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.

Here’s another example of how the naming of trademarks is often influenced by references to pop-culture.

In a recent U.S. trademark opposition decision, the Trademark Trial and Appeal Board ruled that the mark SUNNY HAZE for beer was confusingly similar to PURPLE HAZE, for inter alia, beer, so as to prevent registration.  In the case, Abita Brewing Company LLC v. Mother Earth Brewing, LLC, the Board was faced with considering whether the Sunny Haze mark of Applicant for “beer, and brew malt-based alcoholic beverage in the nature of beer” was confusingly similar to Opposer’s Purple Haze mark for “beer, ale, lager, and malt liquor.”  In its Notice of Opposition, the Opposer also relied on two of its other registrations for the Purple Haze mark for “shirts, caps, headwear, and beverageware.”

Continue Reading Purple Haze is a Strong Trademark for Beer but Apparently not for Hendrix

Sorry mom and dad — guess that all my expensive legal training was for naught.

Over the past several years, online technology has spurned a cottage industry of trademark filers, business consultants, and trademark lawyers who will gladly file a trademark application for the lowest dollar amount possible. Attention shoppers!  Who knew that being a trademark lawyer could be so easy that even a caveman can do it?  Note: the USPTO seems to think otherwise and has issued its own warning.

Welcome to the wonderful world of legal commodities where you always get more and pay less. Feel free to stock up on paper towels, detergent — and yes, trademark filings.

We are strong advocates of the use of technology to make trademark legal services more efficient and affordable.  However, when trademark solution providers either misrepresent the law or deliberately hide additional fees that most companies will incur, this causes damage to the relevant consuming public and reputable trademark attorneys everywhere. Buyer beware: trademark business services ain’t so simple or cheap as advertised.

Here are some examples of “too good to be true” trademark services claims:

  • “Register your trademark in minutes!” There was a time not too long ago that LegalZoom advertised this statement in their SEM campaigns. Problem was, this statement is a legal impossibility, starting with the fact that the U.S. Trademark Office currently has a 3-4 month backlog before they even review a trademark application!
  • One trademark law “consultant” (who is in effect practicing law without a license) authoritatively declares on his website that “a trademark opposition or cancellation, or petition to cancel means that a party wants you to stop using your brand, product, or service name, and can.”   This statement is legally false; the U.S. Trademark Trial and Appeal Board’s jurisdiction authority is limited to the registrability of trademarks only. It has no authority to stop someone from using a trademark in commerce, which is within the jurisdiction of federal and state courts. The author did get one thing right, however: “ignorance of the law is no excuse.”
  • The top filer in the United States for trademarks (who was brilliant in creating a robust trademark search database) unfortunately advertises in his SEM pay per-click search engine ads that companies can “trademark a name in just 5 minutes.”   Again, a legal impossibility — not to mention that many trademark applications get rejected and there is no guarantee that registration will always result.

What is the result of this big-box store approach to trademark advertising claims and representations?  The perception that registering and protecting valuable U.S. trademarks is as easy (and inexpensive) as shopping at your local dollar store. Trademark owners and companies that are serious about their brand name protection are well-advised to proceed with caution and to hire an experienced trademark attorney.

Target Brands, Inc., the well-known multichannel retailer, recently received affirmation from the U.S. Trademark Trial and Appeal Board that its “bullseye” design mark is a moniker that deserves to be respected.

In Target Brands, Inc. v. Artificer Life Corp., Target had opposed two trademark applications for registration of the mark ARTIFICER and Design for a wide variety of clothing and accessories items in International Class 25 and jewelery items in International Class 14. The applications for the trademark ARTIFICER included with the following design element:

artificer

As grounds for the notice of opposition, Target relied on fourteen of its trademark registrations for its bulls-eye design in conjunction with one or more words, such as “target,” “couture,” and “expect more, pay less” for numerous goods and services, including apparel and jewelry items.   Target’s cited registrations all included the following bullseye design mark* together with the respective word marks sought for protection:

large  *Target’s BULLSEYE mark

In evaluating the merits of Target’s position, the Board found Target’s bullseye mark to be inherently distinctive as used in connection with its apparel and jewelry items.  This reasoning was based on Target’s testimony that the mark has been used in various forms since at least 1962 in over 1,700 retail stores in the United States. In its likelihood of confusion analysis, the Board went on to rule in favor or Target on virtually all of the Dupont factors for analyzing whether a moving party has met its burden of proof.  Specifically, the Board found Target’s bullseye mark to be a famous mark based on several evidentiary factors, including a consumer survey, as well as advertising and sales figures that were all indicators in support of the mark being well-known to the relevant purchasing public. The Board also found in favor in Target on the factors of similarity of the goods, similarity of the trade channels, and similarity of the trademarks.  As it related to the similarity of the marks, the Board noted that the proper test is not a side-by-side comparison, but rather the overall commercial impression that both marks convey to potential purchasers.  In finding in favor of Target on this factor, the Board indicated that the bullseye was the dominant feature in both parties’ trademarks.

