Trademark Registration

Credit: Local Solutions

I write today regarding a squirrelly thought: are the benefits of registering a hashtag trademark almost always outweighed by the consequences? In light of a recent Trademark Trial and Appeal Board (“TTAB”) ruling and the Trademark Manual of Examining Procedure’s (“TMEP”) provisions, hashtag marks offer much less protection than traditional character-based marks, such that the latter are preferable in most situations.

We’ve all seen hashtag words and phrases (without spaces between the words) in social media, most commonly on Twitter–but also now on other sites, such as Facebook and Instagram. By affixing a hash symbol (#) to a word or phrase in a post, users can garner attention, join in a movement, and possibly “go viral.” Popular recent trending examples are #MeToo and #TakeAKnee. And of course, who could forget:

#selfie

Hashtags serve filtering, identifying, and promoting functions that have commercial advertising value. Thus, it is no surprise that hundreds of individuals and companies have applied for trademarks on “hashtag marks,” seeking to control the use of certain hash-preceded words and phrases. In fact, at the time of writing, there are over 1,900 such registrations. Hashtags are hip, and everyone wants one–or so they think.

In 2016, the USPTO added TMEP § 1202.18, which explains when “hashtag marks” may be registered:

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. . . . Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media . . . .Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.

Recently, the TTAB applied this rule and other doctrines, holding that the addition of hashtags usually do nothing to make a mark distinctive. In the case, the TTAB rejected singer Will.I.Am’s application for a hashtag mark for #WILLPOWER because it was too similar to other registered marks containing”willpower,” and the hash symbol had no source-indicating distinctiveness, merely operating as a metadata tag for social media platforms.

The TTAB decision and TMEP provisions greatly narrow the registrability of hashtag marks, as well as their enforcement scope, such that it seems as if there is very little upside to applying for such a mark in most circumstances. An applicant does not need to register an otherwise-registrable mark as a hashtag mark in order to protect the mark if hashed. In such cases, a hashtag registration provides no more protection than a traditional character registration; the hash adds no additional layer of distinctiveness, just as it would not lend distinctiveness to an unregistrable word or phrase. Thus, an applicant should only apply for a hashtag mark in instances in which the non-hashed word or phrase lacks distinctiveness without the hash. If there is a case to be made for a traditional mark, the applicant should pursue that mark instead because traditional marks can be enforced more broadly.

If an applicant applies, however, only for a hashtag mark, then non-distinctiveness absent the hashtag will work to preclude the registrant from enforcing the mark in non-hashed situations. Even if the hashtag mark could be a mark on its own without the hash, the fact that the hashtag mark is either the first or only mark could result in a presumption against non-hashed distinctiveness–after all, why apply for a hashtag mark at all in such circumstances? It may also be more difficult to prove that non-hashed phrases, which in their non-hashed form are separated by spaces, infringe the hashtag mark. Imagine, for example, two competing phrases (the first example of which is a registered hashtag mark):

#lifeofabusyexecutive

Life of a Busy Executive

If the hash provides the distinctiveness for the first example (and perhaps in tandem with the lowercase and squished text), then presumably the second phrase without the hash (and with spaces) would not tread on that distinctiveness, working against a showing of consumer confusion and infringement. Of course, the holder of the hashtag mark could prevent identical use by competitors in commerce, but not similar non-hashed uses.

Emerging trademark law teaches that hashtag marks are extremely narrow–intentionally so–and as we’ve discussed before, hashtag marks are also greatly susceptible to fair use defenses. There appear to be few upsides to seeking such marks, at least without first trying for a traditional mark. So although trademark commentary as of late has focused on the trendiness of obtaining a hashtag mark, the more important question is whether it is worth doing so. In most cases, the answer will probably be “no.”

Tis’ the season for football, not just on the gridiron, but also at the U.S. Patent and Trademark Office. Shortly after the “Minneapolis Miracle,” as we reported this week, the Minnesota Vikings applied for registered marks on the phrase. And with the “big game” approaching, teams have titles on the mind–even those that aren’t in contention (ahem, Green Bay Packers).

