TTAB Considers Internet Archive Evidence in Opposition Proceeding

Author: Gregory Brescia

In Spiritline Cruises LLC v. Tour Mgmt. Serv’s, Inc., Oppo. No. 91224000, the TTAB held that use of the Internet Archive tool, known as the “Wayback Machine,” for evidentiary purposes was permitted. In making this determination, the Board addressed hearsay and authentication issues, and held: (1) the evidence fell within the business record hearsay exception; and (2) the affidavit submitted by Spiritline served as an appropriate means to authenticate the Wayback Machine printouts.

Background

Spiritline Cruises LLC (“Spirtline”) opposed the registration of the mark “CHARLESTON HARBOR TOURS,” owned by Tour Management Services, Inc. (“TMS”) for travel tours and boat charter related services. In its Notice of Opposition, Spiritline claimed that the “CHARLESTON HARBOR TOURS” mark is incapable of registration because it is geographically descriptive and has been used in its descriptive manner by many parties, in addition to Spritline, in the marketplace. In response, TMS claimed it made substantially exclusive use of the “CHARLESTON HARBOR TOURS” mark for at least five years prior to filing its application for registration and that the evidence submitted by Spiritline were largely recent uses in order to attempt to block registration of TMS’s application.

To support its claims, Spiritline submitted various printouts utilizing the Wayback Machine to illustrate third-party use of the “CHARLESTON HARBOR TOURS” mark between 2004 and 2015. The purpose of introducing this evidence was to discount TMS’s claim of substantial exclusive use of the “CHARLESTON HARBOR TOURS” mark. The evidence submitted by Spiritline was further accompanied by an affidavit instructing the Board of what the printouts were, how they were acquired, and the relevant dates associated therewith. The specificity provided by Spiritline’s affiant regarding the Internet crawling and archiving process was heavily regarded by the Board and served as a means to obviate authentication issues. Not surprisingly, TMS objected to the introduction of the Wayback Machine evidence claiming it was hearsay; however, the Board overruled and held that the evidence and supporting affidavit qualified under the business record exception. The Board further held that the evidence was properly authenticated and a proper foundation was laid via an affidavit to support the intended evidentiary use. As a result, the Board allowed numerous Internet printouts in to evidence to illustrate not only what they showed on their face, but to establish that TMS did not exercise substantially exclusive control over the “CHARLESTON HARBOR TOURS” mark. In fact, the evidence made it clear that the “CHARLESTON HARBOR TOURS” mark was frequently used on a number of third-party websites without challenge. Ultimately, after review and consideration of the various arguments and evidence submitted throughout the duration of the proceeding, the Board held TMS’s application for “CHARLESTON HARBOR TOURS” should be refused from registration.

The use of the Wayback Machine in this case is important because it provides specific instructions for properly authenticating and admitting such evidence in a TTAB action. As seen in this matter, the Wayback Machine evidence played a paramount role in establishing third party use of the “CHARLESTON HARBOR TOURS” mark. This tool can likewise be used to provide support on issues related to priority of use, abandonment, no bona fide use of the mark at the time of filing an in-use application, fraud, and issues related to a mark becoming generic. This TTAB ruling is instructive on avoiding potential hearsay and authentication related issues when using records from the Wayback Machine.

About the author: Gregory Brescia is a registered patent attorney and a Partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property prosecution and litigation. He also counsels clients on intellectual property enforcement and corporate transactions involving formation, compliance, and licensing. Mr. Brescia’s biography can be found here.

Second COVID Relief Bill Brings Relief to Trademark Plaintiffs, Expressly Restoring Presumption of Irreparable Harm to Trademark Cases

Author: Patrick Mulkern

On December 27, 2020, the President signed the Consolidated Appropriations Act for 2021. Although this legislation garnered considerable attention for its COVID-related relief provisions, it also incorporated the Trademark Modernization Act of 2020 (“TMA”)—first introduced back in March of 2020 as H.R. 6196. The TMA makes several sweeping changes to the trademark examination process, including new methods to address the growing number of registrations covering marks not actually used in commerce; protects the administrative law judges of the Trademark Trial and Appeal Board against certain challenges; and reinstates the presumption of irreparable harm (for those Circuits that had rejected it in recent years). On the whole, commentators speculate the changes brought about by the TMA may turn out to be some of the most consequential changes in the last thirty years.