Trademark Attorney Practitioner note:  Target’s case was not flawless. It did not properly submit any of its trademark registrations into evidence, and had to to rely on its common law usage and related evidence to establish priority.   It also sought to bring up for the first time in its Trial Brief the issue of dilution by blurring, but was barred by the Board from doing so.  This once again serves as a reminder to trademark opposition attorneys that strict adherence to U.S. Trademark Trial and Appeal Board rules concerning Federal Rules of Evidence and other procedural requirements is mandatory when arguing trademark opposition cases before the Board.

We often receive inquiries from domestic and international companies on how to oppose a U.S. trademark application that is filed with the United States Patent and Trademark Office. There are several components to this question that require a brief explanation.

What is an Opposition?   When a party files a trademark application in the United States, the application is reviewed by an Examining Attorney in the U.S. Patent and Trademark Office for procedural and substantive requirements necessary to register a trademark.  As part of the review, the Examining attorney will search the records of the U.S. Patent and Trademark Office to determine if there are any confusingly similar preexisting registrations that may prevent the application from proceeding to registration.  Assuming that the application is approved for registration, the trademark is then published in the Official Gazette giving any third-party the opportunity to oppose the trademark application.

What are the Grounds for an Opposition?  In the United States, a party can base an opposition to a trademark application on many grounds, including likelihood of confusion with a preexisting trademark registration, mere descriptiveness of the trademark application, genericness, or in rare circumstances, bad-faith or fraud.

What is the Process of a Trademark Opposition?   Trademark oppositions are inter-partes proceedings that are brought before the United States Trademark Trial and Appeal Board (TTAB), which is the administrative tribunal of the U.S. Patent and Trademark Office.  Trademark Oppositions are a form of civil litigation in which the party bringing the trademark opposition is the opposer/plaintiff, and the party that has filed the trademark application is the applicant/defendant.  The opposition may consist of the following legal phases of litigation:

  • Notice of Opposition/Answer: A trademark opposition proceeding is instituted by the Opposer filing a Notice of Opposition.  The Applicant then has 40 days to answer, move, or otherwise plead to the allegations raised in the opposition complaint.
  • Discovery:  The TTAB issues a discovery and trial schedule, setting forth relevant dates and deadlines for the proceeding.  Included are the deadlines for each party to take discovery, which may include interrogatories, requests for production of documents, requests for admissions, and depositions.
  •  Trial: The trial phase of the Opposition will include the filing of a Notice of Reliance (which sets forth all documentary and/or testimonial evidence and affidavits that a party wishes to include in its case-in-chief), together with respective schedules for each party to submit its trial testimony and trial briefs.

How much does a Trademark Opposition cost? Each trademark opposition attorney and/or trademark law firm may set its own fees for representing a client in a case to oppose a trademark before the U.S. Trademark Trial and Appeal Board.  Although most law firms bill hourly, there are a few, including our own, that offer flat-fees for certain phases of the litigation in combination with hourly fees, which gives the client the ability to effectively manage its legal budget and to encourage, where possible, an early resolution to the case in the form of a mutual trademark settlement agreement.

Additional commentary on filing a U.S. trademark opposition may be found in my earlier postings on this subject.

U.S. Trademark application filings are steadily on the rise, according to 2013 year-end figures released by the U.S. Patent and Trademark Office.

Electric and scientific apparatus goods in International Class 9 continue to be the leading class of goods for which U.S. trademark protection is being sought in the Trademark Office, with Advertising and Business services in International Class 35 the most popular Class for service mark filings.

Highlights of top 2013 U.S. trademark application filings include the following:

Most Popular: U.S. Trademark Goods

  • Class 9 (electric/scientific): 47,625 trademark applications representing 10.9% of overall filings
  • Class 25 (clothing/apparel): 33,565 trademark applications representing 7.5% of overall filings
  • Class 16 (paper/printing): 14,957 trademark applications representing 3.7% of overall filings
  • Goods subtotal: 255,400 trademark applications representing 57.8% of overall annual trademark filings

Most Popular: U.S. Trademark Services

  • Class 35 (advertising/business): 43,885 trademark applications representing 10.6% of overall filings
  • Class 41 (education/entertainment): 40,226 trademark applications representing 9.5% of overall filings
  • Class 42 (computer/scientific/legal): 25,937 trademark applications representing 6.0% of overall filings
  • Services subtotal:  177,222 trademark applications representing 42% of overall annual trademark filings

The total number of U.S. trademark applications filed in 2013 saw an increase over 2012 figures, with the annual totals being 433,360 and 414,649 respectively.

The increase in U.S. trademark application filings corresponds with the increase in U.S. trademark opposition and cancellation filings over the same period, which were summarized in a recent posting found in this publication regarding 2013 U.S. Trademark Trial and Appeal Board activity.

