Positive Developments – EUTM

Trademark owners should take note of two new types of trademark protection available in the European Community as of October 1, 2017.

1. Certification Marks – although it has always been possible to register certification marks in a few individual EU member states, it was previously not possible to register a certification mark, for certification services, with the EUIPO.  This will change as of October 1, 2017 when it will now it will be possible to register certification with the EUIPO, covering all EU member states.  European Union certification marks are defined as marks that are “capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.”

2. Marks no Longer Need Graphic Representation – it will now be possible to file for sound, hologram, motion, and multimedia marks; marks can now be represented in any form using generally available technologies.  Unfortunately, it is still not possible to file for tactile, smell, and taste marks in the EU.

This post was written by Monica Riva Talley of Sterne Kessler © 2017
For more legal analysis go to The National Law Review

Bring on the Bad Word Brands? What Supreme Court’s Decision in Matal v. Tam Means for Trademark Owners

The Supreme Court’s June 19, 2017 decision in the Matal v. Tam case has been burning-up the news wires all week. The decision struck down a 70-year-old ban on federally registering disparaging trademarks, finding that the disparagement clause of Section 2(a) of the Trademark Act violates the First Amendment principal against banning speech that expresses ideas that offend. The decision was joined by all 8 participating justices. The case was heralded as not just a win for the Asian-American dance-rock band The Slants, but also for the Washington Redskins whose trademark registrations were challenged based on the same disparagement clause.

The USPTO was quick to act, issuing Examination Guide No. 1-17 on June 26, providing a framework for how the PTO will examine applications following the Supreme Court’s decision. Opportunistic brand owners were also quick to act; World Trademark Review reports that at least 11 trademark applications for marks that could possibly be deemed disparaging were filed the day of the ruling.

In light of Tam, two other provisions of Section 2(a) — those that preclude registration of immoral and scandalous marks — also seem likely to fall, as both could be interpreted as banning speech likely to offend. In fact, the constitutionality of the scandalousness provision of 2(a) is currently pending before the Federal Circuit (In re Brunetti), and it seems likely the Fed. Cir. will move forward with Brunetti in the aftermath of Tam.

What does Tam mean to brand owners? It seems unlikely that the ability to now federally register offending marks will herald a seismic shift in branding strategies. The ability to use a trademark was never at issue in Tam, simply the ability to protect a mark by federal registration. Similarly, the public’s appetite for offensive brands will likely also not be enhanced by the new ability to obtain federal registration for such source indicia. Just as it is unlikely that the Court’s decision in Tam will persuade my son’s middle school principal that a T-shirt bearing the phrase HOMEWORK.SUCKS (INTA swag courtesy of the folks at dotSucks) is appropriate classroom attire. As always, the strength of a brand goes not to its novelty, but to its long-term ability to communicate the positive attributes of the associated products and services to consumers.

This post was written by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox P.L.L.C.

Widespread Use of GOOGLE Trademark as a Verb Does Not Render the Mark Generic

On May 16, 2017, the United States Court of Appeals for the Ninth Circuit held that widespread use of the word “google” as a verb for “searching the internet” – as opposed to use as an adjective for a brand of internet search engine – was insufficient to establish that GOOGLE ceased to function as a trademark. Elliott v. Google, Inc., No 15-15809, slip op. (9th Cir. May 16, 2017). As a result, the Ninth Circuit affirmed the district court’s granting of summary judgment in favor of defendant Google, Inc. on the plaintiffs’ Lanham Act claim seeking cancellation of the GOOGLE trademark on the ground that it had become generic.

Generic terms are words that are the commonly accepted identification of a type of goods or services. By way of example, “automobile” and “chair” are generic terms when used in connection with their dictionary meanings. Under federal law, generic terms are not protectable as trademarks. Trademarks can become generic over time if they are used as the name for a category of goods or services instead of as a brand name or source identifier. This is commonly known in trademark law as “genericide.” Examples of terms that have lost federal trademark protection due to genericide include “aspirin,” “escalator,” and “thermos,” each of which was once a protectable trademark. A registered trademark may be cancelled if it loses its source-identifying significance by becoming the generic name of a particular type of good or service. 15 U.S.C. §1064(3); Elliott, slip op. at 6.

The question before the Ninth Circuit was “whether the primary significance of the word ‘google’ to the relevant public is as a generic name for internet search engines or as a mark identifying the GOOGLE search engine in particular.” Elliott, slip op. at 12. The plaintiffs argued that the word “google” is primarily understood as “a generic term universally used to describe the act of internet searching.” In support, the plaintiffs presented consumer survey evidence showing that a majority of consumers used the term “google” as a verb for the act of searching the internet.

