Collaborations in Creativity & the Law

Is the US Olympic Committee’s #TwitterBan Fair or Foul?

Posted in Fair Use, First Amendment, Trademark Bullying

The 2016 Summer Olympics will officially* begin in eight days. Yet the U.S. Olympic Committee’s (USOC) efforts to enforce the Olympic trademarks are truly an eternal battle. While the USOC has a reputation for aggressively enforcing its trademark rights, the USOC seems to have set a new personal record for aggressive tactics, attempting to enforce an all-out #TwitterBan on companies making any reference to the Olympics on Twitter.

*Note: while the games officially open on August 5, the U.S. Women’s Soccer Team takes on New Zealand two days earlier on August 3

The first victim of the USOC’s recent activities was apparel company Oiselle, who sponsors U.S. runner Kate Grace. Back on July 7, Ms. Grace won the 800 meters U.S. Olympic Trials and Osielle took to Instagram to congratulate her with the post below:


The USOC contacted Osielle and demanded that Oiselle take down the images and all other “Olympic-related advertising.”

But it appears that the Osielle dispute is only the tip of the iceberg. On July 21, ESPN reported on the USOC’s broader enforcement efforts, including a letter campaign directed at companies that sponsor athletes, but are not official Olympic sponsors. The letter warned companies not to engage in activities that the USOC claims infringes upon its trademark rights.

However, the USOC’s concept of infringement seems a bit overbroad, even by Olympic standards. According to ESPN, the letter informed companies that:

Commercial entities may not post about the Trials or Games on their corporate social media accounts. . . . This restriction includes the use of USOC’s trademarks in hashtags such as #Rio2016 or #TeamUSA.

Not only that, but the USOC claims that, other than media companies, no company can reference Olympic results, share or repost anything from the official Olympic social media account, nor use any pictures taken at the Olympics.

U.S. law provides the USOC with special treatment  for its trademark rights. It receives the exclusive right to use the the Olympic Ring symbol, the Olympics mark, and related marks. The statute also prevents others from using trademarks, trade names, sign, symbols, or insignia that falsely represent an endorsement, association, or authorization from the USOC or International Olympic Committee.  Yet the statute does not provide the USOC with the exclusive right to discuss the Olympics, disseminate facts about the Olympics, and certainly no exclusive right to tweet (or retweet) about the Olympics.

The USOC’s letter appears to take the position that all Tweets constitute a form of advertising, ignoring the possibility that tweets also constitute a form of protected speech. Further, the use of #hashtags in Twitter are largely a form of communication, providing a short-hand way of identifying the topic of the tweet. Any consumer that is reading a tweet presumably has a Twitter account, and understands that no authorization is required to include a hashtag in a Tweet. Accordingly, the risk of consumer confusion seems unlikely, if not impossible, unless the tweet uses some other wording or symbol that falsely suggest an endorsement.

Setting aside the first amendment issues, the USOC also has contractual issues to consider. The Twitter Terms of Service require the USOC to grant Twitter a license to use all posted content, and the right to sublicense that right. It is an open question of whether the USOC can even enforce its claimed ban on sharing and reposting the USOC’s tweets.

It is possible the USOC will take a more balanced approach in interpreting these rules once the games begin. There were certainly be a number of companies willing to test the waters to see just how far the USOC is willing to go. Between the conditions of athlete housing, possible threat of the Zika virus, and other issues that have been dominating the run-up to the Olympics, it seems like the USOC should be excited to get any positive publicity, even if it from unofficial sponsors.

When Should a Brand Get Involved in Social Issues?

Posted in Advertising, Branding, Guest Bloggers, Marketing

– Jason Sprenger – President, Game Changer Communications

I don’t think it’s a stretch to say that 2016 will go down as a year that a lot of social issues in America boiled over.  Transgender people and the bathrooms they use.  The role of law enforcement in society, and how they relate to the people they serve – especially those in ethnic minorities.  The lingering issues of prejudice and hate as they pertain to civil and LGBTQ rights.  How our elected leaders, and candidates for high office, represent us.  It’s a heavy time to be an American, there’s no doubt about it.

