DuetsBlog

Collaborations in Creativity & the Law

Joint IP Ownership Rights

Posted in Agreements, Almost Advice, Contracts, Copyrights, Genericide, Idea Protection, Infringement, Law Suits, Mixed Bag of Nuts, Patents, Trademarks

New ideas, creations, and business ventures are often the product of collaboration.  If lawyers had their way, a written agreement would precede every creative collaboration.  Of course, this is not the case.  Collaborators often do not seek advice of counsel, or see the need for an agreement, until after the new idea, creation, or venture is well underway.  As a result, statutes and case law operate to define the joint ownership rights.  Each type of IP affords slightly different rights to joint owners.

Patent

A patent, whether design or utility, provides the patent holder with the right to make, use, sell, offer to sell, and import the patented invention.  Where a patent is owned by multiple entities, each joint owner has the right to individually make, use, sell, offer to sell, and import the invention without the consent of other joint owners.  Each owner thus additionally has the right to independently license any of these rights.  Moreover, patent joint owners do not have a duty to account to one another.  This means that joint owners do not have to share profits with one another.  However, the consent of all owners is generally needed to sue to enforce the patent.  In practice, this means that one joint owner can block others from suing.  Consent of all owners is also needed to exclusively license the patent.

Copyright

A copyright holder has a set of rights, including the rights to reproduce, distribute, make derivative works of, perform, and display, the copyrighted material.  Similar to patents, each joint owner of a copyright may individually exercise these rights without consent of other joint owners.  Each joint owner may additionally license these rights.  However, there is one notable difference from patent law: the duty to account.  Each joint copyright owner has a duty to share profits obtained from the copyright with all joint owner.  Another distinction from patent law is that joint copyright owners may each sue to enforce the copyright without consent of other owners.  However, consent of all owners is also needed to exclusively license the copyright.

Trade Secret

Due to the nature of trade secrecy, the law of joint ownership of trade secrets is not as well defined as with patents and copyrights.  In general, case law suggests that joint owners of a trade secret may each use the trade secret for their individual business purposes.  However, it is unclear whether joint owners have a duty to account.  While consent of all joint owners is likely not needed to sue for misappropriation of the trade secret, the owners must consent to exclusively license the trade secret.

Trademark

The prospect of a jointly owned trademark is something of a different nature.  By definition, a trademark is an identifier of a single source.  While multiple parties can own a trademark, if each party is permitted to use the mark independently in the marketplace, by definition, the mark is no longer designating a single source.  Additionally, the law is unclear on whether joint trademark owners have a duty to account, or whether they must consent for an infringement suit.  In many cases, a co-branding agreement may be a good alternative to a jointly owned trademark registration.  Alternatively, multiple parties may want to jointly own a single entity, which in turn owns the mark.

Consider that SUPER HEROES is often used in conjunction with DC COMICS or MARVEL, which are source designators. What do you think? Are DC and Marvel asking for a genericness battle?

Jointly owned trademarks are rare, but not unheard of.  Arguably the most famous jointly owned trademark is owned and maintained by two competitors.  DC Comics and Marvel Comics have co-owned the mark SUPER HEROES for decades.  This seems a strange duo since the two companies are not only direct competitors, but also the only major players in the comic book realm.  Nonetheless, the two entities have jointly owned the mark since 1979, and are known for diligently enforcing itSome wonder if this is an example of trademark misuse, as SUPER HEROES does not designate a single source.  A consumer might identify a product with SUPER HEROES as being from either DC Comics or Marvel Comics.  The companies’ fierce enforcement efforts may be an attempt to head off an inevitable genericness fight.

My Namesake Triumphs: Tiffany & Co. awarded $19.35 million

Posted in Advertising, Branding, Famous Marks, Law Suits, Product Packaging, Trademarks

The four year saga ended (at least for now) with Tiffany & Co. being awarded for its vigorous fight to maintain its trademark and protect against genericide.  As previously reported, Tiffany & Co. filed suit against Costco Corporation (“Costco”) to protect its trademark with respect to engagement rings on Valentine’s Day in 2013.  (Read my post here.)   On August 14, 2017, the district court increased a jury award to Tiffany & Co. to $19.35 million.  Costco asserts it will appeal – so the saga is not over yet.