The Ninth Circuit rejected plaintiffs’ claim as a matter of law for two reasons. First, the court clarified that “a claim of genericide or genericness must be made with regard to a particular type of good or service.” Elliott, slip op. at 8 (emphasis added). Thus, surviving summary judgment would have required plaintiffs to present evidence that the term “google” is generic specifically with regard to internet search engines. Second, the court concluded that “verb use does not automatically constitute generic use,” thus rejecting plaintiffs’ grammatical argument that a word can only be protectable as a trademark when used as an adjective. Elliott, slip op. at 10. The court noted that the part of speech is not dispositive of the genericide issue, as it is well-established that “a speaker might use a trademark as a noun and still use the term in a source-identifying trademark sense.” Elliott, slip op. at 10-11. For example, a restaurant customer might order “a coke,” using the mark as a noun, while still having a particular source of cola beverages – the Coca-Cola Company – in mind. Id. at 11. As a result, plaintiffs’ consumer survey evidence that the public uses the term “google” as a verb was insufficient as a matter of law, because such evidence did not reveal consumers’ thoughts regarding use of the term with respect to internet search engines. Without more evidence, it was not possible to ascertain whether the survey respondents were using the verb “google” in an indiscriminate sense, with no particular internet search engine in mind; or in a discriminate sense, with the Google search engine in mind.

In light of Elliott, a party claiming that a mark has become generic would be wise to present consumer surveys in which respondents indicate whether they believe a term is a brand name or a common name for a particular good or service, regardless of grammatical function. Any consumer survey submitted should be conducted by qualified experts according to accepted principles. As an example, in Elliott, Google offered a survey in support of its position that the GOOGLE mark is not generic, which began by providing a brief overview of the difference between brand names and common names, then asked respondents to classify various words – such as “Coke,” “Jello,” “Amazon,” “Refrigerator,” “Browser,” and “Website” – as either brand names or common names. Id. at 16. Approximately 93% of respondents described “Google” as a brand name. Unlike plaintiffs’ survey, the Ninth Circuit viewed the results of Google’s survey as evidencing consumers’ primary understanding of the word “google” as it related to search engines.

This case contravenes the conventional guidance to always use trademarks as adjectives that modify a descriptive or generic term. Although the Elliott court acknowledged that using a trademark as an adjective makes it easier to prove the source-identifying function of the mark, this holding makes clear that widespread use of trademarks as nouns and verbs does not make them generic, absent significant evidence of indiscriminate consumer use of the mark to refer to any brand of a particular good or service.

This post was written byThomas A. Agnello and Luke W. DeMarte of Michael Best & Friedrich LLP.

U.S. Supreme Court Denies Redskins’ Petition to Join SLANTS Case

Slants Case Supreme courtU.S. Supreme Court today, without comment, refused the Redskins’ Petition to join the SLANTS case challenging the U.S. Trademark Office’s ban on “offensive” trademarks. Since both cases involved a provision in Section 2(a) of the Lanham Act, the football team hoped to have both cases considered concurrently by the high Court. However, this now means that the outcome of the SLANTS case will have a huge impact on the Redskins’ appeal still pending before the Fourth Circuit. Although the team’s case will not be heard with the SLANTS case, it will have the opportunity to file amicus briefs in the proceeding.

See our previous post about this here.

©1994-2016 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.

Supreme Court Set to Settle Dispute over Washington Redskins Trademark Registration

Football Washington Redskins TrademarkThere has been another twist in the story of the long battle by Native American interest groups to obtain revocation of the U.S. registration of the infamous Washington Redskins trademark. This is another step in the 20-year journey that began with the initial challenges to the team name.

On Thursday, September 29, 2016, the U.S. Supreme Court granted certiorari to review the Federal Court’s ruling in the case of Lee v Tam. That case involved a rock band called “The Slants”. The leader of the band, Simon Tam, appealed the denial by the U.S. Patent and Trademark Office of the band’s request for trademark registration of the band’s name. The US PTO had denied the band’s application on the grounds that it was offensive to Asian-Americans.

The Federal Circuit Court sided with the band and overturned the US PTO’s ruling. The Court stated that the government “cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.” This decision is summarized in more detail in our prior blog posts on that ruling.

The ruling by the Federal Circuit Court was particularly important to Native Americans and tribes because it was contrary to the prior ruling by the Fourth Circuit Court in a case challenging the Washington Redskins trademark. In that case, Pro-Football, Inc. v Amanda Blackhorse, et al, the Court had sided with the US PTO on the same issue. The Court found that the Redskins trademark was disparaging and invalidated its federal trademark registration.

That case is still pending. Thus, the ruling by the Supreme Court on the validity of the US PTO ruling in Lee v Tam will have important consequences (indeed, it will most likely be decisive) for the Pro-Football case.

The Supreme Court, as in almost all actions granting certiorari review, did not state any reasons for its action, but it is typical for the Supreme Court to accept cases involving issues of national impact when there has been a split in the lower courts. It is good to see that the high court appreciates the importance of this controversial matter, and we will all have to wait and see what the result will be.

ARTICLE BY Fred Schubkegel of Varnum LLP

© 2016 Varnum LLP

Warning: Don’t Use Trademarked Olympic Hashtags, Images

Olympic hashtagsWith all of the hype and public attention paid to the Olympics, you and your employees should be aware of the rules that govern the use of hashtags and images related to the Olympic games. The U.S. Olympic Committee (USOC) and the International Olympic Committee (IOC) have historically been very aggressive in policing any use of the Olympic trademarks, images, and hashtags. This year’s games are no exception.