From a professional standpoint, I think it’s fascinating and instructive to take a look at how brands have reacted and participated in the debates and discussions around these issues.  Consider this:

  • A lot of brands had something to say about the issue of bathrooms for transgender people. Target’s stand for inclusivity may have been the most publicized – and most controversial – of all.  Despite boycotts and other blowback from some groups, Target remains committed to its stance and it says that it hasn’t negatively affected business.
  • Off the top of my head, I can’t think of a single brand that has taken on the topic of race, the police, LGBTQ rights and prejudice, etc.
  • Individuals have said and done certain things regarding the upcoming 2016 elections, but I can’t think of a brand that has taken a stand on Clinton, Trump or anything relating to the election.

These reactions, or lack thereof, again beg the question: what’s the right thing for a brand to do in engaging in social issues?  Should a brand engage, or should it sit out on the sidelines?  I don’t think there are any hard and fast rules that govern this; I think it depends on the brand, the situation and potentially several other factors.  But I think there are a few guidelines that are essential to keep in mind:

  • Brands should act and communicate with humanity, in the context of what’s going on in the world. It doesn’t matter if they take a stand or not – they shouldn’t be pushing an agenda of theirs that’s out of step with community or world events.  Understand what’s happening, and act with common sense.
  • Brands should be a part of the community they do business with. This can refer to geography, or to stakeholder groups and others with shared interests and experiences.  If a brand’s stakeholders are engaged in a social issue, or if they need to be defended or advocated for, I think it may make sense for that brand to take some action. This is where Target’s actions on transgender rights are understandable – and I think appropriate.
  • Brands should not do something just for the sake of doing something. Quite often, the best thing to do is nothing at all.  If it feels like you’re being opportunistic, or reacting just for the sake of reacting, then the best decision is probably to leave it alone.  Reacting too strongly, or in a way that would be seen as inauthentic or inappropriate, has a tendency to create a backlash.

As I’ve written in other blogs in this space, it’s really pretty simple.  If it feels right, go for it.  If it doesn’t, then abstain.  In the meantime, buckle up – the road ahead might be a rocky one.

2(c) or Not to See Political TM Speech?

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

That is the question, at least for the day.

It’s also a question we hope the U.S. Supreme Court will address.

In particular, does a careful focus on the USPTO’s routine application of Section 2(c) of the Lanham Act, help shed light on why Section 2(a) actually doesn’t violate the First Amendment?

Last December, we discussed In re Tam, and how the Court of Appeals for the Federal Circuit wrongly held that the First Amendment’s protection of speech rendered Section 2(a) — the statutory provision prohibiting the registration of marks that may disparageunconstitutional.

As we have written before, just because a trademark exists doesn’t necessarily mean it is entitled to federal registration. The right to use is not coextensive with the right to register.

Indeed, various public policy considerations underlying our federal trademark law allow for use, but still may preclude registration of a trademark “on account of its nature“.

Like Section 2(a), Section 2(c) forbids the government from granting registration to a trademark “on account of its nature” if it “consists of or comprises” certain types of defined subject matter.

The specific subject matter denied registration under Section 2(a) — even if it performs as a trademark — includes matter that is scandalous or immoral, or matter that may disparage persons, among others.

Whereas, the specific subject matter denied registration under Section 2(c) — even if it performs as a trademark — includes the name identifying a particular living individual whose written consent to register is not of record at the USPTO.

For nearly a decade, Section 2(c) of the Lanham Act consistently has been invoked by the USPTO to refuse registration of any trademark alluding to President Barack Obama or Secretary of State Hillary Clinton, even those marks with a clearly negative political message and content:

So, if the en banc majority is really right in Tam (where commercial speech was at issue), then how can Section 2(c) survive the same First Amendment challenge with political messages?

Political speech is the most important and coveted form of speech protected by the First Amendment, yet each of the above politically-charged marks was refused registration under Section 2(c) of the Lanham Act.