In defending against the lawsuit, Costco argued that the “Tiffany setting” encompassing the famous TIFFANY mark is merely a generic term for a type of engagement ring.    You may recall my post where I asked if you thought TIFFANY was generic? (Read it here.)  The district court answered my question in a ruling in 2015:  No, it is not generic.   In ruling on this motion, the judge ruled that Costco willfully infringed the TIFFANY trademark by using it on signage and it was a key part of Costco’s marketing strategy.  Among other things, she relied on a study in doing so.

Costco did not like the ruling and appealed asking the Second Circuit to take up an emergency appeal because of the “ongoing, irreparable harm to Costco’s business reputation which [Tiffany & Co. had] acted to amplify through statements to news media.”   Two months later, the Second Circuit denied this request.

In a ten day trial in September through October 2016, a jury awarded Tiffany & Co. damages in an amount of $5.5 million (adding to the lower profits Costco had actually obtained) and an additional $8.25 million in punitive damages for Costco’s bad behavior.  However, in an Opinion on August 14, the district court judge did not think this was enough.  She explained that the jury’s verdict was advisory only as to recovery of profits and trebled the profits increasing the award of damages to $11.1 million, plus interest, and added the award of $8.25 million in punitive damages.  Accordingly, Tiffany & Co. was awarded $19.35 million dollars from Costco.  In addition, Costco is permanently barred from selling anything that Tiffany did not make as “Tiffany” products, unless Costco uses a modifier such as the product has a “Tiffany style” or a  “Tiffany setting.”

We will have to wait and see if the Second Circuit agrees that TIFFANY is not generic and affirm the award of $19.35 million to Tiffany & Co.

Joust Do It? A New Form of Nike Battle Cry?

Posted in Advertising, Articles, Branding, Famous Marks, Marketing, Trademarks, TTAB, USPTO

By now, you’re familiar with my enjoyment in capturing and sharing new billboard signage that hits the streets of the Twin Cities. Question, what tagline might have inspired this one?

Was the Minnesota Renaissance Festival inspired by Nike’s famous “Just Do It” tagline?

Almost four years ago now, we noted — in this gem from the archives — the following about Nike’s famous “battle cry” tagline when we discussed “Just Ship It” reluctance with Seth:

“The irony in Nike’s ‘battle cry’ tagline is that its trademark enforcement program for the ‘Just Do It’ tagline and mark is not a model of clarity or simplicity, much less one easily understood by those paid to advise clients about the risks of potentially conflicting trademark rights.”

We further noted that Nike had only filed two oppositions with the TTAB enforcing its “Just Do It” tagline since Nike’s previous resounding TTAB win against Just Jesu It back in 2011.

Since that October 22, 2013 blog post gem, Nike appears to have stepped up enforcement activities at the TTAB, filing twenty “Just Do It” oppositions at the TTAB, with all concluded proceedings showing victory for Nike:

  1. Just Fake It for clothing;
  2. Just Mak’in It for clothing;
  3. Just Fix It for golf equipment;
  4. Just Chew It for chewing gum;
  5. Frac-N-Hose Just Frac It & Design for clothing;
  6. Life Just Live It for clothing (opposition withdrawn after “Just” removed from applied-for-mark);
  7. Just Did It for clothing (Board granted opposition, sustaining likelihood of confusion and dilution by blurring grounds);
  8. Just Choose It for clothing;
  9. Just Weld It! for clothing;
  10. Just Be It! for clothing;
  11. Just D!dIt & Design for online marketplace services;
  12. Just Taste It! for dietary supplements (still pending);
  13. Just Beer It! for clothing;
  14. Just Ripp It for clothing;
  15. Just Dough It for cookie dough;
  16. Just Girl It! for group coaching services;
  17. Just Bring It for clothing (WWE withdrew application with prejudice);
  18. Just Taste It for advertising services (still pending);
  19. JustSayIt for books and ebooks concerning positive oral communication (still pending); and
  20. JUSTKIT for clothing(still pending).

This recent timeline of oppositions seems to show more clearly that third party trademark applications employing the “Just __ It” format will draw attention/opposition from Nike.

Interestingly, since it doesn’t appear that the Minnesota Renaissance Festival is seeking federal registration, we might never know whether Nike objects to the use shown above.