Just one week ago, the Green Bay Packers initiated an opposition proceeding with the Trademark Trial and Appeal Board (the “TTAB”) against McClatchy U.S.A., a publishing company associated with the Fort Worth Star-Telegram. The dispute stems from the Star-Telegram‘s use of “Titletown, TX” as the title of a 20-short-video documentary series chronicling “the story of the 2016 Aledo [TX high school] Bearcats and their quest for a sixth state [football] title in eight years.”

Courtesy: PBS

The Packers have owned registered competing marks, such as “Titletown U.S.A.,” “Titletown,” and “Titletown Towel” since as early as 1993 (though, the Packers assert they have “made widespread and continuous use” of the marks since the 1960s). The Packers appear to have only begun policing the Titletown name at the TTAB since the start of this decade, however, filing five oppositions against related marks, such as “Title Town Talk Show” and “Titletown Brewing Co.”

The Titletown mark has acquired additional meaning and value to the Packers since the organization opened a development district by the same name outside Lambeau Field last year. The Packers invested almost $65M to complete the first phase of the district by this fall. The Titletown District includes a hotel, sports medicine clinic, ice skating rink, restaurant, and artificial tubing hill. And this summer, it got its own logo:

Courtesy: Twitter

The Packers allege that the “Titletown, TX” mark and use in the Texas video documentary series creates a likelihood of confusion and dilutes the “Titletown” and related marks. Why? Because the Star-Telegram uses the mark in connection with football. And that conflicts with the general public’s wide recognition of the mark “as being associated with a single source, and further recognizing the single source as [the Packers].” And the Packers allege that the Titletown name is distinctive with regard to entertainment, video, news, and commentary related to football such that it has acquired secondary meaning. Not only that, but the Packers consider the mark “famous and exclusively associated with [the Packers] in the mind of the consuming public.”

Setting aside the high likelihood that several fanbases and regions across the United States would likely dispute the Packers’ allegations as to fame and widespread recognition and acceptance, the primary questions before the TTAB are whether the use of the “Titletown, TX” mark in the short-video series is likely to cause confusion, mistake, and/or deception as to the source or origin of goods and services. And, further, whether use of the mark is likely to dilute the distinct quality of the Packers’ marks.

Generally, the strength of a mark depends on whether it is arbitrary or fanciful, suggestive, or descriptive. Because the Packers argue distinctiveness and secondary meaning, the organization appears to contend that the mark is descriptive (the lowest strength outside of generic), implying that the Packers are title winners. And historically, this is true; the Packers have been league champions a record 13 times (9 more than the nearest rival team, the Chicago Bears). And the Packers have won three consecutive NFL titles twice. Interestingly, though, the Aledo Bearcats have also won three consecutive state titles twice. This could set up a descriptive fair use defense for Star-Telegram.

When it comes to likelihood of confusion, the primary factors include: whether the use is related, the strength of the mark, proximity of the use, similarities of the marks, evidence of actual confusion, marketing channels employed, the degree of care likely to be exercised by consumers, the user’s intent in selecting the mark, and the likelihood of expansion of product/service lines. The Packers might have a case, but not a very strong one. Star-Telegram‘s use may be related to how the Packers use the Titletown mark in some contexts. But the Packers use the Titletown mark in multiple ways, only one of which relates to reporting about football. Indeed, the Packers are beginning to use the mark more in connection with the new Titletown District. Star-Telegram‘s use is in a very different market: Texas vs. primarily Wisconsin. The use relates to different football leagues: high school vs. the NFL. And the marketing channels are different: online newspaper vs. broadcasts. Ultimately, it seems unlikely that a typical consumer would confuse the two uses: think cheeseheads vs. longhorns.

When it comes to dilution, the primary inquiry is whether the use of a mark is likely to impair the mark’s distinctiveness or harm the reputation of the famous mark. The Packers allege that “[a] recent survey concluded the term TITLETOWN is known to virtually the entire population of consumers surveyed and a substantial majority of those who are aware of the term TITLETOWN, associate it specifically with the Green Bay Packers.” This may demonstrate distinctiveness. On the other hand, it is difficult to see how a short-video series on successful high school football teams in Texas would harm the Titletown mark’s distinctiveness as to the Packers and professional football or harm the reputation of the mark.

