the Billboard Hot 100. Under the circumstances, the TTAB concluded that the evidence of record did not support a finding that the mark DR. DRE had achieved a degree of fame such that it fell on the “very strong” end of the spectrum of commercial strength. False Connection Analysis The analysis of the ground of opposition under Section 2(a) of the Lanham Act for false suggestion of a connection also seemed to go well for Dr. Dre, at least initially. The TTAB found that the first three factors in the four factor test favored Dr. Dre: (1) the DR. DRAI marks were found to be a close approximation of Dr. Dre’s name or identity; (2) the evidence showed that Dr. Dre has come to be associated with the name DR. DRE and that name uniquely and unmistakably refers to him; and (3) it is undisputed that Dr. Dre has no connection with the goods and services that Dr. Drai intends to offer under the applied-for marks. Dr. Dre’s Section 2(a) claim foundered, however, on the fourth factor: whether the fame or reputation of Dr. Dre is such that a connection with Dr. Dre would be presumed when the DR. DRAI marks are used in connection with the goods and services covered by the opposed applications. According to the TTAB, the key inquiry for this factor is whether there is something about the motivational and educational speaking services on the topics of obstetrics, gynecology and health, as identified in the opposed applications, that would cause the DR. DRAI marks to be associated with Dr. Dre. In undertaking this analysis, it was not necessary for Dr. Dre to prove that his name was famous in the health or medical field or that he offer goods or services in these areas. But it was not enough to argue that Dr. Dre’s reputation as a musician and producer is of such a nature that consumers would make that association just because celebrities in general license their name for a wide array of merchandise and services. As the TTAB commented, “Here, there is no evidence that it is commonplace for celebrities to sell or license the sale of goods or services of the type provided by [Dr. Drai].” In contrast, other cases where registration was barred under Section 2(a) included an application to register WESTPOINT for shotguns and rifles, which were goods of a type that customers would associate with a military post and an application to register TWIGGY for clothing, which would be associated with the well-known fashion model. Further, although intent to trade on the goodwill generated by a famous person’s name is not a required element of a Section 2(a) claim, such evidence can be considered as relevant. But here, Dr. Drai testified that he is a “gay gynecologist” with “a lot of transgender … [and] lesbian” patients. He further characterized Dr. Dre as being “known for his misogyny and homophobi[a],” adding that “being an OB-GYN, I cannot be associated with anyone that has any kind of misogynistic speech because it’s a bad reflection one me as a doctor.” The TTAB appears to have credited this testimony, finding that Dr. Drai had no intent to trade on Dr. Dre’s name. It is unknown why Dr. Dre decided not to pursue a dilution claim, which might have been more successful. Dr. Dre definitely is a famous name among wide swaths of the general public and there would have been no need to show likelihood of confusion or that the goods and services of the parties were related. However, it might have been difficult to establish, through survey evidence or otherwise, that consumers were likely to associate the DR. DRAI marks and services with Dr. Dre in a manner that would impair the distinctiveness of the DR. DRE mark. Takeaways from the Case The fame and renown of a celebrity name may only go so far in a trademark dispute if the goods and services are widely disparate It is not always true that a less famous trademark user will want to benefit from the particular reputation of the celebrity Being famous and proving that your mark is famous are not always the same things — evidentiary challenges abound

May 7 was no day at the beach for Multi-Media Tech. Ventures, Ltd., whose registrations for the mark GIDGET were cancelled in a precedential opinion by the Trademark Trial and Appeal Board. Yazhong Investing, Ltd. v. Multi-Media Tech. Ventures, Ltd. It is unclear whether there is any connection between registrant Multi-Media and the 1959 movie starring Sandra Dee or the follow-on 1960s era TV series made famous by Sally Field, but the specimens of use submitted in connection with one of the registrations at issue in the proceeding showed that Multi-Media was promoting a GIDGET “lifestyle brand” for surfing and other products and activities for girls and young women associated with the 1959 movie. The challenges in establishing such a commercial enterprise are reflected in the difficulties the registrant encountered in proving actual commercial use of its marks for the goods and services registered, particularly because the registrations at issue covered dozens of different goods and services. We think a few takeaways are almost as interesting as the true origins of the word “Cowabunga.” Petitioner, Yazhong sought cancellation of four of Multi-Media’s GIDGET registrations on the grounds of abandonment and fraud after the USPTO refused intent to use applications filed by Yazhong based on a likelihood of confusion with Multi-Media’s marks. The registrations at issue  a broad variety of goods and services including apparel, cosmetics, bicycles, stationery, books, home goods, and entertainment in the nature of theater and musical productions. While the TTAB’s decision does not break new ground on the legal standard for proving abandonment, it articulates the types of evidence that can cause or avoid a wipe out. Yazhong succeeded in satisfying the well-established standard for abandonment, a showing of nonuse for at least three consecutive years, from 2008 to 2012, which shifted the burden to Multi-Media to rebut the presumption of abandonment. Yazhong’s