Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

Since launching almost ten years ago, we’ve focused on helping and guiding marketing/branding professionals, as we seek to facilitate their graceful collaborations with trademark professionals.

Our approach has strived to deliver valuable information, without the typical jargon and legalese.

It seriously borders the obvious to say that folks who connect with us here know the importance and value of brands and trademarks, and probably know far less about patents and patentese.

Could novelty be shown, sharing this with patent folks wanting more comfort with trademarks?

In a month, on September 28, at 10:15 AM, I’ll be sharing some of this knowledge at the Midwest IP Institute, in Minneapolis, with a brand new session specifically designed for in-house patent and intellectual property counsel, especially those who may believe that patents are more important than trademarks, called: Trademark Survival Guidance for In-House Patent and IP Counsel.

I’m not saying that one is more important than the other. Nor are there any equivalents here.

What I am saying is that over the last quarter century intellectual property expertise has become far more subspecialized. I’ve witnessed this development first hand over the course of my career. Yet, not all companies have dedicated in-house trademark counsel, so in-house patent counsel often is expected to have at least a working knowledge of the ever-changing trademark landscape.

I’ll be leading a discussion with a very talented group of patent and intellectual property counsel:

  • Paul Sherburne, Associate General Counsel and Intellectual Property Attorney, Graco Inc.
  • Greg Smock, Patent Counsel, Teleflex Incorporated
  • Kirsten Stone, Assistant General Counsel – Chief Intellectual Property Counsel, H.B. Fuller Co.

If you have a strong patent background and want more trademark footing, this session is for you.

If you know patents inside-out, but search for more comfort in trademark matters, this is for you.

If your knowledge of the patent landscape is vast, but you seek to be much better than simply dangerous, when it comes to navigating thorny trademark issues, you won’t want to miss this.

Why? Because we will help you improve your handling and supervision of trademark matters.

In fact, you will learn and apply valuable trademark knowledge to your day-to-day work, and take away the top six trademark tips that will improve and strengthen your trademark advice to business leaders and marketing professionals. Are we speaking your language yet?

If you’re wanting to learn how to translate patentese into valuable trademark skills, here you go.

By the way, I’ll be expanding my patent knowledge and learning more patentese later today (and more than I knew yesterday) at the USPTO China Intellectual Property Road Show at the University of Iowa College of Law, hosted by Dean Kevin Washburn and Professor Jason Rantanen.

If you want to learn how to see around corners when it comes to doing battle on the IP landscape, the 2016 Midwest IP Institute is just around the corner in downtown Minneapolis.

Like last year, a full two days of excellent programs, but this year on Thursday and Friday September 22 and 23. Here are details for how you can register to attend.

And this year, for the Annual Trademark Review, I’ll be teaming up with a former colleague and one of our founding writers on DuetsBlog, Karen Brennan, now in-house counsel at Best Buy.

On that note, here are a few of my favorite Karen Brennan DuetsBlog posts from the not-to-distant past:

Enjoy all, thanks again Karen, and we hope to see many of you next Thursday September 22 at 11:15 AM, at the MN CLE Center, for a full hour of trademark energy.

It’s that time of year again, the Midwest IP Institute is back in action for the 14th year in a row, and if you’re attending you’ll receive this little gem, the 13th Edition of The IP Book:

2015IPBookCover

So, don’t miss it, Gerard Rogers, Chief Judge of the TTAB will provide us with News from the Trademark Trial and Appeal Board, and he will also share his perspectives on the implications of the Supreme Court’s B&B Hardware Decision on TTAB practice.

Our friend John Welch of the TTABlog will be joining me on the podium for the annual review of trademark cases: The Year in Trademark Law.

In addition, my partner and fellow DuetsBlogger Brad Walz will provide valuable insights on how to avoid the cost and expense of trademark oppositions altogether by utilizing ex parte Letters of Protest at the USPTO.

Please join us this Thursday and Friday at the Minnesota Continuing Legal Education Center in downtown Minneapolis for two days of intellectual property education and networking.

Finally, if you’re wanting a preview of the B&B Hardware discussion, there is a webinar tomorrow you won’t want to miss, my partner and fellow DuetsBlogger Tiffany Blofield is teaming up again with Caldwell Camero of General Mills to discuss their perspectives on how the Supreme Court’s B&B Hardware decision has changed our trademark world.