Part I – Restoration of Presumption of Irreparable Harm

First, and foremost, the TMA expressly restores the presumption of irreparable harm that trademark infringement plaintiffs used to enjoy prior to the Supreme Court’s decision in eBay v. MercExchange, LLC, 547 U.S. 388 (2006). Specifically, the TMA amends the Lanham Act to state a “plaintiff seeking an injunction shall be entitled to a rebuttable presumption of irreparable harm” upon a finding of a violation or likelihood of success. See H.R. 6196 § 6 (amending 15 U.S.C. § 1116) (emphasis added). This change directly addresses a circuit split in how some trademark plaintiffs were treated when seeking injunctive relief—codifying what some Circuits (i.e., Fifth and Eighth) already applied in trademark litigation, and rejecting what other Circuits (i.e., Third, Ninth, and Eleventh Circuits) had been doing post-eBay. Prior to the TMA, a trademark owner’s change of success in obtaining injunctive relief was therefore entirely dependent on the geographic location of its case—clearly encouraging forum shopping. Now, such inconsistencies should be resolved.

Two questions remain, however, with respect to the presumption. One, while the other sections of the TMA expressly state when they are to become effective (see infra), the irreparable harm portion of the TMA contains no such express language. Instead, Section 6(b) of the TMA simply states that this amendment “shall not be construed to mean that a plaintiff seeking an injunction was not entitled to a presumption of irreparable harm before the date of the enactment of this Act.” While not a paragon of clarity, this language appears to invoke arcane and technical rules regarding “enactment” more fit for Schoolhouse Rock1—all of which suggest the presumption was restored the moment the President signed the bill into law.2 It is possible this language may result in a deluge of motions for reconsideration similar to those seen in the patent context following the Supreme Court’s ruling on venue in T.C. Heartland LLC v. Kraft Foods Grp. Brand LLC, 137 S.Ct. 1514 (2017).

Two, there is uncertainty with respect to whether the “restored” presumption shifts the burden of persuasion or merely the burden of production. It would appear that the presumption that existed prior to eBay was merely one of production—with courts requiring the movant satisfy its burden of persuasion in establishing irreparable harm.3 The default, as provided for by the Federal Rules of Evidence, further supports such an interpretation—with Fed. R. Evid. 301 explaining that any presumption is one “of producing evidence to rebut the presumption” and “does not shift the burden of persuasion.” Ultimately, notwithstanding the presumption, a defendant could potentially put the onus back on plaintiff where the defendant is able to present prima facie evidence regarding the lack of irreparable harm.

Part II – Changes to TM Examination and Post-Registration Review Processes

Next, the TMA provides changes to both inter partes trademark examination procedures and ex parte challenges to existing registrations.

1. Codification of Letters of Protest Procedures

Section 3 of the TMA expressly permits submission of third party evidence, formalizing the previous “Letters of Protest” process. The new formalities now require the submission include a description/identification of the relevant ground for refusal and requires the PTO to act on any such submissions within two months. The amendments also permit the PTO to charge a fee for submitting such evidence.

2. Allowing Shortened Time to Respond to Office Actions

Section 4 of the TMA amends the previously ubiquitous six month deadline for responses to office actions, and grants the PTO authority to prepare and promulgate regulations which will govern how and what the new/different response periods will be. The new response deadlines will range from two to six months, and the TMA also allows for extensions of time under those same forthcoming regulations.

3. Ex Parte Challenges to Subsisting Registrations

Section 5 of the TMA creates two new avenues for cancelling registrations, both of which serve as ex parte alternatives to traditional cancellation proceedings—all meant to address the growing concern of an overcrowded registration. The first, creating a new Section 16A entitled “Ex Parte Expungement,” allows for the expungement of registrations that have never been used in commerce. Challenges under this new section can be filed during the first 3 years of a registration’s existence. The second, creating a new Section 16B entitled “Ex Parte Reexamination,” allows for a challenge to registrations that were not in use (a) as of the date of first claimed use, or (b) when the application was filed. Challenges under this new section can be filed during the first 5 years of a registration’s existence. As above, the PTO Director was also authorized to develop and promulgate enacting regulations.