And, just so it is clear that the USPTO is applying Section 2(c) in an evenhanded manner without picking sides, or punishing applicants espousing a negative message about a recognized political figure, these positive ones were refused under Section 2(c) as well:

In the same evenhanded way, in Tam, the USPTO refused registration of THE SLANTS because it met the 2(a) standard, concluding that a substantial composite of persons of Asian descent consider the subject matter to consist of or comprise a racial slur that may disparage persons of Asian descent.

It didn’t matter that Mr. Tam is of Asian descent and he genuinely desired to reclaim the slur as a positive designation. And, it wouldn’t have changed the result if a different non-Asian applicant actually intended to offend those of Asian descent by adopting the same mark. Either way, good or bad intentions, positive or negative messages, since the subject matter in question triggers a Section 2 violation, registration is not allowed.

Perhaps this analysis may add further support to Professor Rebecca Tushnet’s forthcoming Essay (not that she needs it), contending “that In re Tam is wrongly reasoned even given the Supreme Court’s increased scrutiny of commercial speech regulations, and that to hold otherwise and preserve the rest of trademark law would require unprincipled distinctions within trademark law.”

In addition, perhaps it further supports Professor Tushnet’s concern that “disparagement can’t coherently be distinguished from a number of the other bars to registration once the harsh logic of the First Amendment applies. If trademark registration as a whole is constitutionally vulnerable under a particular vision of the First Amendment, that very result counsels against adopting that vision as constitutional doctrine.”

For all the First Amendment wonks that believe the en banc majority of the CAFC got it right in Tam, and are uncomfortable with the USPTO invoking Section 2(a) when the subject matter of a mark consists of or comprises a racial slur, how are you able to defend Section 2(c) of the Lanham Act from the same First Amendment demise, especially when confronted with the above inherently political messages comprising the rejected trademark applications?

The Olympics! Officially Protected from Zika by OFF!

Posted in Advertising, Branding, Mixed Bag of Nuts

The Summer Olympics are with us again, in what has been a great summer for sports. Besides the normal summer sports highlights, soccer fans have gotten a special second year in a row of the Copa America, not so great if you’re a Messi fan. That happened to land in the same summer as the Euro Cup in which tiny Iceland sent England packing. Iceland, by the way, has a population of a little over 300,000 and their co-coach hasn’t quit his day job as a dentist. England had the highest paid coach in the Euros and has won the World Cup.

Rio 2016But I digress. Now the Summer Olympics are approaching, such a well known brand that the Lanham Act gives it special privileges. This year, they’ll be held in Rio de Janeiro, and though it’s winter in the Southern Hemisphere Brazil is basically ground zero for the Zika virus. A number of athletes have pulled out over Zika concerns. The CDC. though, has only urged pregnant women or those who may become pregnant to stay away. Though it does recommend bug spray.

Enter S.C. Johnson. OFF! has become the first official bug spray of the Olympics this year. On first blush, this seems to be a great idea. The world is understandably concerned about Zika. What better way to make your product the preeminent protector from Zika? All those people who decided to stay home, and those who would have stayed home anyway, will see OFF! used by athletes, judges, spectators, commentators, and the like. It’s safe to say that most of the people traveling to Rio will be basting themselves in OFF! more than they baste their Thanksgiving turkey. Zika has crossed into the U.S. and many of those viewers may run out to buy some OFF! to start basting themselves.

OFF!There is, of course, the chance that S.C. Johnson will be lambasted for trying to profit off of people’s fears of a new and horrific virus. Even if they don’t raise prices a la Martin Shkreli, trying to capitalize off of a public crisis is generally frowned upon.

There’s something I would be more concerned about though. What happens when some of those who have gone to watch the Olympics catch Zika? Worse yet, what happens when one, or two, or more high profile athletes or commentators are infected with Zika despite the gallons of free OFF! they were provided? The average high is 77 and the average low is 65  in Rio in January.  I would guess that there are a few mosquitos still around, even if it is the driest average month.

