In the wake of the Supreme Court’s Matal v. Tam decision, which struck the disparagement clause from Section 2(a) of the U.S. Trademark Act on First Amendment grounds, applicants filed to register trademarks that previously would have been refused under the provision.

Section 2(a)’s scandalous/immoral bar is on the verge of a similar fate – the Court of Appeals for the Federal Circuit (CAFC) held the prohibition to be an unconstitutional restriction on free speech. See In re Brunetti, Case No. 2015-1109 (Fed. Cir. Dec. 15, 2017). The U.S. Patent & Trademark Office (USPTO) has not announced whether it will seek judicial review of the Brunetti decision or begin approving scandalous marks for publication.

On June 19, 2017, the day the Supreme Court issued its opinion in Tam, an entity brashly named “Snowflake Enterprises, LLC” filed an application to register the term NIGGA for various clothing items. Five days later, it filed to register this swastika symbol: for “Fabrics that may or may not have printed patterns and designs thereon for use in textile applications, namely, the manufacture of apparel, upholstery, signage, flags, banners and wallpaper.” Two more trademark applications for NIGGA followed, covering (1) beer and various non-alcoholic beverages and (2) wine, vodka and other spirits and alcoholic beverages.

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Dot Horsing Around

One of the most surprising (and amusing) developments with the expansion of new generic Top Level Domains (“new gTLDs”) has been the emergence of “.horse” as the online space to spoof big brands.

Here are several examples:

• McDonalds.horse
• Walmart.horse (no longer active – more on that below)
• TaylorSwift.horse
• FoxNews.horse
• HillaryClinton.horse

Tim Lince, a journalist for World Trademark Review, spotted a new one:

DonaldTrump.horse consists solely of an image with the head of a wild-haired Donald Trump superimposed onto the body of a shirtless, horseback riding Vladimir Putin:

— the caption reads “Giddy-up Trump!”

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You Can Go Home Again

What happens to a professional sports team’s trademark when a franchise leaves town, decides to rebrand and change its name, and the jilted city wants to bring home its former team by reviving the original trademark?

It happens.

Stay with me.

A recent New York Times article suggests one potential scenario.

In 2004, the EXPOS baseball club played their final season in Montreal and moved to Washington D.C. to become the NATIONALS.  The NY Times reports that over a decade later Major League Baseball may be coming back to Montreal:

“… during the past three years, and in particular the past several months, a series of events has led people in Montreal to embrace the idea that baseball might be coming back. It is a hope so strong that it is again possible to buy Expos merchandise in airport shops, and to dream of a day when a major league club will again call Montreal home.

“I don’t think it is a matter of if,” said Warren Cromartie, a former Expos outfielder who has taken a leading role in efforts to bring a team back to Montreal. “It is a matter of when.”

If a major league club does in fact return to Montreal, can the team be called the EXPOS and use the team’s logos, colors and history?

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The Parody Defense is Dead. Long Live The Parody Defense!

A recent law review article by Prof. William McGeveran points to a trend in judicial rulings toward upholding parody claims and defenses in trademark infringement suits.  The article states: “true trademark parodies now almost always win in court.”

It’s a whole different story at the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent & Trademark Office (USPTO), where parody claims and defenses never win.

Ever.

Based on my review of final decisions in the TTAB’s online database (which dates back to 1996) and cited cases, it appears the TTAB has never upheld a parody claim or defense.  If you’re aware of one, please let me know.

The discrepancy is largely a result of the TTAB’s limited jurisdiction — extending only to issues related to trademark registrability — whereas infringement suits address trademark use via civil action in court, where judges have the power to enjoin use and are more receptive to free speech concerns and fair use exceptions.

However, with the specter of the Supreme Court’s B&B v. Hargis opinion looming over TTAB registration rulings, which now may have preclusive effect on infringement actions, it’s time to re-evaluate how parodies are treated at the TTAB and whether parodists should even pursue registration.

As seen on the Manhattan Bridge Bike Path

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5 Things You Need to Fend Off A Trademark Bully*

People like lists.  On the internet, it’s a popular and often criticized form of journalism and blogging.  There’s even a word for it — “listicle” — a portmanteau of “list” and “article.”  Many articles and online resources report on, and try to define, “trademark bullying” but few offer practical tips on how to combat a trademark bully.  I wrote this listicle at the risk of oversimplifying what is often a complex, subjective and unpredictable process.

*Consider yourself warned.