As a Connecticut trademark attorney, I often advise clients on the trademark registration process and what legal rights a United States Trademark registration grants.  Since there are many misunderstandings about trademark law, it is worthwhile to briefly discuss some best practices on how to protect trademarks and brand names here:

1.   Begin with a Full Trademark Search

A trademark search generally consists of a search of the United States Patent and Trademark Office records, state trademark office records, and common law listings to determine the availability for registration and use of a proposed trademark in interstate commerce.  The trademark search looks for identical trademarks as well as trademarks that may be “confusingly similar” to the trademark that is being considered for adoption by the searching party. 

2.   Have a Trademark Lawyer Provide a Written Legal Opinion

Analyzing the results of a trademark search requires experience and a detailed knowledge of applicable trademark law.  After the full trademark search is conducted, a qualified trademark lawyer should provide a written opinion as to the availability for registration and use of the trademark on the proposed goods and services.  The opinion should list all of the trademark search results of interest that are relevant to a determination of clearing the desired trademark for registration and use. 

3.  Prepare and File a Trademark Application

Once the trademark lawyer provides a favorable trademark search opinion, he or she should promptly prepare and file a trademark application with the U.S. Patent and Trademark Office.  Trademark applications can either be filed based on (a) existing use in commerce or (b) an intent to use in commerce if the applicant has not yet commenced use of the trademark on its products or services.  Once the trademark application is filed, it is assigned to an examining attorney in the Trademark Office to review the application for procedural and substantive requirements, and to deterimine whether the application will be either accepted or initially refused due to a likelihood of confusion with previously registered trademarks or for other reasons.

By following the above approach to trademark clearance and protection, companies can avoid many of the major risks and pitfalls associated with this nuanced area of trademark law.

 

 



Let’s suppose that your business has filed a trademark application, and it has been approved for registration by the United States Patent and Trademark Office.  Does that mean that you now have been awarded a trademark registration?  No!

Each and every trademark application that gets approved for registration first must be published in the Official Gazette of the Trademark Office to permit any third-party that believes that your trademark is confusingly similar to their own to oppose your trademark application. This is what is known as a trademark opposition.

In selecting a trademark opposition lawyer, you should keep in mind the following tips:

  • Experience – has this attorney represented clients in other trademark opposition cases before the Trademark Trial and Appeal Board?
  • Fees – does the trademark opposition attorney represent clients on a flat-fee basis, rather than an hourly rate?  
  • Philosophy – is the attorney open to listening to your needs and preferred outcomes both in time and expense to your business?

Since trademark opposition cases before the Trademark Trial and Appeal Board (TTAB) fall within the exlusive jurisdiction of the United States Patent and Trademark Office, you may hire a trademark opposition lawyer in any state in the United States to represent your interests before the TTAB.  By doing a little homework and asking the right questions, you will better protect your trademark rights and interests.

 

 

 

Candace Nelson, a judge on the Food Network’s successful show, Cupcake Wars, is in her own battle after suing a Fairfield, Connecticut based business for trademark infringement.  Nelson’s company, Sprinkles Cupcakes, Inc., has filed a lawsuit in Connecticut District Court alleging that Pink Sprinkles LLC of Fairfield has committed trademark infringement based on Pink Sprinkles’s use of the “sprinkles” moniker for cupcakes and other baked goods.  Sprinkles Cupcakes is the owner of a United States trademark registration for the trademark SPRINKLES for bakery goods and retail store services featuring bakery goods.

Simple case?  Not really. Even though the plaintiff has a federal trademark registration, there are plenty of defenses available to our Connecticut neighbor, Pink Sprinkles.  I seem to recall a famous case before the Trademark Trial and Appeal Board rendering the mark “soft and chewy” for cookies merely descriptive of baked goods and thus not eligible for registration.  There are other cases that have held no matter how much money the owner of a merely descriptive trademark pumps into the brand, or no matter how successful the brand gets, it is in the end —well, merely descriptive.  It also appears that the Pink Sprinkles may have other defenses available to it that could level the playing field with its deep-pocketed adversary.

Let’s hope that the case comes to a swift resolution that keeps Pink Sprinkles in business and profitable!

 

 

A Connecticut disc jockey has sued MTV”s Jersey Shore for trademark infringement. The plaintiff, Paul Lis of Farmington, has used the name “DJ Paulie” for years as part of his professional identity.  He is also the owner of a United States trademark registration for “DJ Paulie”for entertainment services.  In the lawsuit, Mr. Lis claims that MTC’s commercial promotion and use of “DJ Pauly D” the nickname of one of the Jersey Shore’s cast members, constitutes trademark infringement and otherwise violates Mr. Lis’s trademark rights in and to the Paulie D name for entertainment services.

Here’s the lesson: trademarks are intellectual assets that have value and are worthy of protection and enforcement if properly registered and used. Finding the right Connecticut trademark lawyer to enforce your rights can make the difference.