Posts Tagged: "trademark law"

Congressman Steve Chabot (R-OH) and Congressman Henry Cuellar (D-TX) are co-sponsoring H.R. 6695, the Trademark Licensing Protection Act of 2018, which has been referred to the House Committee on the Judiciary. The bill is designed to clarify the law around trademark licensing for franchises in a way that reduces the liability of franchisees under current U.S. labor law.

A Couple of weeks ago, the Trump administration formally launched a “Section 301” investigation into the “theft of intellectual property” by China.  According to US Trade Representative Robert Lighthizer, the investigation will “look into Chinese laws, policies, and practices which may be harming American intellectual property rights…”  China is a large market for many American companies, not only for production, but also sales.  Chinese laws and policies with regard to trademarks may be confusing to many, but there are some key concepts to know and consider regarding trademarks in China.

The Supreme Court ruled that the anti-disparagement clause in the Lanham Act violates the Free Speech Clause in the First Amendment. Matal v. Tam. As a result, the United States Patent and Trademark Office may no longer deny registration of a federal trademark application on the ground of disparagement. Several states, including Massachusetts and New Hampshire, have anti-disparagement trademark provisions that will no longer be enforceable either… The statute does not define ‘scandalous’, but like the restriction against disparaging marks, the courts and the PTO focus on whether a mark is offensive.

After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam (formerly Lee v. Tam), the U.S. Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Justice Samuel A. Alito Jr. wrote unanimously for the eight justices in holding that Section 2(a)’s prohibition on disparaging registrations violates “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The Supreme Court heard oral argument on the cloudy Wednesday morning of January 18, 2017. Although the Justices posed tough questions and intricate hypotheticals to both sides, the tone of each Justice’s questions and their individual jurisprudences indicate an even 4-4 split, with Justices Breyer, Ginsberg, Kagan, and Sotomayor favoring the USPTO, and Justices Alito, Kennedy, Thomas, and Chief Justice Roberts favoring Tam. Of course, oral argument is often shaky, at best, when predicting the outcome of a case, especially one with such potential for a drastic overhaul of a body of law… Although no one can know for certain the outcome of Lee v. Tam, one consequence that appears very likely is that, if the Court does rule in favor Tam, it would strike the entirety of Section 2(a), not just the portion prohibiting disparaging marks that forms the central issue of the case. John C. Connell, counsel for Tam, went so far as to call that result “inevitable” in response to Justice Ginsberg’s question on the topic.

In a dilution claim, a trademark owner asserts that their famous mark is entitled to protection from use that causes harm to the mark’s reputation or distinctiveness. In effect, the trademark owner is saying that the mark is so famous that even use in connection with unrelated goods or services would result in an affiliation with its business and a resulting decrease in the value of the mark. For example, you are inviting a dilution claim if you begin selling McDonalds Cars or Chevy Hamburgers. But recent dismissals of trademark dilution claims at the motion to dismiss stage highlight that plaintiffs must be prepared to show early on that their mark is a “household name” before they can pursue their claims. These decisions also show that defendants are more often turning to this early path to attack an exaggerated claim to fame.

In the brief, the ABA takes no official opinion on whether the disparagement provisions of the Lanham Act are invalid in the face of constitutionally-protected free speech. The organization does want to correct what it sees as “certain principles of trademark law erroneously set forth by the court of appeals,” however. The ABA argues that Federal Circuit misapplied the basics of U.S. trademark law in confusing the separate concepts of mark validity and mark registrability. Specifically, the Federal Circuit’s decision seemed to indicate to the ABA that a determination of unregistrability for a mark on the principal register would also restrict the ability to use that mark in commerce.

Although the studio construction itself seems to be carrying on apace, Valhalla Studios has gotten itself into legal trouble over its chosen name. On October 19th, the studio was named as a defendant in a trademark infringement suit filed by Valhalla Motion Pictures, a California video production company, which is best known for developing and producing the hit television show The Walking Dead. The trademark infringement suit is filed in the U.S. District Court for the Northern District of Georgia (N.D. Ga.).

Trademarks differ from copyrights, which protect original artistic or literary works, and patents, which protect inventions. A trademark primarily protects names, logos or symbols that identify a particular creator of goods or provider of services. More specifically, a trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. In most instances the term “trademark” is simply used to refer to what the law calls either a trademark or a service mark, so do not be surprised if you see a service mark (an example would be Roto Rooter) simply referred to as a trademark by judges, lawyers and business people.

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), but the outcome of this case will affect the other types of marks excluded by Section 2(a), such as marks that may be viewed as immoral or scandalous. Indeed, in a footnote in its en banc decision the Federal Circuit “recognized…that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks….”

William J. Kelly and his television production company RevDigital had secured the trademark rights to “media malpractice.” U.S. Trademark Registration No. 5027942 was issued as a standard character mark to Kelly and it is listed on the Principal Register. It protects the use of the term on entertainment services such as the production and distribution of ongoing television programs in the field of politics, entertainment, media, pop culture, news, commentary, criticism and subjects of general human interest. It also protects the use of “media malpractice” in continuing programs which are delivered by radio, podcast, television, cable, satellite, Internet, mobile or electronic distribution.

When looking at damages awarded in trademark infringement cases filed since 2005 and terminating between 2009 and 2016, fashion brands have taken in the highest award totals. The top spot here belongs to Parisian fashion brand Chanel, which has been awarded nearly $1 billion dollars from 160 infringement cases resulting in awards out of the 330 cases filed by Chanel. That’s almost double the $523 million awarded to Burberry Limited but its sibling Burberry Limited UK was awarded $416.6 million and those totals were awarded over the course of a combined 12 infringement cases. In terms of damage totals, there’s another steep drop to Gucci of Florence, Italy, which was awarded $207.7 million over the course of 26 cases.

In anticipation of Supreme Court review of Tam, the Commissioner has issued an informal directive to trademark examiners that any application for a mark that is potentially violative of Section 2(a) should be “suspended” rather than refused on that basis until the Supreme Court takes up Tam and its companion cases. In addition, although the Tam decision was expressly limited to the “disparagement” provision in Section 2(a), the Commissioner’s directive apparently applies to all Section 2(a) bases for refusal (immoral, deceptive, scandalous, or disparaging). All non-Section 2(a) application issues will still be addressed prior to suspension.

Tam appealed to the Trademark Trial and Appeal Board (the “Board”), but the Board affirmed the Trademark Examiner’s refusal to register the mark. The Board found that although THE SLANTS has several meanings, the record demonstrated that it was “abundantly clear” that the likely meaning of the mark referred to people of Asian descent. Mr. Tam again appealed, this time to the Federal Circuit, arguing that § 2(a) is unconstitutional. The first time around, the Federal Circuit agreed with the Examiner and the Board. In a rare procedure, the Federal Circuit sua sponte ordered a rehearing en banc to review the constitutionality of § 2(a). Upon rehearing en banc, the Federal Circuit overturned McGinley in its 9-3 decision.