Instead of tweaking the middle term of Nike’s tagline — “Do” — as all of the oppositions above show, the Renaissance Festival’s format plays on the leading word “Just,” substituting “Joust,” a term with special meaning in the context and theme of its festival.

Is this a material difference that justifies peaceful coexistence, or is it simply a new form of “battle cry” that similarly will be linked to Nike?

If you were advising Nike, would you recommend activating a trademark “battle cry” against use of “Joust Do It!” in the above billboard advertisement?

What if this tagline became an annual tradition for promoting the Renaissance Festival’s entertainment services?

What if a federal trademark or service mark application was filed?

Finally, what if the tagline was applied to clothing to promote the Renaissance Festival?

The Federal Circuit Building’s Circuitous History

Posted in Law Suits, Trademarks, TTAB, USPTO

I had the opportunity this week to attend an oral argument at the Court of Appeals for the Federal Circuit in Washington this week (#humblebrag). I quickly came to realize that, like so many things in trademark law, the Federal Circuit’s location has a convoluted history unto itself.

Nevermind that the Federal Circuit itself is only 35 years old – a conglomeration of the former Court of Customs and Patent Appeals and the Court of Claims. The Federal Circuit currently sits in the Howard T. Markey National Courts Building, just a stone’s throw away from the (apparently decrepit) White House. In the courtyard of the Markey Building, we quickly discovered some prominent evidence of the site’s illustrious history:

My colleague Tom Boyd is reading the information with great interest in the photo above. For those lacking preternatural vision, the first plaque reads in part as follows:

On this site Commodore John Rodgers built an elegant house in 1831. In it on April 14, 1865 an attempt was made to assassinate W.H. Seward, Secretary of State by one of the conspirators who murdered Abraham Lincoln the same night. The Hon. James G. Blaine afterward bought the house and died here. The Lafayette Square Opera House was erected of steel skeleton construction, stone, terra-cotta, magkite and brick by U.H. Painter, C.E. to prove that an opera house can be made safe at all times from fire and panic. It was six months in building and was opened for business on September 30, 1893. This tablet was placed here by the daughters of U.H. Painter, A.D. 1902.

(A savvy move by the Painter family to provide more valuable plaque space to the fire-proof opera house than, say, the Lincoln assassination.) The far more discreet plaque below notes various additional details, including that William Seward used the site to sign the treaty with Russia to purchase what became the State of Alaska (a/k/a Seward’s Folly), and the history of the building after its stint as an opera house, and before it was razed in 1964 to make way for the current structure.

So in sum, dissatisfied trademark applicants (or parties to a TTAB proceeding) may appeal their grievances to the site of a fire-proof opera house and an assassination attempt.

Registrations for Golden Knights Still Refused…Partially

Posted in Mixed Bag of Nuts, Trademarks, USPTO

Another update on my series of posts following the newest NHL expansion team, the Las Vegas Golden Knights, and the difficult time they’re having prosecuting their trademark applications. The applicant Black Knight Sports and Entertainment LLC (I’ll call applicant “the team”) applied to register LAS VEGAS GOLDEN KNIGHTS and VEGAS GOLDEN NIGHTS in connection with “entertainment services, namely, professional ice hockey exhibitions” and various clothing goods (Application Nos. 87147236, 8714723987147265, and 87147269).

As explained in my most recent post, the USPTO issued an initial refusal of registration for all four applications on several grounds, the most significant being a likelihood of confusion (Lanham Act Section 2(d)) with another registered mark GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE & Design, Reg. No. 3188463, which identifies in relevant part, “entertainment services in the form of intercollegiate sports exhibitions,” as well as clothing of various types.

In June, the team responded with some amazingly hefty arguments against refusal. For the clothing goods applications, the argument was 41 pages, plus over 1,300 pages of exhibits. For the clothing goods applications, the argument was 51 pages, plus over 1,600 pages of exhibits.

Last week, the team received both good news and bad news. The Examining Attorney withdrew the refusal for the applications identifying entertainment services–therefore, those marks are now approved for publication. However, the refusal was maintained and continued for the applications identifying clothing goods–those applications are now suspended, due to a prior-pending application for LAS VEGAS BLACK NIGHTS (Serial No. 86526792). Unless the team submits further arguments against suspension (I bet they do), it could be many months or years before the suspension is resolved, as the prior-pending application leads to a chain of four other suspended applications.

