U.S. Trademark Trial and Appeal Board

In a case that could have far-reaching implications, the U.S Supreme Court  has ruled that an Asian-American rock band is entitled to a federal trademark registration of its name.

The band, The Slants, had originally had its trademark application refused by the Trademark Office because “the applied-for mark consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols” in violation of Trademark Act Section 2(a).  The Slants thereafter appealed the Trademark Office’s decision to the Federal Circuit Court of Appeals, which held in a 9-3 vote that the USPTO could not refuse registration of  “disparaging” marks under The Trademark Act since it violated the First Amendment.  The matter has now been finally decided by the U.S. Supreme Court.

Writing for the Court in an 8-0 decision, Judge Alito stated that contrary to the government’s contention, trademarks are private, not government speech:

This Court exercises great caution in extending its government-speech precedents, for if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.

The Trademark Trial and Appeal Board had previously acknowledged that its guidelines “for determining whether a mark is scandalous or disparaging are somewhat vague and the determination of whether a mark is scandalous or disparaging is necessarily a highly subjective one.” As reported by Nina Totenberg of NPR and various legal commentators, there now exists the possibility that other names deemed disparaging by the Trademark Office will now be registered.  This includes most notably, the ongoing dispute involving the name Washington Redskins.  And if as the Court states, that “speech may not be banned on the ground that it expresses ideas that offend,”it seems that this may open up a Pandora’s box into other marks that may be deemed to be “scandalous or immoral” under The Trademark Act as noted by Jess Collen in his Forbes article.

 In the trademark opposition case, Halo Trademarks Limited v. Halo 2 Cloud LLC,
Trademark imagethe Opposer opposed the intent to use application of Applicant’s mark HALO  for handbags, briefcases,  electric adapters and a wide variety of other business accessories on the ground of likelihood of confusion under Section 2(d) of the Trademark Act.  As the basis for its opposition, Opposer relied on its previously used HALO and HALO and Design marks for numerous business accessories in International Class 18, including certain goods applied for by Applicant.
To prevail on a likelihood of confusion claim brought under Trademark Act Section 2(d), a party must first prove that:
  • it owns “a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States …and not abandoned….” Trademark Act Section 2, 15 U.S.C. § 1052.

Here, the Opposer did not have a registration for its own HALO marks and therefore was required to establish its prior proprietary rights in and to the mark through testimony and documentary evidence showing actual use or use analogous to trademark use.   Accordingly, the Opposer sought to rely on its intent to use application for HALO to establish constructive use priority rights in and to the mark.  The filing date of Opposer’s intent-to-use applications was March 19, 2010, which preceded Applicant’s filing date of its HALO mark of May 5, 2014.  Neither party took testimony evidence and submitted notice of reliance of their respective applications and discovery requests and responses.

The  U.S. Trademark Trial and Appeal Board ruled that the Opposer was entitled to rely on the filing dates of its intent to use applications to establish constructive use of its HALO mark as of that date pursuant to Section 7(c) of the Trademark Act.  That being said, in order to prevail based on trademark priority, any judgment entered in favor of the Opposer would be contingent on the Opposer actually using its marks in commerce and registration issuing on its pending applications.  In addition to establishing priority of rights, the Opposer would still have to bear its burden under Section 2(d) that Applicant’s HALO mark was likely to be confused with the HALO marks of Opposer.
The Board concluded that the parties’ respective marks as examined in connection with the goods and respective trade channels, pointed towards the conclusion that they were confusingly similar in sight, sound, meaning, and commercial impression such that the Opposition should be granted and registration refused.   Therefore, the Board entered judgment, contingent on the issuance of the Opposer’s pending applications.

 

Not all trademarks are created equal.

In a decision of a rarely invoked dictum of trademark law, the U.S. Trademark Trial and Appeal Board ruled that the phrase I BELIEVE THAT WE WILL WIN failed to function as a trademark and thus was not entitled to registration.  The case, United States Soccer Federation, Inc. v. Aztec Shops, Ltd., provides a good example of how to take into account all components of an effective trademark opposition strategy.

In United States Soccer Federation, the applicant sought registration of the mark “I believe that we will win” for a wide-variety of sports and promotional apparel in International Class 25.   The Opposer, U.S. Soccer Federation, opposed the trademark application on the grounds that it failed to function as a trademark under Sections 1, 2 and 45 of the Trademark Act.

Section 45 of the Trademark Act defines a trademark as “any word, name,symbol, or device, or any combination thereof– (1) used by a person. . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”   Not every phrase used in connection with the promotion of goods or services necessarily is a trademark and it is incumbent to examine how the phrase is used.   Slogans or other terms that are merely considered to be informational in nature or express support, admiration, or affiliation are generally not registrable.  The more common a phrase, the less likely that public will perceive it to be emanating from a single source.  Here, the Board focused on how the phrase “I believe that we will win” is viewed by the relevant general public when used in the marketplace.   The evidence submitted by Opposer revealed that “I believe that we will win” has been chanted at sporting events for years predating the Opposer as well as other public events.  The fact that the Applicant had sold thousands of dollars worth of promotional merchandise bearing the mark could not negate the fact that consumers viewed the mark as famous and ubiquitous in and of itself, separate and apart from Applicant’s attempts to appropriate it as a single-source identifier for Applicant’s goods.  As a matter of competitive policy, the Board ruled that the Applicant did not have the right to appropriate the phrase so widely-used by numerous groups and individuals in an attempt to gain exclusive rights.

The ability of a phrase to function as a trademark is the first-step in determining whether the phrase is entitled to trademark protection.