The trademark cases to watch in the US
Michael Loney previews today’s INTA sessions on US case law and scandalous marks
Registrants will be brought up to speed on the most important trademark cases in the United States in the ever-popular Annual Review of U.S. Federal Case Law and TTAB Developments session today, with Theodore Davis of Kilpatrick Townsend & Stockton and John Welch of Wolf Greenfield & Sacks.
Two cases sure to be discussed are the In re Tam and Pro Football, Inc., v. Blackhorse (Redskins) cases. The Tam case is now being appealed to the Supreme Court after the Federal Circuit sitting en banc in December last year ruled that the disparagement provision in section 2(a) of the Lanham Act is unconstitutional, and reversed and vacated the Trademark Trial and Appeal Board’s (TTAB) holding that THE SLANTS is an unregistrable mark. The Redskins case is pending before the Fourth Circuit but Pro-Football last month petitioned for certiorari at the Supreme Court. This was an unusually proactive move from Pro-Football.
“I was a little surprised,” says Welch. “Most trademark practitioners don’t even dream of getting to the Supreme Court. I had never heard of a petition for certiorari before judgment but I think it was a good idea because these two cases should be decided the same way. That was a pretty clever maneuver.”
Another case that Welch, who runs the TTABlog, will be discussing is the Board of Trustees of the University of Alabama et al v. Houndstooth Mafia Enterprises LLC et al case. “It’s a really crazy case,” he says. Last year, the TTAB refused to vacate its 2013 precedential decision that dismissed an opposition to registration of the mark HOUNDSTOOTH MAFIA for shirts and hats. This was despite a judge in the District Court for the Northern District of Alabama ordering that the Board’s decision be vacated. In February this year, Judge David Proctor granted the Board of Trustees of the University of Alabama’s motion to enforce the judgment, denied as untimely the USPTO’s motion to intervene, and issued an order requiring the TTAB to vacate its decision within 14 days.
“It’s an interesting case because it basically says if you lose at the TTAB you can buy your way out of it by giving the other side some money and getting a consent judgement that says the Board decision should be vacated,” says Welch.
One case that Davis will cover is the Belmora LLC v. Bayer Consumer Care (FLANAX) case. This complicated case is being closely watched. Bayer had used the FLANAX mark for naproxen sodium pills in Mexico but not in the United States because it sells the Aleve product there. Belmora registered the FLANAX mark in the United States and sold pills in packaging that was similar to that used by Bayer in Mexico.
The Fourth Circuit in March this year held that Bayer could bring false association and false advertising claims under the Lanham Act, as well as a petition before the TTAB to cancel Belmora’s U.S. registration of the FLANAX mark based on deceptive use. This is despite Bayer’s non-use of the mark in the United States. “That is a really interesting case because it is a chink in the wall of territoriality that is pretty shocking,” says Welch.
“It is a very interesting case. They said that Mexican-Americans might go over into Mexico and be confused about which is which, and Mexicans visiting the U.S. might be confused. It is kind of crazy. The problem with this case from the start has been Belmora is a really bad actor. Not only did he make false statements, his testimony was unbelievable.”
Hear about these and other cases in the CW01 Annual Review of U.S. Federal Case Law and TTAB Developments session taking place from 10:15 am to 11:30 am today.
The TTAB’s proposed rule changes
In April, the USPTO proposed to amend the Trademark Rules of Practice before the Trademark Trial and Appeal Board (TTAB). This would be the first update to TTAB rules since 2007. Comments on the proposed changes are due to the TTAB by June 3.
Some of the most important changes in the 29-page document include:
• A requirement that all filings in TTAB proceedings be made via ESTTA.
• A shift of responsibility to the TTAB to serve notices of opposition and petitions for cancellation.
• A requirement that service of papers between parties be effected by email.
• Consequent deletion of the five-days-for-mailing extended response period.
• Limitation of document requests and admission requests to 75 each.
• Requirement that all discovery be completed by the close of the discovery period.
• Option to submit testimony by declaration or affidavit, subject to cross-examination.
John Welch of Wolf Greenfield & Sacks says the changes will mean the TTAB will finally be all electronic and discovery may be tightened up a bit. But he notes some drawbacks. “Some of the items I don’t particularly like,” he says. “They are trying to tighten up discovery, shorten the period and get the cases going a little faster. But there is still very little control over what happens in discovery and one can throw a monkey wrench into the works pretty easily by refusing to answer or ducking discovery questions and forcing the other side to bring a motion to compel. It is all run by the parties and often runs into a brick wall one way or another to obfuscate or delay, and I don’t think these rules address that at all.”
A scandalous session
Another session taking place today will not be for the prudish: panelists will discuss the prohibitions in the United States, Europe, Latin America and Asia on marks that have sexual references, are considered scandalous, vulgar or immoral, or are disparaging.
Holger Gauss of Grunecker will provide the European perspective, John Sommer of Stussy will cover the United States, and Daniela Rojas of Hilborne Hawkin will give examples from Latin America.
Sommer will be providing updates on the Tam, In re: Brunetti and Blackhorse cases, all of which raise the question of whether Section 2(a) of the Lanham Act is a violation of the First Amendment’s free speech clause. Both the Tam and Blackhorse cases have seen petitions for certiorari filed to the Supreme Court, while the U.S. government has stated that it is considering filing a petition for certiorari in Brunetti.
Europe and Latin America pose other problems. “In Europe, the problem is the amount of languages. In Latin America, surprisingly, even though they all speak Spanish except Brazil, they have a lot of different meanings for the words,” says Rojas, who will be moderating the session.
Sometimes, innocuous words in most of Latin America will have a different meaning in slang in other countries. In addition, the level of conservatism among trademark offices varies across the region.
“There is a tendency for some countries in Latin America to be very progressive and not reject everything unless it is really clear,” says Rojas. “But Latin America is very catholic so, for example Bolivia denied to register Spirito Santo – holiday spirit – for beers because the catholic population would get offended.”
Tips for avoiding offense
The panelists will be providing some tips for negotiating this thorny issue.
“Sometimes it helps to make sure that if your brand might be considered by some to be vulgar, scandalous or sensitive that you try to limit the goods and services,” says Rojas. “The office will consider sometimes who is the targeted consumer, and whether they will be offended or not.”
Rojas adds that if you want to cover a lot of countries, it can be a good idea to go through the Madrid System because it doesn’t reject based on vulgarity or scandalousness.
“WIPO accepts everything then lets each country reject based on their national standards,” says Rojas. “So you might be able to get more registered than not in that case because you might have some countries saying no but some countries saying yes.”
In addition, for a good that you are going to launch in several countries, you should always make sure you investigate not only the language but also whether a word is slang in those countries. “Especially if you are considering a big regional marketing launch or selling, those are things you have to consider,” concludes Rojas.
CW21 Are you Getting Down and Dirty in a Correct Way? Protection of Immoral, Vulgar, Scandalous or Simply Culturally Sensitive Trademarks takes place from 11:45 am to 1.00 pm today