Based on the similarity of the arguments in each, it is interesting that the Examining Attorney both maintained its likelihood-of-confusion refusal citing GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE & Design, Reg. No. 3188463, for clothing goods, but at the same time, was persuaded to withdraw the refusal citing the same registered mark for entertainment services. Perhaps it boiled down to the limitation provided by the identification of entertainment services for each, one being for “professional ice hockey exhibitions,” whereas the other identified “intercollegiate sports exhibitions.” On the other hand, the clothing goods are not so limited.  The Examining Attorney highlighted this point in its suspension letter for the clothing-goods applications, stating that “there is no limitation in the application or registration limiting the [clothing goods] to those sold in connection or support of hockey and/or college sports.”

One silver (golden?) lining is that the team’s design-only logo depicting a knight’s helmet (Serial Nos. 87243288, 87243293) was recently allowed by the USPTO and has not been opposed, meaning it should soon progress to registration once a statement of use is processed.

Thus, the team’s helmet-bearing branded merchandise will have at least some protection by a trademark registration.

What do you think about the Examining Attorney’s decisions so far on these applications? Do you agree?

3:16 as a Trademark?

Posted in Articles, Branding, Fashion, First Amendment, Marketing, Mixed Bag of Nuts, Television, Trademarks, Truncation

Over the weekend, IPBiz reported that WWE (World Wrestling Entertainment) has filed an application to register 3:16 as a trademark for clothing items.

A Google search confirms that 3:16 has religious significance as it is a common truncation that signifies one of the most widely quoted verses from the Bible, namely, John 3:16.

Despite other confusing media reports that the WWE has “trademarked” 3:16, IPBiz is correct that an intent to use trademark application was filed by WWE at the end of July.

While I could hazard a guess, technically it is presently uncertain whether WWE intends a religious meaning, at least from the application file, as no specimen of use is of record yet.

Ironically, our firm’s firewall leaves me to hazard a guess on WWE’s intended meaning too.

Yes, our sturdy firewall has deemed anything appearing on the WWE website to be “unsafe or unsuitable” for access, so we may need the kind assistance of our dear readers to assist in our understanding of the meaning intended by the WWE for this claimed mark.

Either way, it will be interesting to follow the USPTO’s examination of this application, given the newly minted Examination Guide 2-17 on “Merely Informational Matter,” which directly targets religious matter, among other matter (citations omitted from below quote):

Some proposed marks comprise direct quotations, passages, or citations from religious texts (e.g., JOHN 3:16 and I AM THE WAY, AND THE TRUTH, AND THE LIFE. NO ONE COMES TO THE FATHER EXCEPT THROUGH ME).  Religious texts are holy books or scriptures, such as the Bible, Quran, Torah, and Diamond Sutra, which the different religions or spiritual movements consider sacred or essential to their religious traditions and beliefs. Such quotations, passages, or citations are often used by the providers of goods/services (and by consumers) as an expression of affiliation with, support for, or endorsement of the ideals or concepts found in the religious texts in which the quotation, passage, or citation originated. Because consumers are accustomed to seeing such wording used in this manner in the marketplace, consumers are unlikely to perceive it as indicating source and instead would perceive the wording as conveying a merely informational message of religious affiliation, endorsement, or support for the messages in the texts.

Where a quotation, passage, or citation from a religious text serves as an indicator of support or affiliation and not of source, such wording fails to function as a mark.  The refusal applies regardless of whether the identified goods/services themselves are religious in nature.  However, the inclusion of religious goods/services further supports this refusal.  The following examples illustrate this point:

  • Mark is comprised, in its entirety, of a direct quotation/passage and/or citation from a religious text (e.g., Allah is the Light of the heavens and the earth The Qur’an, Surah An-Nur 24:35; I AM THE WAY, AND THE TRUTH AND THE LIGHT.  NO ONE COMES TO THE FATHER EXCEPT THROUGH ME; or MATTHEW 19:26).  The entire mark must be refused registration because the matter fails to function as a mark.

  • Mark is comprised, in part, of a direct quotation/passage and/or citation from a religious text and registrable matter (e.g., Hear, O Israel: The Lord is our God; the Lord is one and the image of the Earth being held in a pair of hands; ROMANS 8:28 and an image of a teddy bear).  The direct quotation/passage and/or citation must be disclaimed because they fail to function as marks.