evidence consisted mostly of discovery responses as well as testimony and declarations from officers of a predecessor in interest to Multi-Media. This evidence showed an absence of sales figures; product samples but no commercially manufactured or marketed products during the time period under review; efforts to seek licensing partners; an advance against future revenues and a mistaken understanding about what was legally necessary to file a statement of use in connection with intent to use applications covering multiple products and services. Multi-Media also submitted a declaration by a board member stating that Multi-Media never intended to abandon the mark, but in line with prior precedent, the TTAB rejected this argument, focusing on the need to establish actual use of a mark or an intent to resume use in the reasonably foreseeable future, rather than a lack of intent to abandon. Its decision states: “the owner must do more than simply assert a vague, unsubstantiated intent to make use of the mark at some unspecified time in the future.” While “reasonably foreseeable future” might mean years down the road for some products, like movies, the TTAB felt that production of consumer goods covered by the registrations “may be effected much more easily.” Multi-Media’s lack of evidence regarding annual sales of units bearing the GIDGET mark had a particularly negative effect on its case. The TTAB expected to see such information as operating budgets and licenses demonstrating a “specific and consistent plan” to resume use of the mark, assuming the mark had ever been used commercially at all. The TTAB was unmoved by Multi-Media’s evidence that the mark had been used in connection with marketing activities, including advertising, participation at trade shows, and seeking licensing partners: “Simply put, there is no credible evidence that Respondent or its predecessors made any use of the GIDGET mark apart from a few sporadic promotions of surfing events in the subject registrations….” Having found that Multi-Media failed to overcome the presumption of abandonment, the Board held that it did not need to reach the additional ground of cancellation based on allegations of fraud.

If you were a devoted listener of season one of Serial, you probably already know that last month the Maryland Court of Special Appeals decided that Adnan Syed deserves a new trial. What you may not know is that three days before, the Trademark Trial and Appeal Board quietly issued a precedential opinion holding that Sarah Koenig, Dana Chivvis, Ira Glass and team at Serial Podcast, LLC have no trademark rights in the term “serial” because it is a generic term free for all to use for ongoing audio programs. According to TTAB precedent, generic terms are common descriptive names of a class of goods or services and are not registrable because they are incapable of indicating source. In other words, generic terms are the “antithesis of trademarks, and can never attain trademark status.” So how does the Trademark Office determine that a term is generic? They ask if members of the relevant public, the general public in this case, understand the term to refer to the genus of goods or services in question, ongoing audio programs in this case rather than a particular, single source of the goods or services. If the evidence shows the former, the term is generic.  On the other hand, if everyone in your office thinks Serial is Serial the podcast and not a “serial,” the term might not be generic, depending on whether this understanding truly reflects single source significance, not just the popularity of one particular program. But the evidentiary record in this case didn’t include any consumer survey or even an unscientific office poll for that matter. The Examining Attorney, who had already found the term generic prior to the ex parte appeal, relied on current dictionary definitions and a long list of online articles using the term “serial” as both a noun and an adjective to generically denote episodic broadcasts or podcasts.  It should be noted that a number of the articles were references to older radio program dating as far back at the 1930s.  On the other hand, the podcast team relied on over 12,000 recent media stories referring to its podcast as Serial; a daily download audience as high as 1.4 million in the first season and 1.7 million in the second; and high profile parodies on Saturday Night Live and Sesame Street. In their defense, the podcasters also attacked the Examining Attorney’s evidence as “antiquated” and “archaic,” which should not be relied upon to determine the public’s current understanding of a term. From the title of this post, you should already know that the TTAB sided with the Examining Attorney.  The Board found that because current dictionaries contain a definition for “serial,” the understanding of the term is not confined to a bygone era.  Moreover, it found that the podcast’s evidence only amounted to de facto secondary meaning of a generic term, which essentially means nothing more than that the public recognizes Serial as the most well-known ongoing series currently being offered.  In leveling a last blow to the podcast team, the TTAB referenced a Federal Circuit opinion from 2006: While it is always distressing to contemplate a situation in which money has been invested in a promotion in the mistaken belief that trademark rights of value are being created, merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use. Even though they succeed in the creation of de facto secondary meaning, due to lack of competition or other  happenstance, the law respecting registration will not give it any effect. So what do you think? Does the term “serial” belong to the public or the public radio team of This American Life at WBEZ in Chicago? If the podcasters had submitted a consumer survey, would the case have turned out differently?  Maybe this Serial will follow in the footsteps of Adnan and go up on appeal once more.

