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?

Carvanaonline car dealer and operator of “a higher state of car buying” — sports a halo in its non-verbal logo shown above, but is it an angel when using the Google name and logo in t.v. ads?

In other words, is the use licensed by Google or could it be defended successfully without permission as trademark nominative fair use? Dear readers, what do you think?

In the meantime, a good friend Steve Feingold (who wears a halo well), will be delivering a Strafford webinar next month on Co-branding — maybe we can ask him to weigh in on this topic?

Trademark bullying allegations are in the news again.

Not only is Forever 21 calling Adidas a trademark bully for asserting rights in the three stripe design mark, it is asking a federal court to say it has not done anything wrong and award it fees:

“Tired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing ornamental/decorative stripes, and unwilling to stop doing something it has every right to do and pay a bully to leave it alone, Forever 21 has decided that enough is enough. Forever 21 is not infringing any Adidas trademark and has not breached any agreements with Adidas. This matter is ripe for a declaratory judgment.”

This is not their first rodeo together, see here and here. It isn’t our first rodeo discussing Adidas either, see here, here, here, and here.

For more on the subject of trademark bullying, please consider attending another Strafford live webinar a week from today, March 14 at noon CST, details here.

First three who comment earn a free ticket to attend, we hope you join us.

UPDATE: Looks like there is going to be a fight about where the trademark fight actually goes forward, as KOIN6 reports, here.

With the Strafford Publications webinar later today discussing the Lanham Trademark Act’s “Use in Commerce” requirement, with some of my favorite panelists no less, the topic has been on my mind, even when pumping gas into my rental car in Houston, Texas, this past weekend:

NASCARGasolinePump

So, what do folks think, does this photograph of a gasoline pump constitute “use in commerce” of the NASCAR trademark and brand in connection with gasoline, classified in Int’l Class 4?

NASCAR has all sorts of stuff that can be purchased online with it’s brand name and trademark on it, but to serve a trademark function (identify, distinguish, and indicate the source of gasoline), and to demonstrate proper use in commerce of a word mark (as opposed to non-traditional subject matter like colors and scents — we’ll pass on the possibility of taste for this one though), applying the mark directly on the goods isn’t possible given the liquid state.

NASCAR also has an impressive trademark licensing program and more than a semi truckload of federal trademark and service mark registrations to protect its licensed brand, but interestingly, none presently covering Int’l Class 4 or gasoline.

It appears the closest NASCAR has come to protecting gasoline in Int’l Class 4 is through this expired NASCAR registration for motor oil and automotive greases in Int’l Class 4.

Yet, I’m thinking TMEP 904.03(c) contemplates the issue and fully supports using the above photo as an appropriate specimen to demonstrate use in commerce of the NASCAR mark for gasoline, by showing the mark directly on the containers or packaging for the goods: “gasoline pumps are normal containers or ‘packaging’ for gasoline.

Why do you suppose NASCAR hasn’t taken this step (yet)?

There are at least two kinds of buzz converging at the moment (perhaps three), especially for fashion forward and fit oriented trademark types here in Minneapolis.

On the one hand, with the holidays upon us it’s hard to avoid the barrage of billboard ads in the Minneapolis skyway promoting the first brick and mortar entry of Bonobos into the Minnesota marketplace, strategically located in the buzzing North Loop neighborhood of Minneapolis:

BonobosBillboard

On the other hand (or pant leg), are the increasingly vexing trademark specimen of use and Lanham Act use in commerce requirements administered by the USPTO that limit how a brand owner is able to properly demonstrate evidence of use that will effectively support trademark and service mark registration and the ongoing maintenance of those registrations.

Yes, there has been quite a buzz in the trademark community about these vexing trademark specimen and use in commerce requirements (TTABlog, Likelihood of Confusion, and DuetsBlog). Happily, Strafford Publications has assembled a panel of trademark types (Linda, Jonathan, and yours truly) to address these issues in a live webinar on Tuesday January 31, 2017, stay tuned.