Do you think the WWE will be wrestling with USPTO over the meaning of 3:16 soon?

If so, how might the USPTO explain the issuance of these registrations: 3:16, Studio 3:16, and 3:16 Lure Co?

And, finally, might the newly minted examination guide conflict with the recent Supreme Court decision in Tam, holding that the USPTO’s refusal of federal trademark registration based on viewpoint violates Freedom of Speech?

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part I

Posted in Articles, Branding, First Amendment, Marketing, Trademarks, USPTO

Looking forward to sharing the podium with Joel MacMull of the Archer firm (counsel for Simon Tam, where our friend Ron Coleman is a partner) to discuss “Trademark Registration and the First Amendment,” on September 28th at the Midwest IP Institute in Minneapolis.

As a drum roll leading up to that discussion, and since there is so much to digest in the recent Supreme Court decision in Tam, I thought I’d do a series of posts on the decision and its implications, beyond what I’ve already written.

In this first installment, my focus will be on critiquing (as a trademark type) the opinion of the Court, that is, the portion of the decision written by Justice Alito, to which all seven of the other Justices agreed (the ninth, Justice Gorsuch, did not participate in the decision).

In a nutshell, my principal problem with the Court’s opinion is that all eight Justices have conflated the federal government’s issuance of a Certificate of Registration with the underlying applied-for trademark. The Court ignored that the meaning of each is distinct.

The meaning of the underlying trademark is one thing, determined by how the relevant public perceives and understands the applied-for mark. As an aside, the Court seemed more interested in Mr. Tam’s intentions in using an admitted racial slur as a trademark.

Yet, the meaning of the Certificate of Registration is quite different. It signifies that the federal government has approved the applied-for trademark for registration and issued a federal registration “in the name of the United States of America.

It would be easier to accept and respect the decision of the Court had it acknowledged and attempted to explain why Congress is powerless under the Commerce Clause to regulate what the USPTO may issue “in the name of the United States of America.”

Perhaps the Court’s conflation in Tam should be no surprise, as a few years ago, the unanimous Supreme Court in B&B Hardware, essentially conflated the right to register a trademark with the right to use the trademark.

Another concerning aspect of the Court’s opinion is how it seriously overstated what was at issue in Tam. It held that in denying federal registration to a mark consisting of a racial slur, the disparagement clause of Section 2(a) of the Lanham Act “violates the Free Speech Clause of the First Amendment” because it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

To be clear, the only speech even potentially banned under Section 2(a) of the Lanham Act relates to forbidding the use of the federal registration symbol — ® — next to the racial slur, because that symbol may not be used, unless a Certificate of Registration has been issued for the mark in question.

To the extent the ® symbol constitutes speech at all, the symbol ought to be considered government speech (which is outside First Amendment scrutiny), since federal governmental approval is required in order to use it in commerce.

The Court missed the point when it stated the obvious: “Trademarks are private, not government speech.” The better and more relevant question would have asked whether the ® symbol is purely private speech. Seems obvious to me it’s not.

While the underlying trademark has a certain meaning and constitutes private speech, the federal government’s issuance of a Certificate of Registration and allowing the use of the ® symbol to signify this fact, cannot fairly be considered private speech. Instead, by definition, it connotes governmental approval.

On this point, the Court was unconvincing when it cited a 55-year old concurring opinion from the late Federal Circuit Judge Giles Rich for the proposition “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.”

In that case, Judge Rich claimed, at least in 1962: “The purchasing public knows no more about trademark registration than a man walking down the street in a strange city knows about legal title to the land and buildings he passes.”

In my experience, all sorts of folks know that the ® symbol cannot be used without first obtaining approval from the federal government. Goodness, Forbes writes about it, National Law Journal, admitted non-lawyers, and a multitude of others do too, including us.

Friends, what do you think, do the folks understand and appreciate that the ® symbol is special and cannot be used without first obtaining approval from the federal government?

Did U2’s Bono And The Edge Copy Their Song The Fly From Another Artist?