 

This past weekend one of my sons said, “Dad, I have a good blog topic for you.” After he explained, it was clear, yes, son you do! So, he sent me the photo to the left. It is one that he recently snapped at a place that sells Halloween costumes.

 

As an aside, I love it when family members, friends, colleagues, our wonderful guest bloggers, and you dear readers, send potential blog ideas and topics! So, please keep them coming!

Anyway, my son’s photo reminded me of a similar t-shirt and I now remember seeing it worn by some folks during the Minnesota State Fair a few weeks ago. Since I captured no photos at the time, I had forgotten about it until now. As it turns out, you can buy the shirt I saw online.

The Etsy site where it is being sold describes the above shirt to the right this way:

“This t-shirt reads Zombies Eat Flesh and is shaped like a very famous sub logo. This decal measures approximately 11 x 13 inches and is great for all you zombie lovers!”

So, I’m left wondering why hasn’t Subway jumped on this zombie with both boots? After all, we don’t only have a famous mark targeted by this parody, but a very famous mark, thanks Etsy.

And, Subway ought to have some free time on its hands now that the FOOTLONG trademark debacle is behind it, unless it is still working on removing those millions of false TM notices.

Or, perhaps Subway just hasn’t gotten around to Etsy yet, as another online seller has indicated his Eat Fresh parody shirts are: “NO LONGER FOR SALE DUE TO THE MAN.”

I’m thinking that whoever created and is using the stylized ZOMBIES EAT FLESH trademark has zero chance of successfully registering it (no surprise, no application has been filed, to date), I just can’t see the USPTO allowing it, can you?

TTAB cases involving a discussion of parody — in the context of likelihood of confusion — include at least the following:

  • Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012) (sustaining oppositions to applications for the mark CRACKBERRY, for a variety of online computer services and clothing items, on the bases of a likelihood of confusion and likelihood of dilution by blurring with the mark BLACKBERRY, for handheld devices, including smartphones, and related goods and services, noting that “likelihood of confusion will usually trump any First Amendment concerns”);
  • Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006) (holding contemporaneous use of applicant’s mark, LESSBUCKS COFFEE, and opposer’s marks, STARBUCKS and STARBUCKS COFFEE, for identical goods and services, likely to cause confusion, noting that “parody is unavailing to applicant as an outright defense and, further, does not serve to distinguish the marks”); and
  • Columbia Pictures Indus., Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981) (holding CLOTHES ENCOUNTERS for clothing, and CLOSE ENCOUNTERS OF THE THIRD KIND for t-shirts, likely to cause confusion, noting that the “right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another”).

As if that isn’t enough, couldn’t you see this well-settled TTAB precedent being relied on by the USPTO during ex parte examination or by the TTAB during an inter partes proceeding?

  • When present, the fame of a mark is “a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods.” Recot , 214 F.3d at 1328, 54 USPQ2d at 1898; L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012) (noting that “a finding that a mark enjoys significant fame expands the scope of protection which might be accorded a lesser-known mark” and that “the fame of a registered or previously used mark can never support a junior party”); and
  • If there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the prior registrant. See In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009).

But, if Subway were to actually bring a trademark infringement and/or trademark dilution action in federal district court, would that be a walk in the park with this zombie, or the cemetery?

I’m thinking that the federal district court takes a much closer look at the parody defense and pays more attention to First Amendment concerns. Do you agree that the zombie has a better than zero chance of successfully defending on parody grounds?

If so, doesn’t this example help make the point, again, about the difference between the right to use and the right to register? They aren’t necessarily coextensive rights are they?

Shouldn’t a federal district court who is asked to decide likelihood of confusion and likelihood of dilution — with injunctive relief, damages, and other monetary relief hanging in the balance (instead of just the right to register) — have the authority and obligation to consider these issues fresh, without having its hands tied by a earlier TTAB decision affirming a registration refusal or granting an opposition to register on likelihood of confusion grounds? There is simply more at the stake when the right to use is challenged and monetary relief is sought, it seems to me.

Moreover, I can’t believe that the TTAB wants the pressure of having its decisions also determine liability for trademark infringement and trademark dilution claims in the federal district courts.

So, let’s hope the U.S. Supreme Court gets it right and recognizes the difference between the right to register and the right to use, in the upcoming B & B Hardware case!