Each trademark dispute must be evaluated based on its own set of facts and circumstances.  This isn’t meant to be a comprehensive list, just reference point generalizations that typically arise in the context of a U.S. Patent & Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) proceeding (if you want an opinion on a particular matter, consult an attorney).  The assumption here is that a weak and/or baseless trademark claim has been made, the complainant refuses to listen to reason and is pressing ahead with litigation.  Also, “to fend off” a trademark bully should not be equated with “defeating” a bully … the goal usually isn’t to slay Goliath but to punch back, show him he’s in for a fight and convince the bully it’s in its own best interest to back off.

Here’s what you need:

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Do Not File a Trademark Application For a Trending Rallying Cry

One of the side effects of social media has been a rise in various forms of online activism. We typically encounter it in the form of a phrase or slogan – often attached to a hashtag – used as a message to create awareness, share information and organize action around a particular cause or issue.

As I write this post, the viral rallying cry of the moment is “Je Suis Charlie” or “I am Charlie” as a message of “condolence, outrage and defiance” and “show of support for free expression” over the deadly attack on French satirical magazine Charlie Hebdo.

Photo Source: Olivier Ortelpa

Sadly, and inevitably it seems – as evidenced by recent rallying cries BOSTON STRONG, OCCUPY WALL STREET, HANDS UP DON’T SHOOT and I CAN’T BREATHE – someone will file a trademark application for JE SUIS CHARLIE in a misguided attempt to claim exclusive rights to the phrase.

I hope I’m wrong.

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New gTLDs and the URS (Case Brief: Porsche.Social)

In a prior post, I looked at how the U.S. Patent & Trademark Office (USPTO) evaluates trademarks that incorporate top-level domain names (TLDs). Domain name cybersquatting disputes present similar considerations. The recent <Porsche.social> Uniform Rapid Suspension (URS) decision – and its reversal on appeal – illustrates the issues arising in domain name proceedings involving new generic TLDs (“new gTLDs”), specifically with respect to fair use of a domain name for a fan website.

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TLDs and the USPTO (Case Brief: In re energy.me)

The number of top-level domains (TLDs) had been limited to 22 generic TLDs (gTLDs), e.g. “.com” “.net” and “.org”, and over 200 country code TLDs (ccTLDs), such as “.uk” “.cn” and “.de”.  In late 2013, ICAAN began rolling out batches of new gTLD extensions – offering more personalized (“.guru” “.lawyer”), subject matter specific (“.bike” “.art”) and city level (“.nyc” “.berlin”) options.  As of October 2014, ICAAN had delegated over 400 new gTLDs with an additional 1,300 new gTLDs potentially available in the future (including branded TLDs like “.Nike” and “.McDonalds”).  Here’s a full list of all active TLDs.

Domain names raise many interesting and unique trademark issues.  And like all marks, they are registrable on the Principal Register at the U.S. Patent & Trademark Office (USPTO) if they function as source identifiers.  See Trademark Manual of Examining Procedure (TMEP) Section 1209.03(m).  As new gTLDs are launched, domain name registrants are also seeking federal trademark protection for their domain name marks.  Trademarks incorporating these new TLD suffixes raise novel issues in evaluating the distinctiveness, meaning and registrability of marks.

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The D in D-Day Does Not Stand For Donut

This past Friday – June 6, 2014 – marked the 70^th Anniversary of World War II’s D-Day invasion.  Here’s a quote from the U.S. Army’s website:

“On June 6, 1944, more than 160,000 Allied troops landed along a 50-mile stretch of heavily-fortified French coastline, to fight Nazi Germany on the beaches of Normandy, France. Gen. Dwight D. Eisenhower called the operation a crusade in which, “we will accept nothing less than full victory.” More than 5,000 Ships and 13,000 aircraft supported the D-Day invasion, and by day’s end, the Allies gained a foot-hold in Continental Europe. The cost in lives on D-Day was high. More than 9,000 Allied Soldiers were killed or wounded, but their sacrifice allowed more than 100,000 Soldiers to begin the slow, hard slog across Europe, to defeat Adolf Hitler’s crack troops.”

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Pi is Irrational … So is this Trademark Dispute

Jez Kemp’s blog states that he makes “cool T-shirt designs.” It also details a peculiar trademark dispute surrounding the mathematical symbol “pi,” the online retailer Zazzle and a guy from Brooklyn. Check out Jez’s posts here, here and here. Here’s how the first one starts:

“I received an interesting email from Zazzle overnight.

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