In the meantime, if you’d like to attend this webinar free of charge, be one of the first three to post a comment to this blog post. Perhaps you’ll learn how to overcome the pending USPTO specimen of use refusal that Bonobos is currently facing in a USPTO refusal, linked here.

Of course, one of the understandable common desires of a retail clothing store brand owner is to not only own registered service mark rights for its retail store name, but also trademark rights for the clothing and related items sold in its store or stores. And, one of the common desires of shoppers this time of year is to obtain two for one deals.

Leave it to a trademark type to blend the concepts. Life is so much easier for all involved in the trademark registration process when a single specimen of use is able to satisfy both trademark and service mark use; a bogo, killing two birds with one stone, a twofer, you get the idea, right?

Generally, an advertisement that promotes a brand’s retail store services is suitable for demonstrating use of the mark in connection with those services, but the advertisement won’t be appropriate for demonstrating use in connection with the clothing items sold there, unless the advertisement also “includes a photograph of the applied-for mark appearing on the goods or on packaging for the goods.” TMEP 904.04(b).

Armed and legged with that twofer knowledge, would the following floor to ceiling Bonobos advertisement displayed in the Minneapolis skyway system demonstrate both trademark and service mark use (if the full ad were shown along with a close up image of the button — adorned with the Bonobos name  — on the khakis, and trust me, it is fully legible in person)?

BonobosFloorCeiling

Is it still a twofer, if you need to submit two images to the USPTO for the same advertisement?

To the extent you haven’t yet had a chance to fully digest the significant rule changes about to go into effect in all pending TTAB (Trademark Trial and Appeal Board) cases at the USPTO (United States Patent and Trademark Office) on January 14, 2017, now is your chance to hear how they will impact your cases and learn strategies for mastering them.

Strafford is reconvening a familiar threesome, including yours truly, to provide valuable insights and a dynamic discussion of these important rule changes, in a webinar scheduled for November 9, 2016. Here are the details on the program and how to register for it. And, as always here, the first three to post a comment below will enjoy free attendance.

Basically, you’ll learn how to do this on the TTAB gridiron:

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I’m very fortunate to be presenting again with two very capable TTAB practitioners: Linda McLeod of Kelly IP in Washington, D.C., and Jonathan Hudis of Quarles & Brady’s D.C. Office.

Seems just like yesterday, but do you remember the TTAB rule changes we discussed nearly a decade ago, in this 2007 Strafford webinar?

In case you missed the webinar from last year, we’re having another Strafford IP webinar on “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” next Tuesday August 18, at noon CST. Here are the details for the webinar.

This year, we’ll have the benefit of knowing how the Supreme Court decided the B&B Hardware case, so please join us. I’m presenting again with two very capable TTAB practitioners: Linda McLeod of Kelly IP in Washington, D.C., and Jonathan Hudis of Quarles & Brady’s D.C. Office.

To brush up on the impact of the B&B Hardware decision, you might want to review these posts beforehand:

Likelihood of Preclusion: Fallout From the Supreme Court Ruling on Likely Confusion

On Unintended Consequences: Will the B&B SCOTUS Ruling Encourage Trademark Bullies?

Channeling Justice Ginsburg of U.S. Supreme Court on the Right to Register a Trademark

(Just) the Right to Register a Trademark

The first three to post a comment here may attend for free, as my guests, without paying the typical registration fee — we hope you can join us!

Once upon a time, and for decades thereafter, trademark fraud claims were highly disfavored. They were criticized as unproductive litigation diversions — “often pled,” but “rarely proven.”

To succeed — during that lengthy period of time — the alleged fraud had to be “proven to the hilt,” with “clear and convincing evidence,” leaving nothing to “speculation, conjecture or surmise.” All doubts had to be resolved against the party making the claim and in favor of the accused. In those days, falsity was not necessarily fraud — fraud was really fraud.

And, given the seriousness of the charge, the focus properly was directed to whether the accused had the requisite subjective intent to deceive the United States Patent and Trademark Office (USPTO), while knowingly making false statements of material fact.

