There was enough trademark fun for everyone in 2015.
1. Rallying cries still get (mostly) no love from the Patent and Trademark Office.
This year, we saw continued attempts to federally trademark trending phrases that have fallen into the national lexicon such as "Je suis Charlie, "Cecil the Lion" and "Black Lives Matter." Those attempts mostly went the way of previous attempts at registering rallying cries such as "Boston Strong" and "Occupy Wall Street.", and were refused by the Patent and Trademark Office (USPTO) because the applied-for informational slogans did not function as trademarks to identify and distinguish products or services.
These types of trademark filings are not often productive uses of company resources because they rarely meet the requirements for federal registration, applicants do not have the capacity to produce the applied-for products, and/or any perceived value in attempting to federally register these types of phrases decreases as time goes by and the story dies down. Even if an applicant is successful at federally registered a trending phrase, enforcement is often problematic given the widespread use of trending phrases and related words by many other third-parties. Cursory internet searches of Cecil the Lion and Boston Strong, for example, reveal numerous clothing, jewelry and artwork offerings under those phrases, all by different entities.
Practice Tip: Here today, gone tomorrow. Don't waste time or money attempting to obtain federal trademark registration for a trending phrase. More often than not, any actual or perceived commercial benefit from using trending social, political and other phrases and rallying cries to sell products or services lasts about as long as a news cycle. Even if a trending phrase is capable of functioning as a trademark, it can take more than a year to obtain a federal trademark registration. By that time, other new trending phrases will have come and gone.
2. Cuba is open for your (branded) business!
The Cuban embargo has not been lifted, but in 2015, President Obama eased some restrictions that affect commerce in and between the United States and Cuba. What followed are new marketing and sales opportunities for brand owners and their unscrupulous counterparts alike.
Cuba is a "first to file" country. That means the first applicant to apply for a trademark in Cuba has the right to obtain a Cuban trademark registration. Brand owners in the U.S. should be assessing the Cuban market in the same way they would assess any potential market in a global, borderless economy. In particular, at this time, businesses that operate in the financial, construction, hospitality, transportation and/or any other previously-prohibited sectors should file Cuban trademark applications.
Preventing infringing counterfeit and grey market products from entering the U.S. marketplace should also be a top priority.
Practice Tips: If doing business in or with Cuba is in your business plan, do not delay in filing trademark applications in Cuba. And to protect your investments at home, record your U.S. federal trademark registrations with U.S. Customs and Border Protection.
3. The Supreme Court of the United States: It Isn't Just for Patent Cases Anymore.
This year, we saw not one, but two trademark decisions handed down by the Supreme Court. Both decisions, while perhaps not garnering the same headline grabbing attention of other high-profile cases decided this year, had an immediate impact on trademark legal proceedings and trademark practice strategies.
In Hana Financial Inc. v. Hana Bank, the Court decided that tacking is a question for juries, not judges. The Court held that jurors are the only ones that should decide whether trademark tacking applies to prove trademark priority, because the answer turns on consumer perception and fact-intensive answers. Thus, when tacking is an issue, there may be less forum shopping in some cases, but litigation may be more expensive as more survey evidence comes into play and jury instructions now need to address tacking.
In B&B Hardware Inc. v. Hargis Industries Inc., the Court decided that Trademark Trial and Appeal Board (TTAB) decisions could, under certain circumstances, have binding effect on a federal court. For issue preclusion to apply, the usages adjudicated by the TTAB must be "materially the same as those before a district court," thus setting a materiality standard. The uses adjudicated do not have to be the same. Thus, litigating before the TTAB can no longer be considered a less expensive testing ground for federal court litigation. If you lose before the TTAB, you may not get a "do over" to later try the same case in federal court.
Practice Tip: Carefully consider where and how you pick your battles. You may not get a second chance.
4. In re Tam: Section 2(a) was just turned upside down. The Slippery Slope of Trademark Disparagement. Supreme Court Here We Come (Again).
The CAFC delivered an early holiday gift on December 22nd, issuing its decision in In re Tam (THE SLANTS), holding that the disparagement bar in 15 U.S.C. [sec] 1052(a) is unconstitutional and a violation of the First Amendment. A key take-away is that the CAFC ruling was limited to the "disparagement" provision. This leaves open for other panels (and the students in my annual trademark basics class) to consider, arguments about the viability of other provisions, including the bars on immoral and scandalous marks, for refusing trademark registration under Section 2(a).
THE SLANTS case has been, and will continue to be, closely followed by constitutional and IP experts. The floodgates have opened for USPTO examination and re-examination of numerous filings for a host of applied-for marks that could be considered disparaging, including "Stop the Islamisation of America" and "Mormon Whiskey." There will also be a wave of new trademark application filings for marks that would not have passed the USPTO registrability hurdle before the CAFC decision, but now have a chance.
Practice Prediction: This hot-button legal (and political) issue will end up before the Supreme Court.
5. ICANN's Release of 100's of New Genetic Top-Level Domains (gTLDs). Translation: Levels of Controversy and Costs, aka Headaches and Heartburn, for Trademark Owners.
This year, domain name real estate exploded like never before, with hundreds of new top-level generic domain names (gTLDs) approved and introduced by the Internet Corporation for Assigned Names and Numbers (ICANN), the agency that coordinates and maintains the worldwide web system.
New domain names were seemingly introduced on a daily basis to little or no fanfare. Many of the new generic top level domains are brand-specific, e.g., .gucci, .honda, while many others are for generic domains, e.g., .company, .read. Controversy continues to swirl, however, around the 2015 release of other new generic top level domains, including .sucks. For example, it has been estimated that the total cost for trademark owners to defensively register .sucks domain names to protect their trademarks in the .sucks domain registration system to be in the $90 million dollar range.
The expansion of gTLDs has also led to an increase by trademark owners in domain name dispute proceedings and other enforcement actions against new domain names. More new gTLD's means more opportunities for cybersquatting and counterfeiting on the internet.
This year, we saw Congress get increasingly involved in, and increasingly concerned about, ICANN's responsibilities to its stakeholders and the new gTLD program. This concern included, albeit a little too late, the extortion-like pricing for trademark holders to defensively register their trademarks in the .sucks domain space.
Practice Prediction: Look for more Congressional involvement in 2016, as more new gTLDs roll out, and as the U.S. gets closer to its so-called "hand-over" of some ICANN functions to a multi-stakeholder body.
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|Publication:||Inside Counsel Breaking News|
|Date:||Jan 5, 2016|
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