Posts Tagged: "Lanham Act"

In responding to the unprecedented COVID-19 challenges, companies around the world are rushing to capitalize on the current crisis by advertising the effectiveness of their products in containing the virus spread. Among these ads and messages, some may be useful in building the public’s confidence and marketing effective products to consumers, but some may mislead and deceive desperate consumers into buying treatments and products without any scientific support. As fear and anxiety proliferate during this pandemic, fraudulent or false advertisements also surge and explode. Petitioners raise false advertising claims and try to stop misleading advertisements by seeking injunctions. However, the injunction standard in the false advertising context is still the subject of debate.

The operators of a number of Lime Fresh Mexican Grill franchises have filed a lawsuit in the Northern District of California on behalf of a nationwide class of restaurants claiming that Google, LLC has engaged in deceptive practices and misappropriation of their goodwill and tradenames by directing consumers to Google-operated pages for online ordering and delivery. The complaint explains that Google changed the way it displays restaurant search results in 2019, confusing customers into ordering through Google-designed ordering buttons and pages, thereby robbing the restaurants of direct online orders. Instead, customers are fooled into ordering through delivery service providers Google has contracted with, which charge exorbitant fees to the restaurants, says the complaint.

In mid-October, a pair of lawsuits were filed in the Eastern District of Virginia by different groups of professional models seeking damages and injunctive relief under the Lanham Act from adult entertainment clubs for the unauthorized use of the models’ images in promotional materials. The filings come at about the same time that the U.S. Supreme Court is considering a petition for writ of certiorari from the U.S. Court of Appeals for the Second Circuit which asks the nation’s highest court whether the Second Circuit was wrong to create a public prominence requirement that prevents lesser known models from being able to assert their rights to their own likeness.

On August 24, the U.S. Court of Appeals for the Tenth Circuit affirmed in part, reversed in part and remanded a decision of the district court for the Western District of Oklahoma, holding that the Lanham Act applied to the defendants’ extraterritorial conduct…. The Tenth Circuit rejected Defendants’ first argument that the Lanham act cannot be applied extraterritorially. Citing Steele, the Tenth Circuit acknowledged that there is a general presumption against extraterritoriality, but that it may be applied abroad at least in some circumstances. Steele v. Bulova Watch Co., 344 U.S. 280, 282-285 (1952). In Steele, the Court reasoned that “the United States is not debarred . . . from governing the conduct of i[t]s own citizens upon the high seas or even in foreign countries when the rights of other nations or nationals are not infringed.” Id. at 285-86. Key to the Court’s decision was that the defendant’s “operations and effects were not confined within the territorial limits of a foreign nation,” but rather filtered through to the United States.

On July 29, several IP organizations and one global snack conglomerate filed amicus briefs at the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari to take up Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. At issue in the appeal is a ruling from the U.S. Court of Appeals for the Third Circuit regarding the definition of “functionality” in trademark law. In finding the stick-shaped, chocolate-covered Pocky cookies sold by Ezaki Glico to be “functional” because of the usefulness of their design, amici argue that the Third Circuit erred in its application of functionality doctrine in a way that threatens trade dress protections for any product when any part of the product’s design provides some usefulness.

You’ve probably heard that the U.S. Patent and Trademark Office (USPTO) has refused to register the current name of the Washington NFL franchise – “The Washington Football Team”. This is just the latest road block in the long running saga of the Team’s name. But actually, on closer look, it’s more like a small bump, and here is why. After years of ultimately successful litigation, on July 13, 2020, the Washington NFL franchise finally succumbed to what had become not only a public, but a very damaging corporate sponsor, outcry to change the Team’s name and logo. The Team publicly announced on that day that it would use the name “Washington Football Team” until a new name and logo were selected.

As the United States today celebrates the 245th anniversary of its independence, the intellectual property (IP) community will tomorrow be celebrating the 75th anniversary of the Lanham Act, which was signed into law by President Harry S. Truman on July 5, 1946. The Lanham Act was introduced by Fritz Garland Lanham, who was born in Weatherford, Texas in 1880. He was elected to Congress in 1919 and reelected 13 times before he retired in 1947, the year the Lanham Act was enacted. Lanham’s father was a lawyer and served as a Congressman as well as the 23rd governor of Texas.