In January 2015, Pitney Bowes filed an intent-to-use trademark application for the logo shown here for use with mailing services, including postal delivery, parcel delivery, and delivery of mail to post offices for posting (Serial No. 86502157). Pitney Bowes later filed its specimen of use, consisting of a printout from its website with a photograph of its postal kiosk and information regarding the self-service access available at its kiosks.  The Examining Attorney refused the specimen of use because “the specimen is a webpage describing a self-service kiosk that consumers use to mail and ship items, but not that applicant itself provides these services.” Pitney Bowes responded to the Office Action, advising that “[t]hese kiosks are furnished by Applicant and are placed in different locations for use by consumers.  Consumers use the kiosk to place postage on a letter or package, and then place that [letter or package] in the receptacle that is part of the kiosk system for Applicant to pick up the letter or package and place it in the mail stream for delivery.” (emphasis added). We might expect that Pitney Bowes’ explanation would alleviate any concerns raised by the Examining Attorney as to whether the specimen of use properly constituted a use of the mark in association with the services described in the application. The explanation provided seems to establish a direct association and clear description of how the specimen submitted shows use of the mark for the applied-for services.  Alas, the Examining Attorney issued a final refusal in the application, leading Pitney Bowes to file an ex parte appeal to the Trademark Trial and Appeal Board. In its decision reversing the refusal to accept the specimen of use submitted, the TTAB held that both precedent and examination guidance “make clear that in assessing the specimens, consideration must be given not only to the information provided by the specimen itself, but also to any explanations offered by Applicant clarifying the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.”  And the Trademark Manual of Examining Procedure § 1301.04 provides “[A] specimen description submitted by the applicant typically helps clarify the manner in which the mark is used in commerce, and the more explanation the application provides initially, the more helpful it is to the examining attorney’s analysis.  Thus, applicants are encouraged to provide a specimen description and explain how the applicant renders or provides the services….” So how might this have been approached differently and more efficiently? Pitney Bowes indicated in briefing its belief that the Examining Attorney did not understand the services being offered under the mark.  Two practice tips come to mind from this decision: Pick up the phone. Engage in conversation with the Examining Attorney to ensure that any aspect of the specimen of use or the services are clear so the Examining Attorney can ask questions or seek further specific explanations. Provide a detailed description of the specimen of use to clarify for the Examining Attorney precisely how the specimen is directly associated with the offered services. If the end result is that understanding is achieved through an Examining Attorney’s careful consideration of a detailed submission and/or information provided in telephone conversations, an unnecessarily prolonged registration process or a costly and time-consuming appeal before the TTAB can be avoided.