McClatchy has until February 26, 2017 to answer the Packers’s opposition. By then, there will be a new reigning NFL titleholder, much to the envy of the allegedly-undisputed Titletown team. But even more to the Packers’s envy, the new titletown (or place of the title game) will technically be Minneapolis.

It’s about that time of year, when you may be thinking about tax season. Tax day is still a few months away, but you may already have received your W-2, or 1099, (or other various assortments of mysterious numbers and letters), which will determine how much you’ll owe Uncle Sam (or perhaps a nice refund is on the way?). You might also be thinking about the possibility of an audit. Depending on your particular business or personal income situation, the chances of an audit may be quite small, but it’s hard not to think about.

What you’re probably not thinking about, however, is an audit by the U.S. Patent and Trademark Office (USPTO), regarding any trademark registrations that you own. It can happen. Luckily, a trademark registration audit is not nearly as onerous or time-consuming as a tax audit. For any trademark owners or practitioners out there, who may receive an audit this year, here’s a quick overview and some tips.

In March of last year, following a two-year pilot program, the USPTO implemented new rules, establishing a random audit program for trademark registrations. The audit program is targeted at the required maintenance filings (“Declarations of Use”) for any registrations with more than one good or service per class. The goal of the audit program is to randomly request additional verification, that the registered mark is actually being used in commerce with the identified goods or services (which is required to maintain a valid trademark registration). Specifically, each year about 10% of all trademark registrations with recent maintenance filings will be randomly selected for an audit.

The rationale for the program is that under current rules, registration maintenance filings (every 5 years for the first 10 years, then every 10 years after that), only require the registrant to submit proof of use (a “specimen”) for one of the identified goods or services in each class, rather than all identified goods or services. Therefore, this can lead to invalid (or partially invalid) registrations sitting on the register for years (referred to as “deadwood” registrations), that identify goods or services for which the mark is no longer being used in commerce. The goal of the audit program, therefore, is to “to assess and promote the accuracy and integrity of the register” (Trademark Rule 2.161(h), as amended) by cleaning up the deadwood.

When a registration is randomly selected for an audit, the USPTO will issue a “Post-Registration Office Action,” stating, “Registration Selected for Audit.”  This Office Action will require the registrant to submit additional specimens for two goods or services, which are randomly selected among all the goods and services identified in the registration. Linked here is a sample of such an audit Office Action–this should look the same for everyone, other than the registration data.

The electronic response form is straightforward, which requires the registrant to submit acceptable specimens of use according to the applicable specimen rules (see TMEP §§ 904, 1301.04), and a verified statement of use. However, if it turns out that the registrant was not using the mark in commerce for the selected goods/services, the next step is to request deletion of those goods or services from the registration.  If deletion is requested, the USPTO, unfortunately, will then expand the audit to require specimens for all remaining goods or services identified in the registration.

Here are a few tips for dealing with the new audit system, for both trademark owners and practitioners:

  • Carefully Confirm Use for All Goods and Services; Amend Registration as Needed: When it comes time for filing the Declaration of Use, confirm use in commerce of the registered mark for all identified goods and services (even though only one specimen is required), and if use has ceased for any goods and services, they should be deleted from the registration. That way, there won’t be any hiccups when it comes time for an audit.
  • Get Ready for Expansion of the Audit if Deletion Is Requested: If you must delete any of the goods or services selected in the audit for non-use, the audit will expand to all goods or services identified.  Therefore, if any deletion is required, you should comb through all identified goods/services and make any necessary deletions at the same time–don’t just delete those currently selected in the audit. Otherwise, after the audit expands, it will further delay the process if you need to request more deletions.
  • File a Timely Response to the Post-Registration Audit, or Entire Registration will be Cancelled: There is a six-month deadline for responding to the audit issued in the Post-Registration Office Action. One might think that without a timely response, only the audited goods/services would be deleted by the USPTO. But unfortunately, the consequence is harsher than that–if a response is not submitted by the six-month deadline, the entire registration will be cancelled.

