Trademark Archives - Page 3 of 7 - The National Law Forum

WIPO Launches UDRP for .CN and .中国 ccTLD

The World Intellectual Property Organization (WIPO) launched a Uniform Domain-Name Dispute-Resolution Policy (UDRP) for .CN and .中国 (China) country code Top-Level Domain (ccTLD), the first non-Chinese entity to do so. Previously, the China International Economic and Trade Arbitration Commission Online Dispute Solution Center (CIETAC ODRC) or the Hong Kong International Arbitration Center (HKIAC) were authorized by the China Internet Network Information Center (CNNIC) to handle domain name disputes for these domains. The .CN and .中国ccTLD is among the largest in the world with over 22 million registered domain names.

The WIPO UDRP for .CN and .中国 ccTLD is only applicable to .CN and .中国domain names that have been registered for less than three years. In contrast to the conventional UDRP, the Chinese UDRP applies to domain names that are identical or confusingly similar, not only to a mark, but to any “name” in which the complainant has civil rights or interests.

The complainant must prove that either registration or use of the disputed domain name is in bad faith, but not both as in the traditional UDRP. Examples of bath faith provided by WIPO include:

The purpose for registering or acquiring the domain name is to sell, rent or otherwise transfer the domain name registration to the complainant who is the owner of the name or mark or to a competitor of that complainant, and to obtain unjustified benefits;
The disputed domain name holder, on many occasions, registers domain Names in order to prevent owners of the names or marks from reflecting the names or the marks in corresponding domain names;
The disputed domain name holder has registered or acquired the domain name for the purpose of damaging the Complainant’s reputation, disrupting the Complainant’s normal business or creating confusion with the Complainant’s name or mark so as to mislead the public;
Other circumstances which may prove the bad faith.

The language of proceedings will be in Chinese unless otherwise agreed by the parties or determined by the Panel. More information is available at WIPO’s site.

ARTICLE BY Aaron Wininger of Schwegman, Lundberg & Woessner, P.A.

For more on internet IP concerns, see the National Law Review Intellectual Property law page.

Trade Mark Re-filing And Bad Faith – Go Directly To Jail. Do Not Pass Go, Do Not Collect $200

Hasbro Inc. (Hasbro), owner of the well-loved board game Monopoly, suffered a defeat on 22 July 2019, before the EUIPO Board of Appeal in relation to the MONOPOLY trade mark. The EU registration for the MONOPOLY trade mark was partially invalidated as it was found that Hasbro had acted in bad faith when filing the application as part of a ‘trade mark re-filing’ programme.

Background

Hasbro applied to register the trade mark MONOPOLY for goods and services in Classes 9, 16, 28 and 41 of the Nice Classification. The application was published on 9 August 2010 and the mark was registered on 25 March 2011. Kreativini Dogadaji d.o.o (KD) filed an application for invalidation of the trademark in 2015, arguing that it had been registered in bad faith on the basis that the mark was a repeat filing of three identical earlier trade mark registrations for MONOPOLY.

Acting in bad faith

The EUTM Regulation states that a trade mark shall be declared invalid where the applicant acted in bad faith at the time of filing the application for the trade mark. However, EU trade mark law does not provide a definitive clarification of bad faith and ‘bad faith’ is not defined in the EUTM Directive or Regulation. The most notable case from the CJEU dealing with bad faith is the Lindt Goldhase-case (C-529/07) which sets out three areas of consideration:

the applicant knows that a third party is using, in at least one member state, an identical/similar sign for an identical/similar product or service for which the registration is sought
the applicant’s intention of preventing that third party from using the sign, and
the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

Nonetheless, these factors are only examples and are not exhaustive, ‘bad faith’ cannot be restrained to a limited set of circumstances.

Findings of Board of Appeal

The Board of Appeal found that Hasbro had a dishonest intention at the time of filing the contested EUTM on the basis that Hasbro had previously filed and successfully registered MONOPOLY as an EUTM on three previous occasions. This dishonest intention was found because Hasbro had repeated filings in effect to circumvent the legal risk of removal due to non-use after five years. Although Hasbro claimed it had been adding more goods and services with each subsequent re-filing, the Board of Appeal did not deem it an acceptable excuse. The Board therefore invalidated the MONOPOLY mark for all goods and services identical or similar to those covered by the earlier trade marks.