The Vegas Golden Knights, an expansion team based in Las Vegas that joined the National Hockey League (NHL) earlier this year, have had a surprisingly successful “rookie year,” both on the ice and at the box office.  This month, however, the Golden Knights encountered opposition to their efforts to register the mark “Las Vegas Golden Knights” from an unusual source – the U.S. Army.  On January 10, 2018, the Army fired its opening (slap) shot – a Notice of Opposition to the Golden Knights’ trademark application based upon likelihood of confusion with the U.S. Army Parachute Team Golden Knights’ common law mark.  The key issue for the U.S. Patent and Trademark Office to consider (and one our readers may wish to ponder themselves) is whether anyone is likely to confuse an Army parachute team and a professional hockey team. The U.S. Army’s Golden Knights’ Mark According to its Notice of Opposition, the U.S. Army has been using its Golden Knights’ mark in connection with its U.S. Army Parachute Team (nicknamed the Golden Knights) since 1969.  The U.S. Army claims that it owns common law rights in both the Golden Knights’ mark and in the black+gold/yellow+white color trade dress, which is used by the Army’s West Point Military Academy hockey team (you are likely not alone if you were unaware that West Point had a hockey team).  In support of its Notice of Opposition, the Army contends that the Las Vegas hockey team’s registration of the Golden Knights’ mark would likely cause consumer confusion and suggests a connection between the Army and the Vegas Golden Knights. The Vegas Golden Knights’ Trademark Application In June of 2016, the NHL awarded an expansion franchise for Las Vegas to a consortium led by Bill Foley, with the team due to hit the ice for the first time in the fall of 2017.  In an interesting twist to this story, Foley is a West Point graduate who has been public about his great admiration for the U.S. Army.  Indeed, the U.S. Army’s Notice of Opposition notes that: The Vegas Golden Knights’ General Manager commented on that team’s use of the Army’s colors, stating “Bill Foley is a West Point guy, sort of using those colors. You know his history at West Point.  You know about the classmates he had that he lost serving this country.  So, those colors mean a lot to us. . .” Foley was aware of the U.S. Army parachute team and even tried to get them to appear at a Vegas Golden Knights team event (the attempt was unsuccessful); Foley originally wanted to name his hockey team the “Black Knights” but dropped that idea due in part to opposition from the Army (the fact that Chicago’s NHL team is named the Blackhawks may have also been a concern); and The Vegas GM admitted: “We were going to be the Black Knights, but we already had the Blackhawks in the league, so the league, so the league was trying to get us to come up with another name, so another name used at West Point is the Golden Knights for the parachute team.” Despite (or, it appears, because of) the similarity to the Army’s parachute team nickname, Foley ultimately settled on the name “Golden Knights” for his team.  On August 23, 2017, Foley’s ownership group, Black Knight Sports and Entertainment, LLC (Foley seems to have really wanted to call something “Black Knight”) filed an application to register the mark Las Vegas Golden Knights, in standard characters, for “Entertainment services, namely, professional ice hockey exhibitions.”  Vegas did not claim any colors for use with the mark and disclaimed the words “Las Vegas” in the applied for mark. The Golden Knights’ Defenses Given the admissions of its owner and General Manager, one would think that the Vegas Golden Knights’ trademark application is on thin ice.  However, the fact that its name was admittedly modeled after the U.S. Army’s parachute team’s nickname does not necessarily spell defeat for Vegas.  Indeed, the Golden Knights offered a preview of some of their main arguments in a witty but strongly-worded public relations statement issued in response to the Notice of Opposition, stating: We strongly dispute the Army’s allegations that confusion is likely between the Army Golden Knights parachute team and the Vegas Golden Knights major-league hockey team.  Indeed, the two entities have been co-existing without any issues for over a year (along with several other Golden Knights trademark owners) and we are not aware of a single complaint from anyone attending our games that they were expecting to see a parachute team and not a professional hockey team.  (italics added) In other words, no one is likely to confuse the Vegas Golden Knights with the Army’s parachute team and, in fact, there has been no actual evidence of any such confusion to date (because no one goes to a hockey game to see parachuters).  Vegas’ point about other “Golden Knights trademark owners” is also an interesting one.  A search of the USPTO website reveals multiple registrations for that mark, including one by the College of Saint Rose in Albany, New York, whose athletic teams are called the “Golden Knights.”  Another New York state university, Clarkson University, also uses the name “Golden Knights” for its sports teams.  One wonders why the Army apparently is fine with those universities using the mark but not the Vegas hockey team – is the prospect of achieving an advantageous settlement with the Vegas Golden Knights part of the Army’s strategy?    Settlement in the Offing? Indeed, settlement does seem like a distinct possibility.  On January 25, 2018, Black Knight Sports and Entertainment LLC filed a consent motion for suspension of the Opposition proceeding, stating that the “parties are actively engaged in negotiations for the settlement of this matter.” Such a conclusion makes sense and would likely benefit both parties.  To succeed on its Opposition, the Army faces the difficult challenge of showing a likelihood of confusion.  Even apart from the legal issues, however, it’s not at all clear what the Army hopes to gain from fighting this to the bitter end.  The Vegas Golden Knights have been a great success so far and the Army can surely benefit from the tribute paid to it by the hockey team.  The U.S. military has built successful marketing relationships with numerous sports leagues – why not capitalize on the Vegas Golden Knights’ success and partner with the team?  Perhaps that was the intention all along – and the Notice of Opposition was just a tactic for negotiating a better deal.