Please join me and the renown Bill Barber of the Pirkey Barber firm discuss these important issues at the Midwest IP Institute in Minneapolis on Thursday.

Sophisticated trademark owners recognize that their trademark rights are dynamic — even if their trademarks aren’t famous for purposes of dilution — they can grow or shrink over time, depending on the magnitude of their own use and their response to third party violations.

It is no wonder then that trademark owners are prepared to expend significant resources, at least to maintain the scope of their initial rights, to protect the value of an important intellectual property asset, and in doing so, they act with the law of trademarks on their side. Importantly, a proper balancing of the many likelihood of confusion factors determines the scope of rights for marks that are not famous (for purposes of dilution protection).

So, if the original scope of rights associated with a particular non-famous mark is represented by the black-colored concentric circles on the target, and the bullet holes represent third party unauthorized uses of confusingly similar marks, and if the trademark owner takes no action against them, then over time, the trademark owner’s scope of rights easily can shrink down to the center of the bullseye, where the trademark owner is only able to control identical marks in connection with directly competing goods.

Professor Ken Port at the William Mitchell College of Law has been exploring the “trademark bullying” issue for some time, he has graciously offered some comments to our writing on the topic here and here, and later this week, he will join Minnesota Representative Joyce Peppin and others to discuss Trademark Bullies – A Problem in Need of a Cure? at the Midwest IP Institute in Minneapolis, Minnesota.

Of course, one of the challenges with so-called “trademark bulling” is the need for a workable definition, and this must precede any intelligent dialogue about what to do with conduct that fits the definition. Although we have written extensively about many aspects of the topic, my views on a proper definition have not changed much since my first post on this topic three years ago: The Mark of a Real Trademark Bully. Yet, the effort to develop an appropriate definition continues.

Earlier this month, Professor Port presented a seminar at William Mitchell where he offered this definition:

“Trademark Bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of expanding.”

One significant concern with this definition is that it applies a pejorative label — and presumably adverse consequences to those who wear the label — to conduct that is likely within the scope of rights enjoyed by a trademark owner under current law.

The law fully contemplates a trademark owner asserting rights against non-competing entities and there is no requirement — in showing likelihood of confusion — that the trademark owner must have a reasonable expectation of expanding their offerings to the point where they will compete. This definition, it seems to me, places determinative weight on the “bridge the gap” factor that only some courts consider in the likelihood of confusion balance.

So, as I read it, this definition, not only snares completely legitimate activity by a trademark owner, but it also seeks to rewrite the law of likelihood of confusion in a way that dramatically reduces the scope of rights held by existing trademark owners.

What do you think?

Just over two years ago, we reported on the CAFC’s landmark trademark fraud decision of In re Bose, here, here, and here.

In addition, I wrote a piece for Thomson Reuters’ Client Times Online called True Lies, Trademark Fraud, and the Medinol Detour: The Federal Circuit Reverses In re Bose."

Our friend, John Welch over at the TTABlog, on the second anniversary of In re Bose, genuinely piqued my interest with his recent and seductive post entitled "TTABlog Special Report: List of Fraud Claims Sustained by TTAB Since In re Bose Corporation."

I thought to myself, what have I missed, but apparently and thankfully nothing, as John explained:

"None. The TTAB has not sustained a single fraud claim in the two years since the CAFC issued its decision in In re Bose Corporation. Nor has it decided whether reckless disregard for the truth is sufficient to satisfy the ‘intent’ element."

I’m thinking that at least until the CAFC provides further guidance on the subject or the TTAB goes out on a limb and decides to adopt "reckless disregard" even before the CAFC decides whether that standard is sufficient, we’ll continue to await decisions that grant successful trademark fraud claims, at least at the USPTO and TTAB.

I’m also thinking that if trademark fraud is an important claim in a case, the client might be best served litigating and proving that claim in federal district court, at least for the time being, since there is at least one federal district court (District of Minnesota) that has sustained a jury’s finding of trademark fraud under the more stringent In re Bose standard, and that decision has now been affirmed by the Eighth Circuit Court of Appeals.

Whatever the forum though, why on earth do trademark attorneys continue to sign verified use statements on behalf of their clients and submit them to the USPTO, when it appears that they are the only class of human beings capable of committing trademark fraud on the USPTO, at least as far as the TTAB is currently concerned.

If you want more, please join us at the Midwest IP Institute on Thursday and Friday, more info here.