The multi-talented Ice Cube famously said “It was a good day” in his hit song of the same name. But the hip-hop icon and his team probably weren’t having a good day when they saw a digital ad featuring an image of Ice Cube and an altered version one of his most famous lyrics—that he claims was posted without his knowledge or consent. On March 31, 2021, Ice Cube (also known as O’Shea Jackson, Sr.) filed a lawsuit against Robinhood Financial LLC, and Robinhood Markets, Inc.,  financial services providers, alleging Lanham Act violations as well as violations of  California law, including misappropriation of likeness and unfair competition. He is just the latest celebrity to seek to protect his/her rights of publicity (giving a person commercial control of their name, image and likeness) through legal action. Based on outcomes of well-known cases filed by basketball legend Michael Jordan, film/TV actress Katherine Heigl, and beauty and style mogul Kim Kardashian West, Ice Cube would appear to be on well-trod legal ground in his court battle with the trading app.

On March 17, the U.S. Court of Appeals for the Fourth Circuit reversed and remanded a decision from the U.S. District Court for the Western District of North Carolina in a Lanham Act statutory interpretation case. The case involved plaintiffs Snyder’s-Lance, Inc. and Princeton Vanguard, LLC (collectively “Princeton Vanguard”) and defendant Frito-Lay North America, Inc. (“Frito-Lay”). The district court held that a party to a trademark dispute who appeals a decision of the Trademark Trial and Appeal Board (TTAB) to the U.S. Court of Appeals for the Federal Circuit (CAFC), resulting in the vacatur, remand and issuance of a new decision by the TTAB, may not then seek judicial review of that second decision in federal district court. The Fourth Circuit disagreed and ultimately reversed and remanded the case back to the district court.

Most people associate the Consolidated Appropriations Act of 2020 with its COVID relief and stimulus measures, rather than trademarks. While these measures are of course the primary focus of the Act, its changes to the process of registering, maintaining, and enforcing trademarks are likewise important for companies that rely on their branding to achieve their business goals. The Trademark Modernization Act, which is one of many acts included in the Consolidated Appropriations Act, makes several significant changes to the Lanham Act (aka the Trademark Act) which many trademark holders may find beneficial.

It has long been a fundamental tenet of advertising law that comments made to investors, and particularly those made before the commercial launch of a product or service, do not constitute the kind of “advertising” that is regulated by the Federal Trade Commission (FTC) or the National Advertising Division of the Better Business Bureau (NAD), and are outside the reach of the Lanham Act. That is because advertising law regulates communications that propose a commercial transaction; in contrast, the securities laws govern communications to investors that are designed to promote investments. A recent decision from the NAD has put a big crack in that jurisdictional wall, and threatens to breach the dam that has long shielded comments made in investor presentations from potential liability for false advertising.

Sometimes a dog toy is just a dog toy. Maybe that’s how Sigmund Freud would have put it; certainly, that’s the message from our client, the International Trademark Association (INTA), to the U.S. Supreme Court. At issue is a Ninth Circuit decision that extends First Amendment protection to ordinary commercial goods like dog toys, at the expense of trademark rights. INTA, Jack Daniel’s competitors, alcohol beverage industry associations, and other trademark advocates this week asked SCOTUS to step in and reverse.

Under the Lanham Act, a trademark is any combination of words, names, symbols, or devices that are used to identify and distinguish goods or services and to indicate their source. Am. Express Co. v. Goetz, 515 F.3d 156, 159 (2nd Cir. 2008). Therefore, a trademark, in order to be deserving of protection as such, must be used in such a manner that it designates the source of the goods or services (even if that source is unknown). 15 U.S.C. § 1127. (Unless otherwise indicated, references to “trademarks” are intended to encompass “service marks” as well.)

The U.S. Court of Appeals for the Federal Circuit ruled yesterday that Australian Therapeutic Supplies Pty. Ltd. has “a real interest” in cancelling the registration for NAKED for condoms, owned by Naked TM, LLC. While the Trademark Trial and Appeal Board (TTAB) had found that Australian lacked standing to petition for cancellation because “it had contracted away its proprietary rights in its unregistered marks,” the Court held that “a petitioner seeking to cancel a trademark registration establishes an entitlement to bring a cancellation proceeding under 15 U.S.C. § 1064 by demonstrating a real interest in the cancellation proceeding and a reasonable belief of damage regardless of whether petitioner lacks a proprietary interest in an asserted unregistered mark.” Judge Wallach dissented from the majority opinion, which was authored by Judge Reyna.