Mere inadvertence, sloppiness, carelessness, ignorance, honest mistakes and misunderstandings, and negligent — even grossly negligent — falsity or omissions were excused because they could not satisfy the very significant and difficult burden of proving fraud to deceive the USPTO.

Then, for a relatively brief period of time, the fraud pendulum swung in the opposite direction — let’s call it the Medinol era — from 2003-2009. During that period, the Trademark Trial and Appeal Board (TTAB) of the USPTO, granted fraud-based trademark oppositions and cancellations at a record pace, even on summary judgment (sometimes even sua sponte, as was the case in Medinol), by employing a much easier-to-prove strict liability or negligence standard, requiring only that the accused “should have known” the material statement was false.

During this period, the focus emphasized the applicant’s duty of candor and the solemnity of sworn statements made to the USPTO. The TTAB adopted a far more black and white analysis of most statements made to the USPTO, with no tolerance or excuse for confusion regarding language barriers, unfamiliarity with U.S. trademark law, or even the pro se status of an applicant.  The “objective manifestation of intent,” replaced or at least colored the subjective intent to deceive the USPTO standard.

Then came Bose in 2009, and the pendulum swung back again: “Subjective intent to deceive, however difficult it may be to prove, is an indispensable element in the [fraud] analysis.” The Federal Circuit refrained from deciding whether reckless disregard for the truth will suffice, since it disagreed with the TTAB that the facts of the Bose case even satisfied the lower recklessness standard of proof.

For the past 5 years, those who closely follow trademark fraud case law might have concluded that no set of facts could meet this stringent standard, but then came Nationstar Mortgage, the first finding of trademark fraud by the TTAB since Bose. Time will tell whether the decision in Nationstar Mortgage encourages more trademark fraud challenges.

Hopefully the TTAB’s focus on “evidence that applicant did not have a good faith reasonable basis for believing that he was using [his] mark in commerce for all the services identified in the application” is not a signal that it believes another swing of the pendulum is appropriate. After all, the Federal Circuit in Bose made perfectly clear: “We do not need to resolve the issue of reasonableness as it is not part of the analysis”. “Unless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish a fraud claim.”

To the extent you’re interested in learning more about trademark fraud and best practices to avoid the pitfalls of trademark fraud challenges, please join me, the prolific Ted Davis (Kilpatrick & Townsend), and the talented Jennifer Lee Taylor (Morrison & Foerster), in a Strafford live webinar: “Fraud in Trademark Applications and Registrations: Proving or Defeating Allegations,” scheduled for tomorrow Tuesday, January 13, 1:00pm-2:30pm EST.

If you’re one of the first three to post a comment here, you can be my guest to attend for free.

Please join me for a live and informative 90 minute Strafford law webinar a week from tomorrow, on Wednesday August 13, at noon CST.

The topic to be covered is “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” and here is a link for more information.

For the discussion, I’m joined by two very capable TTAB practitioners: Linda McLeod of Kelly IP in Washington, D.C., and Jonathan Hudis of Oblon Spivak in Alexandria, Virginia.

We have written much about the right to register a trademark, here on DuetsBlog, and this is the very right determined by the USPTO’s TTAB in opposition and cancellation proceedings.

“Inter partes proceedings before the TTAB are proving to be worthwhile tools and a valuable part of a brand owner’s overall trademark enforcement and protection strategy. Despite the TTAB’s limited jurisdiction in only determining the right to register, as opposed to the right to use, and its inability to determine infringement, issue injunctive relief, or monetary awards, trademark oppositions and cancellation proceedings can be a less aggressive and cost effective venue for resolving existing and avoiding future trademark concerns between the parties.”

The TTAB venue is an important aspect of any coherent trademark enforcement program for a brand owner, the vast majority of disputes are resolved there without the need for federal district court litigation, so understanding how to navigate through these administrative proceedings is an important skill for any trademark type.

The Supreme Court will be shining a light soon on the importance of, and the impact of and circumstances under which, a TTAB decision on likelihood of confusion is to have on later federal district court trademark infringement litigation between the same parties.

The first three to post a comment may attend for free, without paying the typical registration fee — we hope you can join us!