What do you think about the new audit process? Is it worth it having the deadwood registrations cleaned up, which can be beneficial from both a prosecution and enforcement perspective? Or are the benefits outweighed by the additional administrative time and cost associated with gathering more specimens and responding to these Office Actions? Perhaps that answer might depend on whether you fall within the audited 10% this year–so, good luck to all!

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.

For those interested in learning more about the valuable benefits of federal trademark registration and how to successfully navigate the registration process at the USPTO, it’s time to mark your calendars for an upcoming educational opportunity in Minneapolis on Tuesday February 16, 2016.

Here is the official brochure for the event, here is an online link for information on how to register for this event, and a listing of the talented panel of speakers for the day.

Attendees of this live Minnesota Continuing Legal Education full day seminar will learn how to overcome a wide variety of grounds for refusal, benefit from strategies and valuable tips for handling ex parte appeals and requests for reconsideration, understand how TTAB proceedings can help a brand owner’s registration efforts, especially in light of the Supreme Court’s recent B&B Hardware decision, and receive valuable insights from former USPTO Examining Attorneys.

As an added bonus over the lunch hour, attendees will learn how to develop a reputation for thought leadership using various social media tools, as I moderate an engaging discussion with these social media mavens: Aaron Keller of Capsule, Shayla Stern of Fast Horse, Seth Leventhal of Minnesota Litigator, and last, but certainly not least, Ron Coleman of Likelihood of Confusion.

We’re counting the days, and we hope to see you there . . . .

— Jessica Gutierrez Alm, Attorney

TJ Root/Getty Images

 

In appealing the cancellation of six trademarks, the Washington Redskins filed their opening brief in the Fourth Circuit this week.  Cancellation of the team’s REDSKINS trademarks was upheld by a federal district court in July.  The marks were deemed “disparaging” under Section 2(a) of the Lanham Act, which denies trademark protection to marks that are scandalous or disparaging.

The team is now appealing the district court’s decision.  A primary argument presented in the team’s opening appeal brief is the First Amendment argument.  Essentially, the Washington team argues that cancellation of its trademarks under Section 2(a) violates free speech rights, because the marks are a form of expressive speech.  Of course even without a federal trademark registration, a mark may still be used.  The team can still call themselves the Redskins and sell Redskins merchandise, but cancellation of the marks means they will not enjoy the protections and benefits that accompany federal registration.  The team argues that by denying those protections and benefits of the federal trademark registration, the government is infringing on the team’s free speech rights.

The lower court held that Section 2(a) does not violate the First Amendment, in part, because federal registration of a trademark represents a form of government speech, rather than private speech.  That is, the government may freely choose which marks it wishes to include as part of its federal trademark registration program.

In an effort to thwart this argument and show that federal trademark registration is not a form of government speech, the Washington team made the bold choice to include in its brief a long list of—colorful—marks that have been successfully registered.  The list seems primarily compiled from the adult entertainment industry, and includes, among many, many others, TAKE YO PANTIES OFF clothing, SLUTSSEEKER dating services, and MILFSDOPORN.COM pornography.  A footnote in the brief actually states that “word limits” prevented the team from adding even more to their offending list.

While the purported purpose was to address whether trademark registration represents government speech, the sheer length of the list leaves the distinct impression of an underlying argument: Well if these dirty words can be trademarked, why can’t we just trademark our team name?

At first blush, it may seem like a fair argument.  As presented in the brief, the list of clearly offensive marks makes one wonder why these too were not cancelled or denied registration.

One reason may be that potentially scandalous and disparaging marks are viewed in the context of the goods or services and the market with which they will be associated.  Consider that the goods and market of the porn industry are very different than the goods and market of an NFL team.  MILFSDOPORN.COM may not be scandalous or disparaging in the context of providing adult entertainment.

Another reason may be that most of the unsavory marks listed in the team’s brief are unlikely “disparaging,” and would more likely fall into the “scandalous” category of Section 2(a).  Section 2(a) excludes from registration marks that are scandalous and marks that are disparaging.  The test for scandalous marks is different from that for disparaging marks.