The Trademark Trial and Appeal Board recently affirmed a refusal to register the mark 8-Bit Aleworks for beer based on two prior registrations for the mark 8 bit Brewing Company for beer and other alcoholic malt beverages, notwithstanding a consent agreement entered into between the applicant and the prior registrant. The result in In re 8-Brewing LLC, (TTAB Oct. 30, 2017) (non-precedential) is consistent with the Board’s precedential decision last year in In re Bay State Brewing Co. – coincidentally, another case involving beer – in which a consent agreement between the applicant and prior registrant was likewise held to be insufficient to overcome a likelihood of confusion refusal. The Board held as a threshold matter that the marks 8-Bit Aleworks and 8 bit Brewing Company were confusingly similar in light of the “identical commercial impression created by the marks” and the identity of the goods. The word ALEWORKS in the applicant’s mark and BREWING COMPANY in the registrant’s marks were disclaimed, and thus these highly descriptive terms did “little, if anything, to distinguish the marks.” Turning to the consent agreement, the Board acknowledged the “seminal” precedent of the Court of Customs and Patent Appeals in In re E. I. du Pont de Nemours & Co., holding that while a “naked consent” may carry little weight, “substantial weight should be conferred to more detailed agreements.” Detailed or not, however, the Board cautioned that “there is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion.” Why did the consent agreement come up short in this case? First, the applicant sought to register 8-bit Aleworks in standard characters, but an exhibit to the consent agreement and related provisions only referred to the design logo form of applicant’s mark. Further, the two registrations at issue included a standard character word mark and a composite mark with an accompanying design component, but the consent agreement exhibit showed only the composite mark registration with the design. According to the Board, it remained “unclear if Registrant is consenting only to the coexistence of the marks depicted in Exhibit A or if it is actually consenting to use and registration of applicant’s standard character mark, with or without the design element.” Second, while the parties acknowledged the absence of actual confusion during the time in which their respective marks had been used,  the period of coexistence was quite brief – “a mere five months” at the time the consent agreement was signed. Third, the agreement “fails to illustrate how Applicant’s and Registrant’s trade channels are different from one another.” Aside from stating that the parties will be using their marks in Arizona and California respectively, “the parties do not indicate how they will restrict their fields of use” and both will be “presumably be selling to the same types of individuals, restaurants or retailers and distributors.” Moreover, the Board noted that Arizona and California share a border (presumably leading to concern as to whether the two geographic markets could realistically be separated), and the agreement was silent as to other states in which the products might be sold. Finally, while applicant and registrant agreed to use their marks “in conjunction with commercially distinct product packaging,” including dissimilar color schemes, no examples were shown as to what this distinct product packaging would look like or what distinctive color schemes would be used. As a result, the undertaking about using different product packaging was found to be deficiently “vague”. As the Board observed, “given the similarity in the marks, both being used on beer, it would have behooved Applicant and Registrant to have identified the specific distinctive trade dress each would be employing to distinguish the sources of the beer.” In sum, while acknowledging that “consent agreements are frequently entitled to great weight”, the Board concluded that in view of the identity of the goods at issue and their trade channels and the strong similarity of the marks, the likelihood of confusion  was not sufficiently ameliorated by the terms of the consent agreement. The takeaway from the 8-Brewing case and the prior decision in Bay State is that when the marks are very similar, the goods involved are identical and the parties are unable to establish a long track record without actual confusion, a consent agreement will need to meet a high bar to convince the Board that confusion is unlikely to occur. To pass muster, the agreement will need to refer to all forms of the marks at issue (and even better if the refused application at issue is a composite mark with a design element), depict examples of packaging deemed to be distinctively different, and explain in detail how channels of trade and/or geographic markets will be separately allocated.