My money is on at least a few visitors catching the Zika virus. There are two real variables here though. First, who and how many catch it? This variable will directly influence the second, what is the public and media reaction? If T.V. viewers around the world are connecting OFF! with the Olympics, and possibly seeing high profile personalities lather themselves in its protection, will they conclude that OFF! doesn’t cut it when one of them gets Zika? That may not be the right conclusion. After all, I know I’ve gotten mosquito bites despite wearing an unhealthy amount of bug spray (I’m looking at you, Northern Minnesota). But it does seem to be a conclusion that they are risking, if not inviting. It’s probably better to be seen as just a bug spray brand, than the bug spray brand that won’t protect you from Zika.

On the other hand, by the time it is apparent that someone caught the virus, it will be approaching the end of the summer in the Northern Hemisphere. Perhaps consumers up here will forget by the time next bug spray season rolls around. Or maybe a cure or vaccine will be found that drops Zika from the public mind.

Or perhaps, hopefully, no Zika transmission is associated with the Olympics. In that case, OFF! may be recognized as THE bug spray to protect from Zika and other mosquito born viruses. I’m sure the folks over at S.C. Johnson weighed even more possibilities, and did not come lightly to the conclusion that this is right for the brand. I’ve just been spit balling here, but it seems there is a decent risk involved.

So which will it be? OFF! the brand that stops Zika in its tracks? Or, OFF! the brand that leaves you vulnerable to horrible mosquito born viruses?

A Prime Concern: Counterfeiting on Amazon

Posted in Advertising, Branding, Counterfeits, Infringement, International, Trademarks

Readers: find any good deals on Prime Day? For my part, I abstained. I’ve had a “Gold Box” deal sitting in the box for about 6 months now — turns out, I really didn’t need a pressure cooker.

If you did seize upon Prime Day, here’s hoping you got exactly what you ordered, and not a knockoff or counterfeit product. Amazon is generally very reliable, yet as it grows to unspeakably immense proportions, sales listings have become increasingly difficult for brand owners to police, and Amazon may not be much help either.

According to a CNBC report, counterfeiting on Amazon.com “has exploded this year, sellers say, following Amazon’s effort to openly court Chinese manufacturers, weaving them intimately into the company’s expansive logistics operation.”

This is a big issue for Amazon, a $348 billion dollar company, sixth most valuable in the United States.

One common problem arises from the “commingled” listing system on Amazon which bundles together multiple third-party sellers, including Amazon’s own fulfillment system, onto one product listing. Suppose you see a product for sale on Amazon for $20, while a third-party seller claims to offer the exact same product for $8. Which one to buy? The answer seems obvious – until a knockoff product (or blatant counterfeit) arrives at your doorstep instead.

Amazon does use bold language in its Anti-Counterfeiting Policy to assure consumers:

Products offered for sale on Amazon.com must be authentic. The sale of counterfeit products, including any products that have been illegally replicated, reproduced, or manufactured, is strictly prohibited.

But in practice, brand owners can face an onerous burden when it comes to addressing counterfeit sales of products. To cite a recent experience, upon discovering that knockoff goods were sold through a brand owner’s listing, Amazon was exceedingly unhelpful in removing the listing and taking any action whatsoever against the seller. We repeatedly received emails asking for the following information:

If you believe sellers are offering items different than advertised, please file a report with Seller Performance and provide an Order ID Number of a test buy that confirms your claim that these sellers are not offering the item(s) advertised.  You may contact the Seller Performance team through the following form:


To facilitate an investigation, be sure you include the following information in your complaint, as applicable:

  • The ASIN/ISBN of the item’s detail page and the product title
  • The store or business name of the seller you are reporting
  • Your order ID (required)
  • A brief explanation of the violation (required)

Once all this information was provided, Amazon will assist with removing that specific listing, but likely will not take any broader action against the seller’s account or other marketplace listings. This is because sellers will frequently claim their knockoff product was simply “mis-listed” by Amazon and should not have been listed as the brand owner’s product. Too often, it seems Amazon is willing to give the benefit of the doubt.

You may also notice the reference to a “test buy” in the emails — indeed, Amazon has confirmed to us that brand owners (or their counsel) are required to purchase items from third-party sellers to prove they are counterfeit or knockoff products — even if they are sold at a fraction of the authorized resale price. This means that serial counterfeiters are likely to get away with their activities, as purchasing their entire catalog is a unsavory option for brand owners. And even if a single listing were enough to deactivate the seller’s account, they may spring up again under another account days later.

eBay has long dealt with counterfeiting issues, and now the same rule applies to Amazon – if it seems too good to be true, it probably is.