Disparagement relates to a particular person or group.  Some marks that have been denied as disparaging are HEEB and SQUAW for clothing.  To determine whether a mark is disparaging, the test looks to whether a substantial composite of the group referenced by the potentially disparaging mark would find the mark disparaging in the context of the particular goods or services.

In contrast, potentially scandalous marks are viewed with respect to the broader public’s opinions.  Marks such as COCAINE for soft drinks have been denied registration as scandalous.  The test for determining whether a mark is scandalous looks to whether a substantial composite of the general public would find the mark scandalous in the context of the particular goods or services.  Each test looks to a group of people to determine whether something is offensive, but the scandalous test looks to a larger and broader group, the general public.

TAKE YO PANTIES OFF, SLUTSSEEKER, MILFSDOPORN.COM, and many others on the team’s list would seem to fall under the more general “scandalous” category, because the terms do not seem to target a particular person or group in the way that a mark like REDSKINS does.  (Surely MILFS are not an identifiable group.)  Given that the scandalous test looks to the broad opinions of general public, rather than of a particular group, it may be an easier task to register a potentially scandalous mark than a potentially disparaging mark.  Just ask The Slants.

-Wes Anderson, Attorney

Here’s another fascinating pending application for the file of non-traditional product configuration marks — this time, an application from Sony for the configuration of an all-in-one lens/camera:Sony Lens

The drawing may look like an ordinary camera lens – cylindrical, familiar, and generally seen affixed to a fancy DSLR. But the application identifies “Digital cameras” in Class 9, not camera lenses. And the mark description reads: “The mark consists of the three dimensional configuration of a digital camera.” That’s no mistake — by my estimation, this drawing doesn’t depict an everyday lens, but Sony’s QX100 camera, a so-called “lens-style” camera that integrates a Carl Zeiss lens and digital sensor into one compact package. It has no LCD screen, viewfinder, our readout of its own — the camera is operated exclusively via a smartphone. It’s certainly a novel step in the evolution of digital photography, where smartphones have skyrocketed in popularity and have all but replaced the entry-level point-and-shoot cameras of the 2000s.

qx100_lifestyle-001

As so many other companies do with new products in the technology sector, Sony has sought to protect the uniqueness of its product through intellectual property. But trademark protection can be especially tricky for product configurations — and here, Sony has sought to protect the entirety of its product by filing its application with the above drawing. The lack of any dotted lines indicates a claim for trademark protection for the entire product – the lens opening, the shutter release, the on/off switch, the zoom slider, and the focus ring are all claimed as part of the mark, at least according to the drawing.

The PTO subsequently issued an office action for the mark (and later another office action continuing many of the cited issues). Aside from informalities regarding the identified goods, it has all the bells and whistles you could ask for in a product configuration refusal, and sheds some additional light on pitfalls to avoid in filing configuration trademark applications:

  • Drawing. The PTO quickly cited the dearth of dotted lines in the above drawing and requested that Sony provide an amended drawing that “features functional matter dotted out, such as the lens opening, the shutter, the buttons, the charge port.” This in and of itself seems extremely problematic for purposes of this application – nearly every groove, circle, and crevice on the lens has a function. Once it’s all dotted out, that leaves…a cylinder?
  • Nondistinctive Product Design.  As with every product design trademark, it is required to show some modicum of acquired distinctiveness to obtain registration on the Principal Register. According to the examiner, “consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source.” Sony attempted to submit evidence in a response to support acquired distinctiveness under Section 2(f), consisting of advertising materials, sales figures, and a declaration. The PTO quickly deemed this evidence insufficient, stating that “applicant’s evidence shows nothing more than that the mark is the shape of the camera, which may have become a generic shape for cameras.” The examiner also sleuthed out a competing “lens-style” camera sold by Kodak to support its refusal.
  • Functionality / Request for Information. Finally, and perhaps most damningly, the examining attorney issued an advisory suggesting that the mark — or what’s left of it once an amended drawing is provided — may consist of unregistrable, functional matter (which we cover in spades on this blog). It’s only an advisory for now, because the office actions also contain a request for information. These requests are hardly benign – they mirror the Morton-Norwich factors for determining functionality. It’s akin to the police asking “Do you know how fast you were going?”

