Yesterday the Trademark Trial and Appeal Board (TTAB) issued a decision in Blackhorse v. Pro Football, Inc., which canceled a variety of U.S. federal trademarks that were issued to the Washington Redskins football team between 1967 and 1990. The trademarks in question consisted in whole or in part of the term REDSKINS for professional football-related services. The TTAB ruled that these trademarks were inappropriately granted on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute.
While this decision will be widely cheered by those who proclaim the virtues of political correctness, there is absolutely no doubt in my mind that from a legal standpoint this decision is clearly wrong.
From a purely legal standpoint there is absolutely no valid reason to have canceled the trademarks in question, but this is the second time the TTAB has canceled these same trademarks. Ultimately, the previous challenge was reversed as the result of laches because the challengers waited too long to bring the challenge. Laches was not an issue in this case, but previously federal courts also question the evidence, or lack thereof, relied upon the challenge the trademarks. See Redskins Can Keep Trademark.
Earlier today the United States Supreme Court issued another of the many intellectual property related decisions the Court took during the October 2013 term. In this case, POM Wonderful LLC v. The Coca-Cola Company, the Supreme Court reversed a decision from the Ninth Circuit that held that within the realm of labeling for food and beverages, a Lanham Act claim asserting that the label is deceptive and misleading is precluded by the Federal Food, Drug, and Cosmetic Act (FDCA). The Supreme Court ruled that a claim brought pursuant to the Lanham Act, which makes deceptive and misleading advertising actionable under 15 U.S.C. § 1125(a), is not precluded by the FDCA, which forbids the misbranding of food, including by means of false or misleading labeling.
This case arose relating to the belief of POM that claims made by the Coca-Cola Company were misleading with respect to a juice blend sold by Coca-Cola’s Minute Maid division. The juice sold by Coca-Cola prominently displays the words “pomegranate blueberry,” but in truth the product contains only .3% pomegranate juice and only .2% blueberry juice.
In a unanimous ruling delivered by Justice Kennedy (minus Justice Breyer who took no part in the decision) explained that there is no text within the statutes that would support the contention that the FDCA precludes Lanham Act claims. Indeed, the Supreme Court specifically found the FDCA and the Lanham Act to complement each other.
The United States Federal District Court for the District of Nevada has dismissed a trademark infringement lawsuit against a foreign Internet poker site in a ruling that signals a rather substantial win for Internet businesses at large. The decision narrows the types of contacts that would confer general jurisdiction against foreign companies. The case is Best Odds Corp. vs iBus Media Limited, docket number 2:13-cv-020080RCJ-VCF.
Nevada-based online poker news site Best Odds Corp. sued the Isle of Man-based iBus Media Holdings for infringement of its MacPoker ® trademark, claiming that the Nevada courts had general jurisdiction over iBus Media’s poker news sites. Best Odds pointed to the defendants’ media kit, which alleged a significant U.S. presence. The court disagreed that these promotional statements conferred general jurisdiction over iBus Media.
In a June 4, 2014, ruling Judge Robert C. Jones granted iBus Media Holdings’ motion for dismissal of Best Odds Corp.’s trademark infringement lawsuit. Judge Jones said the plaintiff failed to make a case that Nevada courts had general jurisdiction over the foreign-based iBus Media, citing the Supreme Court’s recent Daimler AG v. Bauman decision, which Jones said “clarified that the reach of general jurisdiction is narrower than had been supposed in lower courts for many years.”
Washington – The U.S. Commerce Department’s United States Patent and Trademark Office (USPTO) today issued a Notice of Proposed Rulemaking (NPRM) proposing to reduce fees for many new trademark applications and most renewals of registration. USPTO also proposes a new Trademark Electronic Application System Reduced Fee (TEAS RF) filing option in addition to reducing filing fees for both applications filed using the current TEAS Plus option and applications for renewal of a registration filed through TEAS.
“The proposed fee reductions advance the USPTO’s core mission of serving the public in the most efficient and cost-effective manner possible,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “Lower fees will lessen the burden for entrepreneurs to obtain the crucial trademark protection they need to grow their businesses, while increased electronic processing improves agency efficiency.”
As part of the Trademark Operation’s continuing series of roundtable discussions to gather stakeholder views on important issues, a roundtable discussion about USPTO’s practice regarding amendments to identifications of goods and services due to technology evolution will be held on Friday, April 11, from 2 – 3 pm. The session will be open to the public and webcast. The event will take place in the Madison Auditorium at the USPTO offices, located at 600 Dulany Street, Alexandria, Virginia 22314.
Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause upon application of the owner and payment of the prescribed fee, provided the amendment does not materially alter the character of the mark. 15 U.S.C. §1058(e). With respect to the identification of goods/services, an identification may be amended to restrict the identification or change it in ways that would not require republication of the mark. See 37 C.F.R. §2.173(e). However, no goods/services may be added to a registration by amendment. Moreover, under current USPTO practice, changed circumstances, such as new technology, will not render acceptable an amendment that is not otherwise permissible. TMEP §1609.03.
The oral argument schedule for the Supreme Court over the next few months is heavy on intellectual property cases.
The Court will hear oral argument as follows: on February 26, in two cases on granting (Octane Fitness) and reviewing (Highmark) attorneys’ fee awards; on March 31, in a case (Alice Corp.) on patent eligibility of system and computer-implemented method claims; on April 21, in a case (POM Wonderful) on claims under Section 43 of the Lanham Act challenging labels regulated by the Food and Drug Administration; on April 22, in a case (Aereo) on whether a provider of broadcast television programming over the Internet violates a copyright owner’s public performance right; on April 28, in a case (Nautilus) on the proper standard for finding indefiniteness invalidity for patents; and on April 30, in a case (Limelight) on joint liability for method claim infringement where all of the claimed steps are performed but not by a single entity.
The USPTO will perform maintenance on the Electronic System for Trademarks Trials and Appeals (ESTTA) and the Trademark Trial and Appeal Board Inquiry System (TTABVUE) beginning at 12:01 a.m. and ending at 6 a.m., Saturday, February 15. ESTTA, and TTABVUE will be unavailable during the maintenance period.
Additionally, the USPTO will perform system maintenance on the Trademark Electronic Application System International (TEASi) beginning at noon on Saturday, February 15 and ending at noon on Sunday, February 16. TEASi will be unavailable during the maintenance period.
Ten years ago, back in 2004, an interesting and somewhat unexpected story surfaced about Microsoft’s intellectual property portfolio. A man by the name of Rich Tanenbaum, who is the founder of Savvysoft, had been told by Microsoft to stop using the name TurboExcel for his own software. This in and of itself would not have been much of a story except for the fact that this news item exposed the almost incredible fact that Microsoft did not have a federally registered trademark in the United States on the name Excel.
Every company, no matter how large or small, has valuable intellectual property that can be protected. Frequently, however, many companies choose not to take the steps necessary to protect this intellectual property, which leaves the property vulnerable, weak or perhaps even non-existent in time. Generally, however, it is the so-called “Little Guy” that leaves the door open for the larger, IP sophisticated companies. This story demonstrated that even giant corporations can have intellectual property lapses. Apple has also had similarly famous lapses with respect to various “i” products, such as the iBook, which they had to acquire from a company that already had the rights to use that name commercially.
Is there anything one can do to stop competitors, large or small, from using your trade name even if you do not have a federally registered trademark? The answer is yes, although it is certainly far and away preferable to have a federally registered trademark.