Trademark Goods/Services Limitations, Why Not Exclude Any Federal Unlawful Activities?

Posted in Almost Advice, Articles, Branding, Marketing, Trademarks, TTAB, USPTO

Those involved in the cannabis industry — where certain activities are legal in some States, but unlawful under federal law — continue to search for creative strategies and solutions in protecting their trademarks and service marks.

Picking up where Tim left off last Friday, I’ve been giving some thought as to how the Herbal Access business in Washington State might have been able to overcome the “unlawful use” registration refusal recently affirmed by the TTAB.

As you will recall, the mark HERBAL ACCESS was refused registration in connection with “retail store services featuring herbs” because the evidence of record tended to show some of the “herbs” sold included “marijuana”:

“Because the evidence that Applicant’s mark is being used in connection with sales of a specific substance (marijuana) that falls within both the services identification and the prohibitions of the [Federal Controlled Substances Act] is unrebutted, we find that Applicant’s retail store services include sales of a good that is illegal under federal law, and therefore encompasses a use that is unlawful.”

To the extent the In re Morgan Brown decision is appealed, and assuming the TTAB’s ruling withstands scrutiny, what if the Applicant had specifically excluded from the identification of services, the “unlawful” portion of the services being offered, i.e., the sale of marijuana?

In particular, what if the description of services was amended, limited and narrowed to the following with an express exclusion built into the ID: “Retail store services featuring herbs, excluding marijuana”?

It’s hard to argue that the retail store services featuring non-marijuana herbs — provided lawfully under the HERBAL ACCESS mark — could fairly be denied registration, as the applied-for mark and description of services no longer encompass or include unlawful activities.

Obtaining this narrower registration would be better than none, and it might provide some halo effect over activities that might not always be unlawful under federal law.

Better yet, what about these possible descriptions?: “Retail store services featuring herbs, excluding any in violation of federal law” or “Retail store services featuring herbs, excluding any unlawful herbs.”

What I like about these options over specifically excluding “marijuana” from the description is allowing the scope of the ID to flex if federal law changes in the future.

What do you think, how would you attempt to overcome and/or moot the “unlawful use” refusal for cannabis related activities?

USPTO Keeps the Door Locked for Marijuana-related Services

Posted in Branding, First Amendment, Food, Trademarks

Medical marijuana is currently legal in 25 states, including four states that have also legalized recreational use (Alaska, Colorado, Oregon, and Washington). On Nov. 8, California voters will have a chance to make their state the next to legalize recreational use. As a dollar amount, Forbes estimated that Colorado’s marijuana industry was worth $1 billion. In light of these statistics, it is odd that marijuana is still considered a controlled substance and illegal under federal law. However, the Trademark Trial and Appeal Board issued a decision yesterday that reminds us of the odd conundrum that marijuana-related business owners find themselves.

The Lanham Act has long prohibited the registrations of trademarks in connection with illegal goods or services. The Lanham Act requires that that an applicant make “use in commerce” of the trademark in order to be eligible to receive a trademark registration. The Board and courts have interpreted the language to require “lawful use in commerce.” Consequently, if the use of a mark violates the law, the Trademark Office will likely refuse registration of the mark.

The applicant in the Board’s recent decision operates a retail marijuana store called “Herbal Access” in Washington State. As evidence of use, the applicant submitted a screenshot of its website and of its Facebook page, which included an image of the store. The application did not include a reference to marijuana, but instead identified the services as “retail services featuring herbs.” The Examining Attorney refused registration of the mark, concluding that the applicant was using the mark in connection with unlawful activity. The Examining Attorney reasoned that the term “herbs” was broad enough to include marijuana and, in any event, the applicant’s specimen and website confirmed that the applicant did in fact sell marijuana. The applicant appealed to the Board.