When two boxing companies sparred before the TTAB, the gloves came off—and that wasn’t only because the dispute concerned a trademark registration for boxing gloves.  In Moreno v. Pro Boxing Supplies, Inc., the petitioner, Julie Moreno, sought to cancel Pro Boxing Supplies’ existing trademark registration for Casanova and oppose the registration of two additional CASANOVA composite marks.  At the time the proceeding was initiated, Moreno was the exclusive U.S. licensee of the CASANOVA boxing brand. As the exclusive licensee, Moreno claimed that she had prior rights in  the CASANOVA mark in the U.S., because her licensor, a Mexican boxing equipment company named Deportes Casanova, had been using the mark in the United States for many years. The TTAB rejected Moreno’s petition and dismissed her opposition, finding that Pro Boxing was the prior U.S. user of the mark.  In a case of first impression, the TTAB refused to allow Moreno to benefit from the licensor’s prior use in the U.S. The facts showed that in 1987, Pro Boxing, a California-based boxing equipment company, began selling CASANOVA-branded boxing gloves.  The gloves were made in Mexico by Deportes, a Mexican boxing equipment company, that owned the CASANOVA mark in Mexico.  In addition, Deportes had sold its boxing equipment in the U.S. since at least 1972. In the early 1990s, Pro Boxing’s supply of CASANOVA boxing gloves dried up.  As a result, Pro Boxing began manufacturing its own CASANOVA-branded boxing gloves and selling them in the United States.  Several years later, in 2013, Pro Boxing successfully registered the CASANOVA mark in connection with boxing supplies.  That same year, Deportes entered into an exclusive license agreement with Moreno, granting her the exclusive right to sell CASANOVA-branded boxing equipment in the United States. After becoming aware of Pro Boxing’s use of the CASANOVA mark, and its efforts to register two new CASANOVA marks, Moreno filed a petition to cancel Pro Boxing’s existing registration and also filed an opposition to Pro Boxing’s pending applications, claiming that Pro Boxing’s use of the CASANOVA mark created a likelihood of confusion under Section 2(d) of the Lanham Act.  Moreno claimed common law priority as the exclusive licensee of Deportes, which had been using the mark in the U.S. since the 1970s. Before reaching the merits of the dispute, the TTAB addressed Pro Boxing’s claim that Moreno lacked standing to bring these claims.  Pro Boxing claimed that Moreno lacked standing to bring her petition and oppositions because her license from Deportes was a naked license without any quality control provisions and lacked consideration. The TTAB quickly disposed of these arguments, holding that “the quality control and consideration aspects are inherent in this particular license agreement because Moreno is buying the licensed products from Deportes Casanova and simply re-selling them.” Turning to the merits, the TTAB first found that the parties’ conflicting use of the CASANOVA mark was likely to cause confusion.  As a result, the dispute became a priority contest.  The TTAB permitted Pro Boxing to rely on its 2012 application date as proof of constructive use of the mark.  Because Moreno did not have any registrations or applications for the CASANOVA mark, the TTAB required her to establish priority under common law, meaning that she had to demonstrate as a factual matter that her use of the mark pre-dated 2012.  Because Moreno had not personally used the CASANOVA mark prior to 2012, she attempted to rely on Deportes’—the licensor’s—use in the United States.  The TTAB therefore had to address an issue of first impression: whether a licensee “can claim priority based on the purported common law trademark rights” of the licensor.  In a gut punch to licensee rights, the TTAB said no. While the TTAB acknowledged that it is “well-settled that use of a mark by a licensee inures to the benefit of the trademark owner,” there was no authority for the “converse principle” that the use of the mark by the licensor inures to the benefit of the licensee.  This is because allowing a licensee to claim priority based on the licensor’s use of the mark could result in a licensee claiming de facto ownership of the mark. The TTAB also focused on the language of the license from Deportes to Moreno, which stated that Moreno was given “no ownership rights in the Intellectual Property.”  To find for Moreno, the TTAB reasoned, would treat the license as an assignment, which it clearly was not. This case is important for several reasons.  First, it distinguishes between a licensee’s standing in TTAB proceedings and the substantive rights on which it can rely. Second, it establishes that a licensee—even an exclusive licensee—cannot rely on a licensor’s use when trying to establish priority of use.  Third, it is worth noting that the licensor should still be able to successfully petition to cancel Pro Boxing’s existing registration and the two registrations that will issue after the dismissal of the oppositions.  Finally, if it is so inclined, the licensor may also be able to bring a successful action for trademark infringement in the United States based on its common law priority and likelihood of confusion between the parties’ marks.

