On June 19, 2017, the Supreme Court issued a landmark opinion, holding that the First Amendment’s right to free speech extends to trademark protection of words and phrases that are purportedly offensive.
For over half a century, trademark law prohibited registration of marks that were prejudicial to or could otherwise be deemed disparaging to certain groups or people. Significantly, however, in Matal v. Tam, 137 S. Ct. 1744 (2017), an Asian-American band specifically chose the name “Slants,” believing “that by taking that slur as the name of their group, they [would] help to ‘reclaim’ the term and drain its denigrating force.” Id. at 1751. After the en banc Federal Circuit found that the disparagement clause under the Lanham Act was facially unconstitutional, the United States Patent and Trademark Office filed a petition for certiorari, which the Supreme Court granted in order to weigh in on the disparagement clause at issue, and whether the proposed trademark was official words endorsed by the government, or conversely, words of a private person.
In its unanimous decision, the high court answered this question by declaring that “[t]rademarks are private, not government speech…[and] [t]he public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Id. at 1760 (internal citation omitted). The Court also expressed concern with broadening the government speech doctrine, and in affirming the Federal Circuit’s judgment, held that that “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.” Id. at 1748.
Tam may very well have wide reaching effects. While the Supreme Court made clear that a word or phrase in a trademark registration will not constitute government speech, the aftermath of this decision could give rise to various potentially “offensive” or “disparaging” trademark applications, which may ultimately rest with the consumer in determining whether to accept or reject the mark in its use in commerce.
Because many issues can arise in applying for a trademark, Malloy and Malloy, P.L’s knowledgeable and experienced intellectual property attorneys are ready to advise and guide you along the way from an application through registration, and subsequent enforcement measures.
A federal judge in Texas has barred the newly named Houston College of Law from using its name. A U.S. District Court Judge sided with the University of Houston Law Center, granting their request for a temporary injunction in a trademark infringement suit filed against the newly renamed Houston College of Law.
The rival school, formerly known as South Texas College of Law, was sued for trademark infringement in June. The Plaintiff, University of Houston Law Center, claimed the name change and a switch to a similar red-and-white color scheme would confuse prospective students and future employers.
In his opinion, U.S. District Judge Keith Ellison, noted several instances of actual confusion, including a letter delivered to the wrong law school and an email from the Texas Board of Law Examiners sent to the wrong law school. "The appearance of the University of Houston Law Center and Houston College of Law marks are strikingly similar," Ellison wrote. "As an initial matter, two of the three words in defendant's mark appear in UH's mark ("Houston" and "Law"), which is a noteworthy fact in and of itself. Far more troubling, however, is the way in which defendant deploys its mark in the marketplace." Lawyers for the University of Houston call the ruling "a complete victory."
Last Thursday, the Supreme Court announced it will hear Lee v. Tam, an appeal from a Federal Circuit decision that held Section 2(a) of the Lanham Act violates the First Amendment. The case involves a band that was denied registration for the mark “THE SLANTS” under Section 2(a) because the name may disparage individuals of Asian ancestry. This case may also effectively resolve the ongoing dispute involving the Washington Redskins trademarks.
The justices will hear arguments in Lee v. Tam early next year.
It is axiomatic that descriptive trademarks cannot be registered without a sufficient showing of acquired distinctivess. However, it has long been possible to register a stylized form of a descriptive trademark, if that stylization imparts a separate commercial impression apart from the descriptive word. For example, descriptive marks merely presented in a common or recognizable typeface will likely be rejected. However, the TTAB recently allowed a registration for the word "jiujiteiro" presented in a cursive, handwritten style of typeface. The TTAB found that the handwritten style of typeface imparted sufficient distinctiveness to create a separate commercial impression, apart from the word itsef. Of course, such findings will continue to be handled on a case-by-case basis, but this decision serves to clarify the threshold for the amount of stylization required for a finding of distinctiveness.