In the last few weeks, the USOC has sent a number of letters to companies that sponsor athletes (who now happen to be Olympians) but have no sponsorship relationship with the USOC or the IOC warning them not to discuss the games on their corporate social media accounts. Companies have specifically been told that they cannot use the trademarked hashtags “#Rio2016” or “#TeamUSA” in any of their postings. The letters also warn companies not to reference Olympic results or to repost or share anything from the official Olympic social media accounts, this includes use of any Olympic photos, logos, or even congratulatory posts to Olympic athletes. While media companies are largely exempt, all other commercial entities should carefully monitor their social media accounts for any Olympic commentary.

Olympic trademarks are the subject of intense legal protections around the world and the IOC and USOC will pursue alleged offenders regardless of their size. In fact, previous enforcement actions have ranged from trademark suits against small restaurants with the word “Olympic” in their names to issuing cease and desist letters to companies that used trademark hashtags such as #Sochi2014 during past games. Guidelines about Olympic brand usage can be found by clicking here.

© Copyright 2016 Armstrong Teasdale LLP. All rights reserved

Sweeping Changes in EU Trademark Law and the Brexit Unknown

EU brexit referendum Brexit Street SignsBy now you have undoubtedly heard that in the Brexit Referendum held on June 23, 2016, the majority vote was in favor of United Kingdom leaving the European Union. Notwithstanding the outcome of the vote, it is presently unclear when, or even if, the UK government will give notification to the EU of its intention to leave the EU in accordance with Article 50 of the Lisbon Treaty. If notice is given, there will be a two-year period (which may be extended) to complete negotiations of the terms of UK’s exit from the EU.

Rights in existing EU Trade Marks (EUTM) and Registered Community Designs (RCD) remain unaffected until the UK exits the EU. Once the UK’s departure from the EU has been finalized, it is likely that existing EUTMs and RCDs will no longer automatically provide coverage in the UK. Although impact of the Brexit in that regard is unclear at present, it is anticipated that UK legislation will be implemented to ensure that such rights continue to have effect in the UK, for example, by converting existing EUTM rights to UK national rights enjoying the same priority/filing dates.

In terms of filing new applications during this transitional period, an EUTM remains a cost efficient option for brand owners wishing to obtain protection across the EU. Until we have further information as to how EUTMs and RCDs will be addressed after the UK exits the EU, brand owners seeking protection in the UK may wish to consider filing both an EUTM and a UK application.

EU TRADEMARK REFORM

Recently, there have been several other noteworthy changes in the EU pertinent to trademarks that also deserve consideration by trademark holders. On March 23, 2016, European Union Trademark Regulation No. 2015/2424 came into force bringing substantial changes to Community Trade Mark registrations and procedures. Some of the most relevant changes are as follows:

  • The names have changed. The Office for Harmonization in the Internal Market (OHIM) has changed its name to the European Union Intellectual Property Office (EUIPO), and the Community Trade Mark (CTM) was changed to the European Union Trade Mark (EUTM).

  • There is a change in the fee structure for trademark applications and renewals. The “three classes for the price of one” arrangement has been replaced by a “one-fee-per-class” system. Under the new system, the official fees for three classes are higher, while registration renewal fees have been slightly reduced.

  • Under the old system, all CTM applications filed prior to June 20, 2012 that used the complete Class heading as the specification of the goods and/or services were held to include all of the goods and services in the particular class. Under the new system, all registrations that use Class headings will be interpreted according to their literal meaning, irrespective of their filing date. Therefore, registrations filed prior to June 20, 2012 may not adequately cover the trademark holder’s goods and services.

  • The new regulation allows for a transitional period of six months, from March 23, 2016 to September 23, 2016, for owners of EU registrations which cover the entire Class heading, to amend the specification of goods and services. Therefore, owners of EU registrations that cover the Class heading should check if the Class heading covers everything they want to protect. If not, they should seek to amend their registration before September 23, 2016.

GENUINE USE OF A MARK IN THE EU

Under European Union Trademark Law, an EUTM registration may be revoked if “within a period of five years, following registration, the proprietor has not put the mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years.”

An EUTM mark has been found to be in “genuine use” within the meaning of current authority if it is used for the purpose of maintaining or creating market share within the European Community for the goods or services covered by the registration. This usage standard would be assessed by considering the characteristics of the market concerned, the nature of the goods or services, the territorial extent and the scale of use, as well as the frequency and regularity of use.

It has long been generally understood that use of a EUTM mark in any one EU member country would satisfy this use requirement. However, this has been called into question by a recent UK decision, The Sofa Workshop Ltd v. Sofaworks Ltd [2015] EWHC 1773 (IPEC), that found use of a mark in only the UK only was not sufficient to maintain the CTM registration. Instead, that court and other recent decisions have called into question whether use of a trademark in only one country of the EU is sufficient and have instead looked at other indicia of “use” such as percentage of market share over the entire EU.

These recent assessments of genuine use from courts located in the currently-constituted EU should be noted by brand owners and may provide additional rationale for brand owners seeking protection in the EU to consider filing for national rights (as opposed to EUTMs) where use of the mark may be limited.

© 2016 Neal, Gerber & Eisenberg LLP.