The Board affirmed the Examining Attorney’s decision to refuse registration (decision available here). While the “unlawful use” doctrine is not a new phenomenon, the Board addressed in some detail the applicant’s attempt to tiptoe around the use of the marijuana in the identification of services description. The Board first noted that it agreed with the Examining Attorney that “herbs” was broad enough to include marijuana, so the attempt to carve out illegal services failed.

However, the Board’s analysis is equivocal as to what would happen if the identification of services undeniably excluded illegal activities. The Board reaffirmed the principle that it must focus on the goods or services as identified in the application. However, the Board also reasoned that the Board should consider the services or goods that the applicant is actually selling. Yet the reference to this evidence is in the context of assisting the Trademark Office “to ascertain that the word ‘herbs’ in the description of services encompasses marijuana.”

Even if a federal registration is out of reach for marijuana business owners, there are alternatives. Each individual state has its own process for registering trademarks, usually modeled after federal law. Until Congress attempts to clarify the conflicting laws regarding the use of marijuana on a national level, the door to the U.S. Patent and Trademark Office will likely remain shut for marijuana activities.



Posted in Trademarks, USPTO

Last week was rough.  We went from celebrating America to watching her at her worst.  We saw officers shoot two black men in Baton Rouge, LA and Falcon Heights, MN, a black man shoot cops in Dallas, and resulting social unrest (including my hometown police being hit with concrete last weekend and protests blocking our freeways yesterday).  We read polarizing social media posts.  Everyone seems more on edge than I can ever recall.

Call me a conspiracy theorist if you must, but what a perfect time to release a mind-numbing game called Pokemon Go!

I have not played the game myself – and don’t intend to given the fact that it’s probably “a government surveillance psyop conspiracy” according to a worthwhile read from Mashable) – but my friends say the game is “EVERYTHING.”   To the extent that I understand it, apparently you try to catch cute characters like Pidgey and Pikachu on your smartphone’s screen and, once you get to a certain level, you then can go to “gyms” (real locations) to find things to catch.  It seems somewhat like geocaching with your phone and with unreal objects.  From one friend:  “A kid found a dead body while playing – she indicated that she wasn’t too scared to stop playing, so that’s a positive sign.  I have never taken my dogs on more walks, so I think they like the game too.  The other day I biked by a pack of teens pawing at the door of a locked church trying to get in to take over the ‘gym’ located inside – it’s weird seeing teens desperately trying to get into churches.”  I don’t get it.

Conversations with friends have devolved into “Martha, I’m fine waiting, I just saved [partner] from a Seel and he didn’t even thank me,” and I’ve grown increasingly uncertain about whether “I am going to try to go to the gym later” means a place to work out or a place to play Pokemon Go.   Based on what I’ve seen it do to people’s walking ability, I am scared to be on the roads with anyone trying to “catch” things that don’t exist in reality while trying to drive in reality.

Perhaps dazed itself, the pending U.S. trademark applications for the POKEMON GO logo (here, here, and here) have been refused registration as being likely to be confused with a registration for POKEMON in standard characters.

Mark Image

These three applications were all filed based upon foreign applications, which were filed by Nintendo Co. Ltd. (a Japanese corporation) as the applicant, and thus the Japanese corporation was listed as the applicant on these U.S. filings.  However, Nintendo of America Inc., an American corporation incorporated in Washington, owns the registration for POKEMON.

Nintendo, and companies finding themselves in similar situations, can overcome this issue by claiming ownership of the prior registrations.  In order to do so, Nintendo would need to (1) record an assignment of the prior POKEMON registration from the American corporation to the Japanese corporation, (2) submit copies of documents evidencing the chain of title, or (3) submit an affidavit or declaration stating that the applicant is the owner of the cited registration.   Additionally, when making maintenance filings, it is important that the company that owns the mark have control of the use of the mark, even when that use is made only by the company’s parent company.  As the TTAB ruled earlier this year in  Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, a parent company’s use of a wholly-owned subsidiary’s registered mark does not inure to the benefit of the subsidiary if the parent controls the nature and quality of the goods sold under the mark.  In the alternative to claiming ownership of the marks, Nintendo of America Inc. could file new US-based applications for the mark, and these applications could be abandoned, but Nintendo would lose the priority date of the original filing.   Multinational corporations and corporations with subsidiaries should consider these ownership issues when managing a trademark portfolio that includes filings in the United States.