The U.S. Olympics Committee has reportedly threatened legal action over the use of its trademarks as hasthags, such as #Rio2016 or #TeamUSA, by corporations that are not sponsors of the Olympics. Ostensibly, such action helps to clear the way for paid sponsors to be highlighted when searching social media posts by hashtag. Some folks, however, might feel that this has a chilling effect on free spech. A Minnesota cleaning company has filed a declaratory action in the U.S. District Court for the District of Minnesota seeking to have its right to use such hashtags clarified. The company also requested a speedy hearing on the matter, given that the games are scheduled to end in little more than two weeks.
If you have not registered your trademark in Canada, now is the time. Our northern neighbor will soon implement a massive overhaul to its Trade-marks Act, pursuant to 2014 legislation that has been on hold pending the adoption of corresponding regulations. Among other things, use of a trademark in Canada (or anywhere in the world, for that matter) will no longer be a prerequisite to ownership and enforcement of a Canadian trademark registration. The race to the Canadian Intellectual Property Office (CIPO) will be open to competitors, squatters, and trolls whose intent may be to re-sell trademark rights at a profit, interfere with a legitimate trademark owner’s ability to use a trademark in Canada, and possibly even demand a ransom at the border for importation of genuine goods. Filing a Canadian trademark application now, even if only defensively for future market expansion, should be given serious and immediate consideration.
Swedish furniture company IKEA has long maintained a portfolio of trademark registrations in Indonesia since at least as early as 2005. However, IKEA did not open its first store in the country until 2014. An applicant is not required to show use of the mark in Indonesia as a requirement for registration (in direct contrast to the United States requirements). However, the registration may be vulnerable to cancellation if the owner fails to make use of the mark for a three-year period after registration.
As a follow-up to a previous blog entry, it’s finally official -- reform legislation in the European Community (“EU”) will take effect on March 23, 2016 and bring major changes to the CTM (“Community Trade Mark”) registration system. Over the past 20 years, the CTM has become a staple of international trademark portfolios as a cost-effective way to achieve protection in 28 member countries in a single package. Among the most notable changes, the CTM name will be changed to the “European Union Trade Mark,” or “EUTM.” Also, the registrar’s office in Alicante, Spain, now known as OHIM (“Office of Harmonization in the International Market”), will be re-named as the “European Union Intellectual Property Office,” or “EUIPO.” In addition to minor, technical changes, the overhaul will increase filing fees for multiple-class applications, replacing the existing structure of up-to 3 classes for the initial filing fee. Of note, any application filed before March 23rd will still benefit from the 3-for-1 filing fee, so clients are encouraged to consider immediate filing to reduce costs. Other changes to the law will impose stricter rules for specific listings of goods and services, which will affect existing registrations and upcoming renewals, and there also will be enhanced enforcement provisions available to registrants, especially against counterfeit and gray market goods. The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.
The Federal Circuit has ruled that Section 2(a) of the Lanham Act, which allows the U.S. Patent and Trademark Office to deny or cancel a trademark if it disparages persons, institutions, beliefs, or national symbols, violates the First Amendment. The ruling vacated the U.S. Patent and Trademark Office’s refusal to grant a trademark registration to an Asian-American band seeking to register the mark “The Slants” on the grounds that the mark is offensive to Asian-Americans.
In-N-Out, the popular California based fast food chain, has sued food delivery startup DoorDash for trademark infringement and unfair competition.
In the Complaint, In-N-Out claims that Defendant, DoorDash's use of "Plaintiff's famous trademarks implies that Defendant not only delivers In-N-Out products to its customers, but that the quality and services offered by Defendant is the same as if consumers had made purchases directly from Plaintiff. Upon information and belief, the quality of services offered by Defendant does not at all comport with the standards that consumers expect from Plaintiff's goods and services. Further, Plaintiff has no control over the time it takes Defendant to deliver Plaintiff's goods to consumers, or over the temperature at which the goods are kept during delivery, nor over the food handling and safety practices of Defendant's delivery drivers. While Plaintiff adheres to the Food Code, on information and belief, Defendant does not adhere to such regulations, including with regard to compliance with required food safety and handling practices."