(1)       A written statement as to whether the applied-for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications. Applicant must also provide copies of the patent and/or patent application documentation.

(2)       Advertising, promotional, and/or explanatory materials concerning the applied-for configuration mark, particularly materials specifically related to the design feature(s) embodied in the applied-for mark.

(3)       A written explanation and any evidence as to whether there are alternative designs available for the feature(s) embodied in the applied-for mark, and whether such alternative designs are equally efficient and/or competitive. Applicant must also provide a written explanation and any documentation concerning similar designs used by competitors.

(4)       A written statement as to whether the product design or packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container. Applicant must also provide information regarding the method and/or cost of manufacture relating to applicant’s goods.

(5)       Any other evidence that applicant considers relevant to the registrability of the applied-for configuration mark.

(6)       A written explanation of what, specifically, applicant has applied to trademark.

Sony’s first office action response addressed only the Section 2(f) issue and amended the identification of goods. And, perhaps charitably, the examining attorney continued the other refusals as non-final, rather than heading straight for a final office action. I’d keep an eye on this one for potentially some novel arguments in Sony’s favor, but it appears to be a tough road ahead.

So what do you think? Does Sony have a pathway to registration, or has the public already been overexposed to generic, functional cylinder-style cameras?

[Apologies for that last pun.]

Remember a while back when many were humming to the tune “What Does the Fox Say“?

Today, I’m asking, what does the trademark registration say? Not, what does the trademark say — that is a different and more complicated question, depending on the specific mark, but at a minimum, answering that question involves the meaning and attributes of the underlying brand.

The trademark registration — as opposed to the trademark itself — is a piece of paper issued by the federal government with its literal and figurative signatures and fingerprints all over it.

There is no question that a trademark communicates information about an underlying brand, but the Certificate of Registration communicates something quite different — the piece of heavy stock paper with the words in fancy script “United States of America” and “United States Patent and Trademark Office,” across the top, and the golden Official Seal of the USPTO (including a reference to the Department of Commerce) located in the lower left hand corner of the Certificate of Registration, also appearing above the signature of the Director of the USPTO (who is also Under Secretary of Commerce for Intellectual Property), an employee of the federal government and principal advisor to the President of the United States — what this valuable piece of paper communicates is an official act of the federal government that it has examined and approved the trademark for federal registration and exclusive protection in United States commerce.

By way of example, in all its glory, remember this little gem from the archives:

DuetsBlogRegistration

Although the USPTO certainly got it right with our registration, there are times when the USPTO makes a mistake and is asked later to correct it. The United States District Court for the Eastern District of Virginia recently corrected the USPTO errors from decades ago in improperly issuing federal registrations for a racial slur, in violation of Section 2(a) of the Lanham Act. So, as we know from the Washington football NFL franchise’s continued fight to keep the R-Word, the USPTO hasn’t always gotten it right from the outset, and since we’re talking about important matters of public policy here, Congress determined long ago that there is no statute of limitations on getting it right, petitions to cancel on these public policy grounds can be brought “at any time.”

So, when the issuance of a trademark registration would violate public policy, on disparagement, deceptiveness, or other public policy grounds, under current law, the federal government (i.e., The United States Patent and Trademark Office, part of the United States Department of Commerce) is required to refuse registration under Section 2(a) of the Lanham Act. Issuing a Certificate of Registration is the federal government saying, the trademark in question, doesn’t violate any of these statutory bars. And, when the statutory bars are violated, the federal government must refuse registration on Section 2(a) grounds, yet the trademark applicant is free to continue using the trademark in commerce, the right to use is not negated.

As you will recall, some are working hard to have the disparagement bar on federal registration of trademarks found unconstitutional on First Amendment grounds, contending that revoking the government-issued trademark registrations chills their freedom of speech. Those arguments failed in the Eastern District of Virginia, so let’s all stay tuned for how the Court of Appeals for the Fourth Circuit handles them, as it reviews the Eastern District of Virginia decision, and let’s all stay tuned for when the same arguments are made in another case involving another racial slur involving Asian Americans, before the Court of Appeals for the Federal Circuit later this year.