Posted in Audio, Copyrights, Infringement, Law Suits

This is the question being presented in a lawsuit pending in the Southern District of New York against the iconic band U2 and a majority of its band mates.  Paul David Hewson (more well known as lead singer Bono), David Howell Evans (more well known as guitarist extraordinaire the Edge), drummer Laurence Joseph Mullen Jr., and bassist Adam Clayton were all named as defendants in the Amended Complaint filed by British recording artist Paul Rose (“Rose”) in June of this year.  He contends that U2’s The Fly from the 1991 Atchung Baby album ripped off his musical composition Nae Slappin.

Atchung Baby and Nae Slappin

Atchung Baby and Nae Slappin

Rose contends he dropped off a demo tape at Island Records.  U2 recorded at Island Records and allegedly listened to the demo tape.  Both Rose and U2 were often in the Island Records offices.   Rose claims that the renowned guitarist The Edge changed his approach to guitar playing after hearing Rose’s work.

Rose claims that the lyrics of The Fly concede that U2’s new musical sound and direction was not really new.  As the great Bono sings:  “Every artist is a cannibal, every poet is a thief.”  Rose contends that this rings true with U2.

In its recently filed motion to dismiss, the iconic band argues that Nae Slappin is a different animal than The Fly.   Rose’s “Nae Slappin is essentially an extended guitar solo consisting mostly of multiple guitar tracks, with percussion accompaniment.”  “There are no vocals, no lyrics, no subject, and no theme.”  It is experimental and acts as a vehicle for Mr. Rose to showcase his guitar skills.  In stark contrast, U2’s The Fly is a “‘song’ in the true sense of the word, with everything that comes with it:  vocals, lyrics, a subject and a theme.”  “‘The Fly’ is a direct reference to ‘The Metamorphosis’ by Frank Kafka, in which the protagonist changes overnight from a travelling salesman to a giant insect, or fly.”   I must admit I did not like the movie with Jeff Goldblum and Geena Davis that is based on Kafke’s novella.  However, it looks like I was in the minority as Rotten Tomatoes shows a 91% rating by critics and 83% rating by audiences.  I might have to re-watch the movie now that I am an adult.  But, I digress.

While writing this blog post, I watched an old YouTube video of U2’s song for the first time.  See below.

I liked the song (and the video).                

The standard for determining copyright infringement is whether the “total concept and overall feel” are the same.  U2 alleges that the two works: The Fly and Nae Slappin do not meet this standard.  The band accuses Rose of parsing the two works. For example, he points to a 7-second clip from Nae Slappin and a 12-second clip from the band’s The Fly.  Rose also asserts claims about the “percussion” or a “beat” that the band claims is inappropriate.   Relying on previous case law, U2 asserts that the beats alone “are too common of a musical technique to be protectable.”  Further, U2 complains that there cannot be protectable expression in a “chord change” from “E7 to A7.”        

U2 asserts that “musical ideas” are not protectable—only “artistic impressions.”  Accordingly, U2 contends that Rose’s Amended Complaint should be dismissed.

U2 also argues that Rose waited too long to bring this lawsuit.  He waited 25 years.  We will have to see how Rose counteracts this argument.  In his Amended Complaint, Rose asserts that he has a “witness who had provided the Rose demo tape to the Island Records executives,” who had only come forth recently because she was previously concerned about losing her job.  This may be a reason Rose will assert that he waited.

Rose asserts an equitable claim for right of attribution and writing credit for The Fly.  U2 contends that this claim is really a claim for ownership of the copyright which is barred by the three-year statute of limitations.  This is different than laches (you waited too long).  Rather, a statute of limitations cuts off your right to make a claim (except if there are tolling arguments, fraud or the like).

Will U2 prevail on its motion? Will U2 play The Fly when the iconic band comes to Minneapolis to play at the US Bank stadium in September?

“Not So Fast,” Mr. THRILLED Daniel Snyder

Posted in Mixed Bag of Nuts

Lee Corso (former coach and ESPN football analyst) frequently utters this famous sports media catchphrase on ESPN’s “College GameDay” program: “Not so fast, my friend!

The first three words of that phrase come to mind upon hearing that THRILLED Daniel Snyder (majority owner of the NFL football franchise nearest the Nation’s Capitol) is celebrating Simon Tam’s (and Tam’s talented lawyers’) recent victory at the Supreme Court.