Standard Character Trademark Overbreadth

Posted in Articles, Infringement, Trademark Bullying, Trademarks, TTAB, USPTO

When we hear the word “overbreadth” in close connection with the word “trademark,” the often discussed “trademark bullying” topic will frequently come to mind.

Yet, discussions about “trademark overbreadth” are not limited to exaggerated and unrealistic trademark claims by a trademark owner.

We previously have discussed how one might deal with prior registrations that contain overbroad descriptions of goods or services, utilizing Section 18 challenges to compel certain narrowing.

Trademark overbreadth also can have real meaning in connection with the representation of the chosen mark an applicant might select in attempting to federally register at the USPTO.

An applied-for mark, in standard character format, is the broadest possible method of protection: “Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation.” (emphasis added)

Broad isn’t always best, especially when a new comer and Applicant is hoping to coexist with prior federally-registered rights that already enjoy the many benefits of that very broad standard character protection at the USPTO:

“[T]he TTAB decides likelihood of confusion “on paper” at the USPTO as opposed to how a federal district court finds likelihood of confusion in “the real world” with the specific marks in use in their full and complete marketplace context:

  • If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007).
  • The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009).
  • A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely “reasonable manners” of depicting such mark. SeeIn re Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
  • Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered mark presumably could be used in the same manner of display. See, e.g., In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
  • Likewise, the fact that an applied-for mark is presented in standard character form would not, by itself, be sufficient to distinguish it from a similar mark in special form. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Sunnen Prods. Co. v. Sunex Int’l, Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882 n.6 (TTAB 1986).

“With this well-settled precedent governing most TTAB cases, it should become more and more clear that proving likelihood of confusion at the TTAB to prevent another from being able to register a standard character mark doesn’t necessarily mean that infringement should be assumed or that it can even be established in federal district court, based on the actual market conditions of the specific trademark uses of the parties.”

The reverse is true as well. Just because an Applicant might be successful in avoiding a finding of trademark infringement based on its particular stylized use, doesn’t mean the Applicant’s federal registration application — in standard character form — is sufficiently tailored and narrow enough to avoid a finding of a likelihood of confusion at the TTAB, especially when the new comer and Applicant is confronted by prior standard character trademark or service mark registrations.

So, there is certainly an advantage to being the first to obtain standard character protection at the USPTO, and there is no guarantee a new comer Applicant is entitled to one.

Applicants should think carefully about whether the broad standard character format puts them in the best position to defend against a likelihood of confusion claim at the TTAB.

Rise of the Game

Posted in Mixed Bag of Nuts

Video games have been an existing and growing component of popular culture for my entire life.  I literally cut my teeth on the Atari 2600 while I was still a toddler.  From there I spread into bowling alley arcades, Nintendo, PC Games, Playstation, Nintendo 64, Playstation 2, Playstation 3, and Playstation 4.  Over that time, the gaming industry grew in popularity, volume, and innovation.

Over the past several years and over the following few years, there have been and are likely to be significant new developments that are going to expand the gaming industry even further.  Simply put, its an exciting time to be alive for a “gamer.”  So called eSports appear to be gaining a significant foothold such that they will be regularly broadcast on TBS on Friday nights.  Vegas is “looking to video games” to bring in a new crowd of gamblers.  And it appears that hardware and software capabilities are almost finally to the point where VR games are something people will actually want to play.

The rise of the games is also an exciting time for the legal profession.  Each of these new avenues of gaming promise to provide new and interesting legal issues.  For example, top gaming talent is likely to end up working with agents similar to sports stars.  The gambling angle is likely to raise tricky legal issues regarding whether the games are “games of skill” or “games of chance.”  And one can only start to imagine the issues that will begin to arise in an entirely virtual world.  (“Virtual infringement,” anyone?)

Being both a gamer and an attorney, I’m excited for the possibilities, and I’d love to hear from any readers with thoughts on what they think the future may hold.