In the end, because the federal government’s act of registration and issuance of a Certificate of Registration, communicates the federal government’s approval of the trademark as being suitable and appropriate for federal registration and protection, the trademark registrations in question involve no speech by the trademark owner, the valuable pieces of paper are purely and 100% governmental speech, taking them outside First Amendment scrutiny. I’m thinking that efforts to conflate the communicative value of a trademark and underlying brand (admittedly the trademark owner’s speech) with the trademark registration itself (the government’s speech about the trademark) will prove unsuccessful.

What do you think?

— Jessica Gutierrez Alm, Attorney

In the wake of our 49th Super Bowl (er, “The Big Game”), it seems the Seahawks are not only making headlines with their last minute calls, but also with their IP strategies.

https://www.duetsblog.com/files/2015/02/seattleseahawks.gif

Over the past couple of years, the Seahawks have filed for registration of several marks, including at least a dozen applications filed in 2014.  Some of the applications drawing attention lately include the Seahawks’ attempts to register the phrase GO HAWKS and the word BOOM, both in standard script form, for various goods and services.  Additional applications filed in 2014 include phrases such as WE ARE 12, THE 12s, and LEGION OF BOOM.

So far, the team’s attempts to register GO HAWKS brought challenges from the NHL (for the Chicago Blackhawks) and NBA (for the Atlanta Hawks).  The application is also drawing attention from the University of Iowa (the Hawkeyes).  But arguably, the broadest application recently filed by the Seahawks is for the number “12” for use on capes, jerseys, sweatshirts, and long-sleeved and short-sleeved shirts and t-shirts.

Seattle Seahawks’ 12th Man Flag

For anyone who, like myself, is an infrequent football fan at best, the number 12 signifies the fans.  That is, each team usually has eleven players on the field at a time.  “The 12th Man” recognizes fans’ role in supporting the team to victory.  But then, doesn’t every American football team have a 12th Man in the overzealous crowds of painted faces and nacho cheese?  Texas A&M doesn’t think so.

The University has held a registration for 12TH MAN since the 1990s.  In 2006, Texas A&M sued the Seahawks for using “12th Man” to describe Seahawks fans.  The suit ended in a license agreement, in which the Seahawks agreed to pay an annual licensing fee of $5,000 to use the phrase in limited circumstances. Under the license, the Seahawks are permitted to raise a flag at the start of each game and call it the “12th Man Flag.”  The flag can have the number 12 on it, but not the word “man.”  The ‘Hawks also can’t sell any merchandise featuring the phrase.

Batch No. 12 Bourbon

The Seahawks do hold a registered trademark for their blue and white 12th Man Flag, and are  apparently now working to further protect their use of the phrase in relation to their own team.  In addition to filing their own recent applications, the Seahawks have also formally challenged pending applications for 12 NATION, filed by former Seahawks kicker Norm Johnson and his son Jordan Johnson, and BATCH NO. 12, filed by a small Washington distillery in relation to a line of spirits.  Norm and Jordan Johnson abandoned their application after the Seahawks’ challenge, stating that they didn’t have the funds to pursue the fight.  The Washington distillery has different color combinations for its Batch No. 12 labels, one of which is an admittedly familiar blue and green.

The team even challenged an application for DISTRICT 12, filed by Lions Gate Films in connection with the Hunger Games franchise, but, perhaps due to public backlash, has since withdrawn and allowed the application to move forward.

The Seahawks also recently filed an application for the number “12” in a  stylized font similar to what appears on their jerseys.  New England Patriots quarterback Tom Brady may have something to say about that one.

Tom Brady: New England Patriots #12

While the Seahawks’ IP strategy may be somewhat aggressive, a large trademark portfolio is not unique to the team, nor is trademarking everyday terms and phrases.  For a couple of examples, the Raiders own JUST WIN BABY, and the Patriots own DO YOUR JOB.  Trademarks for standard form numbers for various goods and services are also not new.  (How about “31” in connection with retail ice cream services, or “5” for a certain Chanel perfume?)