Excluded are the last two words as inapplicable, as I’ve never met Mr. Snyder, so I can’t say he’s my friend, and if even a small fraction of what Rolling Stone says about him is true, friendship seems unlikely, unless of course, he engages the services of an expert to rebrand the franchise (without the racial slur), something I asked for eight years ago.

Yet, “not so fast,” as a week ago, the government filed a brief with the Court of Appeals for the Federal Circuit, asking the Federal Circuit to affirm the TTAB’s refusal to register FUCT based on the scandalous portion of Section 2(a) of the Lanham Act, despite Tam.

The Department of Justice further contends that the Supreme Court’s ruling in Tam does not implicate the First Amendment in terms of scandalous matter, because unlike the stricken disparagement portion of 2(a), the remaining scandalous portion is viewpoint neutral.

To the extent the Justice Department prevails and the current bar on registration of “scandalous” matter survives First Amendment scrutiny with the Federal Circuit’s review in the Brunetti case, this could impact Daniel Snyder’s currently suspended R-Word trademark applications (here, here, and here), and the NFL’s suspended Boston Redskins application.

While the decades-old R-Word registrations challenged in Harjo and Blackhorse appear safe from cancellation given the ruling in Tam, what stops others from opposing registration of any future R-Word applications (or any of the currently suspended applications, if published) as containing scandalous matter in violation of Section 2(a) of the Lanham Act?

If the scandalous bar to registration survives First Amendment scrutiny, opposers (unlike cancellation petitioners) would have the significant benefit of only needing to show (at the time of an opposition decision) that the current R-Word applications have scandalous matter.

It’s a question of the timing of proof necessary, in other words, no time machine would be required to determine how the relevant public perceived the R-Word marks back in the late 1960s when the first R-Word registration issued for the team; those would not be at issue.

It’s also a question of who comprises the relevant public. For disparaging matter, it was Native Americans. For scandalous matter, it would be the general public, although not necessarily a majority, but instead a “substantial composite of the general public.”

The Act’s present prohibition on the registration of scandalous matter reaches matter that is “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” Wouldn’t unambiguous racial slurs qualify for this treatment?

Who’s ready to carry the next, but new flame, if needed, to oppose registration of any R-Word applications that publish for opposition, contending that a substantial composite of the general public finds the applied-for marks “shocking” to their sense of propriety and/or “offensive” to their conscience?

Even those who fought hard to undue the disparagement provision of Section 2(a) for Simon Tam, see Daniel Snyder’s team name in a very different light, and let’s also say, not a very sympathetic light. And, the general public today is not the public from 50 years ago.

Finally, given the vast public attention and support this issue has received over the last quarter century, it would be more than interesting to see what kind of a record could be developed on the scandalous ground for registration refusal, today, and not decades ago.

So, not so fast, let’s see what happens to the scandalous portion of Section 2(a) in Brunetti, before allowing Daniel Snyder to celebrate Tam too strongly, my friends.

It’s as Suggestive as a Butter Knife for Steak

Posted in Advertising, Articles, Branding, Food, Marketing, Trademarks, USPTO

We’ve written quite a bit over the years about the Spectrum of Distinctiveness for trademarks, and the all-important difference between suggestive marks and merely descriptive ones, with only the former being allowed immediate rights based on first use.

Creativity is what separates the power of suggestion from the weakness and limbo of descriptiveness. Remember the floating feather example and all the silly guesses as to what it might suggest? And, those who persist in smashing an otherwise suggestive brand?

One of my favorite local examples of a great suggestive mark is Murray’s famous Silver Butter Knife trademark for steak. With all the long lines for salad places in the skyway system here in Minneapolis, Murray’s appears to have stepped up its advertising campaign.

But, I’m left wondering, is Silver Butter Knife only a trademark? Or, does it not also function as a service mark too? After all, the steak is prepared in the kitchen and then carved at table-side, Murray’s certainly touts the “experience,” which seems to point to the service.

What’s more, in terms of scope of rights, if Silver Butter Knife had also been registered for restaurant services, do you suppose the USPTO might have done some heavy lifting for Murray’s and refused registration of BUTTERKNIFE WINES for wine?

Oh well, either way, it looks like BUTTER brand wine is going to stand in the way of BUTTERKNIFE WINES instead of the USPTO, and perhaps do Murray’s bidding for them.

By the way, would anyone like a serrated knife to cut through all this trademark clutter?