The Key Takeaways

Hasbro did try to argue that their re-filing tactic was common practice in maintaining ownership of a trade mark, which it is, but the decision highlights that a tactics popularity does not equate to acceptability or legality. Brand owners should carefully consider the risk of invalidation or opposition on the basis of bad faith when filing future trade mark applications for existing brands.

ARTICLE BY Niall J. Lavery and Simon Casinader of K&L Gates.

For more trade mark cases, see the Intellectual Property law page on the National Law Review.

Federal Circuit Uphold TTAB Ruling on Specimens of Use

Part of the trademark registration process is submitting a specimen of the mark as used in commerce (“specimen of use”). Recently, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld the decision of a split Trademark Trial and Appeal Board (TTAB) panel that refused to register the trademark “CASALANA” for “knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories,” stating that Siny Corp. (the applicant) did not submit an acceptable specimen of use. See In Re: Siny Corp. (Fed. Cir. Case. No. 18-1077).

Siny Corp. had submitted a specimen where the mark was not shown on images of the goods or on images of the packaging. Also, the Siny Corp. website did not allow direct ordering. Instead, it listed a phone number and e-mail “for sales information.” Nonetheless, Siny Corp. maintained that its website qualified as a display of goods at their point-of-sale because its web-page specimen had the phrasing “for sales information” (i.e., it was a “display associated with the goods” that should be considered a specimen of use sufficient to purchase those goods).

During prosecution the examining attorney disagreed with the reasoning of Siny Corp., stating that the phrasing “for sales information” was not enough to enable customers to make the sale. Rather, it was just a way to obtain more information and lacked details to complete the order – such as cost, quantity, payment and shipping.

The TTAB panel, in reviewing the determination of the examining attorney, found that even though Siny Corp. customers would need the support of sales staff because their goods were industrial materials for use in manufacturing, nearly all details needed to complete a transaction were not present on the website. Thus, the website could not be considered a display for point-of-sale.

On appeal to the CAFC, Siny Corp. maintained that its website specimen established a “display associated with the goods” and argued that the Board used “overly rigid requirements” in determining that the specimen did not qualify as a display associated with the goods.

The CAFC agreed with Siny Corp. about the Board holding of In re Sones, 590 F.3d 1282 (Fed. Cir. 2009), cautioning against bright-line rules in this context. However, it disagreed with Siny Corp. that the Board in the instant case had used improperly “rigid” requirements stating, in fact, that the TTAB had prudently considered the website specimen’s contents and ruled the specimen does not cross the line from advertising to suitable display associated with the goods.

In hindsight, the website could have been modified a few ways that may have been acceptable: (1) providing pricing information on the site; (2) providing an e-commerce option to purchase; (3) putting the mark on the images of the goods or on images of the packaging rather than just the surrounding website text; and/or (4) changing the general “for sales information” statement to “call to purchase, pricing available on request.” Alternatively, documentary evidence of the sales process may have been acceptable, showing that purchasing consumers saw the website, called the number, and in fact bought the goods. The foregoing are all considerations to keep in mind when presented with issues regarding specimens which claim use in commerce.

Article by Stewart Mesher of K&L Gates.

For more on trademarking see the National Law Review Intellectual Property page.

USPTO Issues Examination Guide on Trademark Applications for Cannabis and Cannabis-Related Goods and Services

On May 2, 2019, the United States Patent and Trademark Office (“USPTO”) issued Examination Guide 1-19 (“Examination Guide”), which outlines the path to registration for trademark applications covering hemp-based goods and services. The issuance of the Examination Guide serves as a departure from the USPTO’s longstanding bar to the registration of cannabis-related marks, and signals the potential for further relaxation of the USPTO’s prohibition on federal registration of trademarks and service marks for cannabis and cannabis-related goods and services as state legalization of cannabis continues to crop up across the country.

To obtain federal registration for a mark, a mark’s use in commerce must be lawful under federal law. See generally Trademark Manual of Examining Procedure §907. The USPTO will not issue registrations for marks covering goods or services that violate federal law – even if such goods or services are legal at the state level. Despite the legalization of cannabis for medical use in 33 states and the legalization of cannabis for recreational use in 10 states, cannabis has been deemed illegal by the federal government under the Controlled Substances Act (“CSA”⁾¹. Cannabis-related marks have therefore been ineligible for federal trademark registration.

