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Trademark

Dubbed “Brexit,” the United Kingdom (“UK”) decided by national referendum in 2016 to separate from the European Union (“EU”).  However, the British Parliament has refused to approve an agreement for orderly withdrawal, so the UK is likely to leave the EU on March 30, 2019 without any terms of separation. Many brand owners have registered their marks through the EU Trade Mark (“EUTM”) system, previously known as the Community Trade Mark (“CTM”), with the expectation that protection extends to the UK. Under the current “guidance” issued by the UK, owners of EUTM registrations should receive an automatic “clone” registration in the UK, which will carry over equivalent protection and seniority. But, pending EUTM applications, will NOT be “cloned”; applicants should be offered a grace period within which to file UK applications claiming the same protection and seniority. Similar provisions are planned for International Registrations designating the EU. Despite the strong expectation of UK legislation in alignment with the guidance, trademark owners should consider immediate action to secure UK trademark rights prior to the official Brexit date. Note: Patent rights in the UK should be relatively unaffected by Brexit because the European Patent Office (“EPO”) is not a European Union institution.

Cartier's "LOVE" bracelets, designed in the 1960's, have acheived some reknown due to the locking mechanism that can only be opened with a screwdriver. While Cartier has had success in certain countries protecting the overall look of the bracelet itself, the Intellectual Property Office of Singapore has determined that Cartier can not excercise trademark rights over the word "LOVE." 

Last year, Cartier opposed a trademark application to register the slogan "LOVE GOLD" as a trademark in Singapore. While Cartier owns registrations for its stylized variation of "LOVE," which includes a horizontal line through the "O" to mimic the appearance of the screws adorning its bracelet, the Intellectual Property Office of Singapore has apparently determined that these rights do not extend to the word itself. The opinion states, "'[l]ove' is a word which is commonly used by jewelry traders and should not be monopolized by any trader....The word 'love,' however, should be free for traders to incorporate into their trademarks for jewelry." 

At issue in the case of Levi Strauss & Co. v. Yves Saint Laurent America, Inc., recently filed in the Northern District of California, is whether Levi’s trademark rights preclude jean manufacturers from stitching a label onto the vertical seam of the jean’s back pocket.  Levi’s claims that its “Tab Trademark” does in fact prohibit such copying (and seemingly regardless of where the tab is placed).  As shown in side-by-side comparison pictures displayed in the complaint, the Levi’s tab is sewn on the left side of the back-right jean pocket, whereas the Yves Saint Laurent (“YSL”) tab is stitched onto the right side of the back-right jean pocket.  See p. 5 at  https://www.scribd.com/document/393676941/Levi-Strauss-v-Yves-Saint-Laurent.  Nevertheless, and despite the generally large disparity in price points between Levi’s and YSL denim, Levi’s alleges that the YSL tab is likely to confuse consumers about the sources of YSL’s products and/or a relationship between YSL and Levi’s. 

In a constantly evolving market and with millions of dollars in play, Levi’s is no stranger to enforcing its intellectual property rights through litigation.  In fact, Levi’s has consistently bumped heads with jeans manufacturers in the past (approximately 100 lawsuits since 2001), alleging infringement either based on the display of a “tag” stitched to a back pocket, or copying Levi’s signature design (two intersecting arcs stitched into the back pockets).  As the denim giant attempts to prove that it owns a monopoly on tabs stitched onto jean back pockets, one of the ultimate questions will be whether the consuming public views the tag as a source identifier, such that it solely relates to Levi’s. 

The Comphy Co. ("Plaintiff"), a California corporation selling luxury bedding products, filed a complaint against Amazon.com, Inc. ("Defendant") in the Northern District of Illinois alleging trademark infringement, contributory trademark infringement, and false designation of origin under federal law.  The complaint also alleges violation of Illinois Uniform Deceptive Trade Practices Act and Consumer Fraud under Illinois law.

The claims primarily involve (1) the Plaintiff's "COMPHY," stylized "C," "COMPHY COMPANY," and "COMPHY SHEETS" trademarks and (2) Plaintiff's insistance that it has no interest and has expressly refused to sell its products on Defendant's website, amazon.com.  According to the complaint, the Defendant is making unauthorized and infringing use of Plaintiff's trademarks by using the trademarks to promote bedding and related products not made or authorized by the Plaintiff on Defendant's website.  In particular, the Plaintiff states that the Defendant is posting results for "inferior" third-party sheets when consumers search for terms including Plaintiff's trademarks on Defendant's website.  Moreover, the Defendant pays third-party search engines to direct consumers to Defendant's website when searching for "COMPHY" brand sheets.  Such actions are said to drive sales to competing products and are likely to cause and have caused actual confusion.  

The Plaintiff asks the court for an injunction as well as a variety of monetary damages, fees, and costs.

The case can be followed at The Comphy Co., v. Amazon.com, Inc., 18-cv-04584 (N.D. Ill.).

The film studio (STX) behind the raunchy comedy, “The Happytime Murders,” successfully fended off a trademark infringement suit by Sesame Workshop.  Specifically, Sesame Workshop contended that the R-rated movie depicting puppets joking about drugs, sex, and guns confused the public with “Sesame Street,” tarnished the kid-friendly show’s reputation, and exploited Sesame Street’s mark and related goodwill by implying an affiliation that did not otherwise exist.  United States District Judge Vernon Broderick disagreed, however, stating that the comedy’s slogan – “No sesame.  All street” – actually proved to distinguish the film from the children’s cartoon, and further noted that the “R” rating automatically served as a differentiating characteristic.  The Happytime Murders will begin showing in theatres in August of 2018.

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

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.

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. 

Wednesday, 19 October 2016 16:04

Houston Law Schools Fight over Trademark Rights in New Name

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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.

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