Based on a USPTO online search, the Seahawks currently hold 51 active trademark registrations (including granted and filed applications).  Teams use their marks not only for licensing and merchandising profit, but also to instill the team’s brand in the minds of fans.  Perhaps one reason the Seahawks brand is so well recognized is due to their increased efforts to leverage their IP.  However, the team’s latest round of applications may be stretching the brand’s reach a bit too far.  Maybe it’s time the Seahawks take a page from the Patriots’ playbook, and deflate their strategy.

We sounded the alarm exactly six months ago about a trademark case of great importance to brand owners: . Earlier this week, the U.S. Supreme Court heard oral argument in the case, and here is a link to the transcript (hat tip to Draeke).

As you will recall, our concern in sounding the alarm is that the Supreme Court might follow the advice of the Solicitor General (SG) who essentially equates the right to register with the right to use a trademark, seemingly suggesting the right to use is dependent on the right to register:

“The SG’s amicus brief, as well-written as it is, fails to appreciate the very limited scope of TTAB jurisdiction, the full extent of its unique practices and procedures in deciding likelihood of confusion for purposes of registration, and unfortunately the influential SG takes the following misguided position (without respecting the TTAB’s own view of its limited jurisdiction, much less appreciating the negative impact that the threat of preclusion will have by necessarily escalating the stakes, intensity and expense of administrative Board proceedings going forward):

“When the Board concludes in an opposition proceeding that a likelihood of confusion does or does not exist with respect to particular usages, that determination precludes relitigation of the likelihood of confusion question in a subsequent infringement action between the same parties for the same usages.”

We liked INTA’s amicus brief far better, calling for a black and white test against preclusion:

“INTA’s amicus brief is the only one to score an A. INTA’s amicus brief did a very impressive job of communicating the clear difference between how likelihood of confusion is addressed at the TTAB in determining the right to register, as compared to how likelihood of confusion is addressed in federal courts across the country — with brand owners having far more at stake in the latter, including injunctive relief, damages, and attorneys fees.”

We’ve also said before:

“Baby trademark lawyers have been taught for decades that the right to register a trademark is separate and distinct from the right to use a trademark. Every day we clear marks for brand owners understanding the critical difference between these important rights. It is not uncommon for a brand owner to be refused registration of a trademark based on another’s prior registration for a similar mark, but that doesn’t necessarily mean the brand owner’s use of the mark is infringing, or that it should be enjoined, or that monetary awards are appropriate for the continued use of the mark.”

So, imagine my pleasant surprise in reading the Supreme Court transcript (because I couldn’t just walk down the street to hear the live oral argument like Erik Pelton) that Justice Ginsburg appeared receptive to our channeling — coming out of the gates hard against preclusion, within the first 75 words uttered by counsel for Petitioner B&B Hardware:

Mr. William Jay: “The Lanham Act contains only one concept of likelihood of confusion. That is why the two tribunals in this case decided the same issue, and that is why the issue of preclusion is appropriate. Whether a court is considering registration or infringement or both at the same time, the statutory test is the same, whether the resemblance of the marks as used on particular goods would give rise to a likelihood of confusion or mistake or deceit.”

Justice Ginsburg: “Mr. Jay, there are exceptions to preclusion even though you would see the identical issue, and one of them is when the stakes are higher in the second proceeding than in the first and . . . . it seems to me this is such a case, because it’s one thing to say that we won’t register your mark and another to say you can’t use the mark. . . . And one way of assuring expeditiousness is to confine the stakes to the matter immediately in controversy. . . . The matter of controversy is registration, and in the second proceeding, it’s infringement. . . . [Y]ou don’t want to make that [expeditious first] proceeding pull out all the stops because it’s going to be determinative of the infringement suit. . . . [I]f one aspect of the first proceeding is to assure expeditiousness, then confining the stakes to that issue of registration makes sense so that the parties will not be induced to dispute the administrative proceeding in anticipation of its effect on another proceeding.”

Bingo! And, here’s to hoping that Justice Ginsburg ends up writing the Court’s majority opinion.