On December 20, 2018, the Agricultural Improvement Act of 2018, better known as the 2018 Farm Bill, was signed into law. In relevant part, the 2018 Farm Bill removed “hemp”²from the CSA’s definition of marijuana, thus removing “hemp” from the list of controlled substances under the CSA and creating an avenue for federal registration of marks covering some goods and services derived from hemp. Now, marks covering certain hemp-derived goods and services with less than 0.3% tetrahydrocannabinol (“THC”⁾³may be eligible for federal registration. However, the USPTO will continue to refuse registration when the identified goods or services in an application involve cannabis that meets the definition of marijuana and encompass activities still prohibited under the CSA.

To assist in the prosecution of trademark applications for these newly registerable goods and services, the USPTO outlined the requirements an application must meet before it may be eligible for registration for hemp-derived goods and related services. First, the USPTO advises that only applications covering hemp-derived goods and services with less than 0.3% THC are registerable. Second, an application’s identification of goods for all goods derived from hemp must explicitly state that the hemp-derived goods contain less than 0.3% THC. Third, only applications for marks covering hemp-based products and related services filed after December 20, 2018, are eligible for federal registration. Any applications filed prior to December 20, 2018, must be amended or refiled^.4. Specifically, applicants must request the USPTO amend their filing date to December 20, 2018, or withdraw their application and submit a new one. Notably, the USPTO will also examine applications to register service marks for compliance with the CSA and the 2018 Farm Bill; and, as such, an application’s identification of services must also specify that the involved cannabis contains less than 0.3% THC on a dry weight basis. Moreover, there are additional requirements for applications that include services involving the cultivation or production of hemp.

Restrictions still remain on the registrability of marks for hemp and hemp-derived goods. For example, applications to register marks covering hemp-derived foods, beverages, dietary supplements, or pet treats will still be refused as unlawful because the use of hemp in items for human or animal consumption has not yet been approved by the Food and Drug Administration (“FDA”)⁵.

While Examination Guide 1-19 signals the budding federal registrability of marks for certain hemp-derived goods and services, applicants should consider the stringent requirements placed on the same. Mark owners should think critically about whether their trademarks for cannabis and cannabis-related products and services are potentially eligible for federal protection, as we expect to see a significant influx of applications covering these types of offerings in the near future. Filing applications for eligible products and services now may help mark owners gain a foothold in what will likely be a competitive business field going forward.

¹ Under the Controlled Substances Act the drug class “Marihuana” (also referred to as “cannabis” or “marijuana”) is defined as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin.” 21 U.S.C. §802(16). Cannabidiol (“CBD”), a chemical constituent of the marijuana plant is included in the Controlled Substances Act’s definition of “Marihuana.” See id.

² Hemp is defined as “the plant Cannabis sativa L., and any other part of that plant, including the seeds thereof an all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol (“THC”) concentration of not more than 0.3% on a dry weight basis.” Agricultural Improvement Act §297A

3 THC is the main psychoactive ingredient of cannabis.

⁴ The USPTO takes the position that any applications filed before December 20, 2018 lacked a valid basis to support registration at the time of filing because the applied-for goods violated federal law. See Examination Guide 1-19: Examination of Marks for Cannabis and Cannabis Related Goods and Services after Enactment of the 2018 Farm Bill.

⁵The 2018 Farm Bill specifies that the FDA retains its authority to regulate goods containing cannabis and cannabis-derived compounds, and the FDA has taken the position that cannabis-infused items for human or animal consumption require the FDA’s approval before they may be sold to consumers. The FDA is conducting clinical investigations into the safety and efficacy of such products for human and animal consumption.

This post was written by Virginia Wolk Marino and Emily Kappers of Brinks Gilson & Lione

Read more USPTO & Trademark news on the National Law Review Intellectual Property page

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.

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

U.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.

ARTICLE BY Susan Neuberger Weller of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Supreme Court Set to Settle Dispute over Washington Redskins Trademark Registration

There 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

Warning: Don’t Use Trademarked Olympic Hashtags, Images

With 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.

ARTICLE BY Jennifer E. Hoekel & Donna Frazier Schmitt of Armstrong Teasdale

Tag: Trademark

WIPO Launches UDRP for .CN and .中国 ccTLD

Like this: