This week the Eleventh Circuit ruled on service mark infringement claims brought by Savannah College of Art and Design ("SCAD") against Sportswear, Inc. for selling unlicensed apparel and other goods on its website. The district court in the Northern District of Georgia had found that though SCAD had registered marks in connection with education services, SCAD failed to establish its mark's rights extended to apparel. More specifically, in relying on precedent concerning unregistered marks, SCAD could not show common law priority because SCAD could not show prior use of the mark on apparel before Sportswear.

On appeal, Judge Adalberto Jordan published a decision reversing the district court's findings, relying on 1975 precedent Boston Prof'l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., to find that SCAD's registered service mark protection may extend to goods as well. While recognizing that infringement claims under § 1114(1)(a) are based on federally-registered marks, claims under § 1125(a) can be based on federally-registered or unregistered marks, and the oft-blurred lines between both claims, both claims nonetheless required SCAD to establish the following: (1) enforceable trademark rights in the mark (validity and scope); and (2) likelihood of confusion from the infringer's unauthorized use of its mark. In informing the first part of the analysis, the Court found it instructive to follow Boston Hockey based on SCAD's registered service marks. The precedent, which is not without criticism, "extends protection for federally-registered service marks to goods, and therefore beyond the area of registration listed in the certificate." The case was therefore remanded for further proceedings under the § 1114(1)(a) and § 1125(a) claims in light of Boston Hockey.

See the full opinion here: http://media.ca11.uscourts.gov/opinions/pub/files/201513830.pdf

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When applying for trademark/service mark registration with the U.S. Patent and Trademark Office (USPTO), an examining attorney reviews the application to determine whether it complies with applicable statutes and rules. If there are any substantive, technical, or procedural deficiencies, the examining attorney will likely issue an Office Action letter explaining any of these refusals.  One of these refusals can be based on the proposed mark failing to function as a trademark because the proposed mark merely communicates information about the goods/services, uses widely used commonplace, social, political, or religious messages, or directly quotes passages or citations from religious texts. Some examples include: “I DC” for clothing items; “ONCE A MARINE, ALWAYS A MARINE” for various clothing items; “BRAND NAMES FOR LESS” for retail store services; and “PROUDLY MADE IN THE USA” for electric shavers.  

The U.S. Patent and Trademark Office (USPTO) recently issued a guide for aiding in the determination of whether a proposed mark functions as mark.  The guide creates categories for types of matter that may be considered merely informational, discusses when an examining attorney must refuse registration or require a disclaimer, provides applicant response options, and illustrates case law examples. For example, under applicant response options, should the applicant receive this type of refusal, the applicant must show that the public perception of the proposed mark is that of a source indicator.  Evidence of the applicant's use as a mark or exclusive use in the relevant marketplace for the goods/services under the mark can be supportive towards overcoming this refusal.

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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.

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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.

Published in Trademark

The CTM (Community Trade Mark) registration, which provides protection across most of Europe, has become a staple of international trademark portfolios since introduction in 1996.  But, some big changes are coming for the 20th anniversary.  Most notably, the CTM name will be changed to the “European Union Trade Mark.”  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,” and the Community Trade Mark Courts will be called the “European Trade Mark Courts.”  Other technical changes will include new filing/renewal fee structures, stricter rules for listing goods and services, and some enhanced mechanisms for enforcement against infringers.  Final approval by the European Parliament is expected imminently, at which time most changes will become effective, but portions of the overhaul package will require adoption into the national laws of member countries.   The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.

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Are you ready for some football? In the midst of preparing for football season, the National Football Association ("NFL") continues its fight to overcome cancellations of the Washington Redskins' trademarks. The NFL is appealing a district court decision to the Fourth Circuit.

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Last March, the District Court for the Northern District of California entered a final judgment in the Apple v. Samsung saga, awarding Apple almost $930 Million in damages for Samsung’s infringement of Apple's trade dress, both registered and unregistered, and design and utility patents. After several appeals, the Federal Circuit announced that Apple’s trade dress is functional and remanded to the District Court for entry of final judgment on damages only pertaining to the various patent infringements.

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Wednesday, 28 January 2015 23:02

The number "12" Mark

The Seattle Seahawks, a National Football Team is scheduled to play the New England Patriots in this year’s much anticipated Super Bowl matchup. As many football fans might be aware, the Seahawks gained attention from everyone for winning last year’s Super Bowl, complimented by their stingy secondary defense. However, the Seahawks also gained attention from everyone in the media for another reason: dubbing their home fans as “the 12th man.”

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The ALS Association’s “ice bucket challenge” gained tremendous popularity via the social media.  Friends, family members, acquaintances and sometimes even strangers challenged each other on social media such as Facebook, by recording an act of drenching themselves with an ice-cold bucket of water, and thereby making a pledge to donate towards ALS research.  As such, the popularity helped the Association raised more than $94 million in less than a month towards finding a cure for ALS, colloquially known as Lou Gehrig’s disease.

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Wednesday, 27 August 2014 22:55

Champagne, Roquefort, Eau Rouge?

To most motorsport enthusiasts, Eau Rouge is evocative of speed, precision, and a certain intestinal fortitude required of those whose hobbies involve donning fire-proof suits. It is no wonder, then, that Infiniti would choose the moniker to adorn its latest sports concept, and furthermore, seek to register the term as a trademark.

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