On July 27, 2017, the Federal Circuit decided Earnhardt v. Earnhardt, a trademark collision between two relatives of the famous race car driver, Dale Earnhardt.  The case involved an appeal from a TTAB decision between Teresa Earnhardt, widow of Dale Earnhardt, who holds a portfolio of “Dale Earnhardt” and “Earnhardt” marks, and her stepson Kerry Earnhardt, a race car driver who sought to register “Earnhardt Collection” for furniture in Class 20 and “custom construction of homes” in Class 37.  The TTAB dismissed Teresa’s opposition to the “Earnhardt Collection” application, but the Federal Circuit waved a “yellow flag” and vacated and remanded the decision. The Federal Circuit’s opinion states that while “Earnhardt” is a surname that is typically not registrable, the addition of the term “Collection” makes it registrable if the combination of the two terms considered as a whole makes the surname not the “primary significance” of the mark.  A key element in such a determination is whether the non-surname term, Collection, is “merely descriptive” of the applicant’s goods and services.  If the term "Collection" was merely descriptive, then Kerry’s application would fail.  On the other hand, if "Collection" altered the primary significance of the mark such that consumers would not view it as primarily a surname, then the mark would be registerable.  The Federal Circuit found that the TTAB’s decision lacked clarity as to what exactly was decided: [I]t is unclear whether the Board engaged in a merely descriptive inquiry for the term “collection” or if the Board improperly constricted its analysis to only a genericness inquiry. On one hand, the Board’s decision could be understood as finding that “collection” is neither generic nor merely descriptive of [Kerry’s] goods and services, and adding “collection” to “Earnhardt” alters the surname significance of Earnhardt in the mark as a whole, such that the purchasing public would not consider the mark as a whole to be primarily a merely surname. On remand, the TTAB  must consider (1) whether the term “Collection” is merely descriptive of Kerry Earnhardt's furniture and custom home construction services, and (2) the primary significance of the mark as a whole to the purchasing public.  The Federal Circuit was particularly concerned that the TTAB had not made an affirmative finding so that the Court could make an evaluation of the distinctiveness of the disputed mark as a whole. Of particular interest here is that the Federal Circuit held that the TTAB stated that the mark was neither generic nor merely descriptive, but did not make the affirmative finding of genericness or descriptiveness that the Federal Circuit has deemed important.  The Court distinguished from its holding in In re Hutchinson Technology Inc., 852 F.2d 552, 554 (Fed. Cir. 1988), where the Court held that the TTAB’s finding that “technology” was merely descriptive was incorrect and reversed.  In the instant matter, the Federal Circuit remanded so that the TTAB could explain itself as to whether it had made a finding on the distinctiveness scale. The Federal Circuit also emphasized that it is important to evaluate the mark as a whole by considering whether the term “Collection” is generic or descriptive when considered as part of the “Earnhardt Collection” mark.  The Court included the example of the mark “Sugar & Spice” for bakery products where each word itself was descriptive, but in combination they were suggestive.  On remand, the Court required the Board to determine the primary significance of both “Earnhardt” and “Collection” together in its determination. We will keep you posted on which Earnhardt ultimately hits the “checkered flag.”

The NCAA has a well-deserved reputation for being quite zealous when it comes to protecting its registered trademark “March Madness.”  We previously blogged about this here at TheTMCA.com.  But a recent opposition filed by the NCAA at the TTAB takes “zealous advocacy” to new heights. About a year ago, the Big Ten Conference filed an intent-to-use application for “MARCH IS ON!” for a variety of television transmission and entertainment services related to athletic events and contests.  The examiner found “no conflicting marks that would bar registration” under the Lanham Act and MARCH IS ON! was published for opposition.  The NCAA received extensions of time to oppose the application, presumably for the purpose of exploring a possible resolution with the Big Ten or at least finding out more about how the Big Ten intends to use the MARCH IS ON! mark.  On February 13, the clock ran out on any further extensions of time, so the NCAA decided it was “game on” and filed an opposition to MARCH IS ON! The NCAA cites three registrations for “March Madness” as the basis for the opposition and concludes as follows: Use by Applicant of MARCH IS ON! for the services set forth in the Application is likely to result in confusion, mistake, or deception with Opposer, or the goods and services marketed in connection with Opposer’s MARCH MADNESS Mark, or in the belief that Applicant or its MARCH IS ON! Services are in some way legitimately connected with, or licensed or approved by, Opposer. The only basis for this alleged "confusion" between the two marks would be that they both contain the word “March,” which is, of course, the month when college basketball hits its zenith. So, what are we to conclude from the NCAA’s opposition? A reasonable take-away is that the NCAA believes it can exclude others from using the word “March” in conjunction with any sort of sports-related entertainment services. That may be a stretch. Unless the case settles, the TTAB will get to decide whether the NCAA can claim such expansive rights to the name of a month of the year. But the TTAB officials may conclude that this latest filing at the USPTO can be summed up in one word: Madness.