Jessica Neer McDonald

Jessica Neer McDonald

Jessica earned her bachelor’s degree from the University of Florida, magna cum laude, and graduated from the University of Miami School of Law, magna cum laude.  While in law school, she was a Miami Scholar active in various leadership roles, including Managing Editor of the Inter-American Law Review, Board Member of the Charles C. Papy Moot Court Board, Board Member of the Public Interest Leadership Board, Secretary of the Society of Bar and Gavel, and Student Board Member of the Student Affairs Committee of the University of Miami Board of Trustees.  Jessica has served the Florida legal community through legislative employment in the Florida Senate and House of Representatives, as well as through internships with Judge Adalberto Jordan, Magistrate Judge Edwin Torres, and the United States Attorney’s Office for the Southern District of Florida.

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.

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.

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.

Leonard v. Stemtech Int'l, Inc, No. 15-3198 (3d Cir. 2016)

These pictures are worth more than just 1,000 words.  In August, the Third Circuit affirmed a jury’s return of a $1.6 million verdict for Andrew Leonard as a result of copyright infringement by Stemtech International.  The infringement stemmed from photographs that Leonard took of stem cells using electron microscopes in a highly technical type of photography.  The two photographs at issue were created in 1996, then registered with the U.S. Copyright Office in 2007, when he planned to bring the lawsuit.

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.

As discussed earlier on our blog, the Supreme Court granted certiorari in the case of Kimble v. Marvel Ent. Inc., a patent case deciding if its prior decision in Brulotte v. Thys Co., 379 U.S. 29 (1964) should be overruled.  This week, the Supreme Court upheld Brulotte in Kimble v. Marvel Ent. Inc., 576 U.S. ___ (2015) in a 6-3 decision involving Spider-man references, the classic doctrine of stare decisis, and a spirited dissent.