Unlike the changes identified above in Section 6 (restoring the presumption of irreparable harm), the changes enacted in Sections 3, 4, and 5 are all set to take effect in one year. This will provide the PTO time to ramp up the administrative infrastructure needed to implement these changes.

Part III – Confirming Independence of TTAB ALJs

Finally, Section 8 of the TMA provides express statements regarding the scope of the PTO Director’s authority with respect to the administrative law judges (ALJs) of the Trademark Trial and Appeal Board (TTAB). Specifically, it amends the Lanham Act to entrust the Director with “the authority to reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board.” The changes, of course, do not require the Director to reconsider, modify, or set aside any particular TTAB decisions—it simply provides the Director authority to do so. These changes come in response to recent challenges in which litigants have attempted to argue that the TTAB’s ALJs are unconstitutional “Officers of the United States” (as they are not confirmed by the Senate) because of a perceived lack of control by the PTO Director.4

Conclusion

While the restoration of the presumption of irreparable harm may capture the most attention, and despite providing harmony to the circuits in resolving a long-standing split, it is unclear whether such a change will result in much change in practice. Its most lasting effect may simply be one of procedure—reducing the amount of forum shopping. For trademark prosecutors, the changes to examination procedures are much more likely to have real world, day-to-day impact—with suddenly differing deadlines (no longer uniform 6 month responses), formalized requirements for Letters of Protest submissions, and new methods of seeking cancellation of unused registrations.

About the author: Patrick J. Mulkern is senior counsel and a member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property litigation and transactional matters, with a particular emphasis on patent, trademark, and trade secret litigation. Mr. Mulkern is a registered patent attorney and his biography can be found here.
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1 See Lander and Berkowitz, P.C. v. Transfirst Heatlh Servs., Inc., Case No. 05-cv-527 (E.D. Mo.), Dkt. 21 at n.1 (holding the date of a law’s “enactment” was “the day when it was signed into law by the President” and observing: “Although it is certainly not binding precedent, the parties may recall a popular episode of the television series Schoolhouse Rock” titled I’m Just a Bill. In that episode, Bill sang, “I’m just a bill/Yes, I’m only a bill/And if they vote for me on Capitol Hill/Well, then I’m off to the White House/Where I’ll wait in a line/With a lot of other bills/For the president to sign/And if he signs me, then I’ll be a law/How I hope and pray that he will/But today I am still just a bill.”).
2 See, e.g., Gozlon-Peretz v. United States, 498 U.S. 395, 404 (1991) (“It is well established that, absent a clear direction by Congress to the contrary, a law takes effect on the date of its enactment.”); Garnder v. Collector of Customs, 73 U.S. 499, 406 (1867) (“The simple signing of his name at the appropriate place is the one act which the Constitution requires of [the President] as the evidence of his approval, and upon his performance of this act the bill becomes a law.”).
3 See, e.g., Peter Letterese & Assoc., Inc. v. World Inst. of Scientology Enterps., Inc., Case No. 04-cv-1178, 2005 WL 8167094, at *1 (S.D. Fla. May 27, 2005) (finding plaintiff failed to establish irreparable harm despite presumption).
4 See Schiedmayer Celesta GmbH v. Piano Factory Grp., Case No. 2020-1196 (Fed. Cir. No. 8, 2019); Coca-Cola Co. v. Somohano-Soler, Case No. 2020-1245 (Fed. Cir. Nov. 27, 2019).

Lady A vs. Lady A: (Trademark) Battle of the Bands

Author: Hannah Brown

The tragic death of George Floyd last summer sparked nationwide protests and activism. This response and demand for change led to noteworthy decisions by many corporations and entities. Quaker Oats announced its plans to rebrand its Aunt Jemima brand of syrup and pancake mix because the company recognized that “Aunt Jemima’s origins are based on a racial stereotype.” The companies that own Mrs. Butterworth’s and Cream of Wheat also proclaimed their intent to reshape the brands’ images. The Washington Redskins announced that they would no longer use the name and logo “Redskins” and the team (for now and maybe permanently) will go by the name the “Washington Football Team.”1

Further, in June 2020, a country band that had gone by the name “Lady Antebellum” since it was formed in 2006 officially changed its name to “Lady A.” The band issued a public statement, noting that they named the band after the southern “antebellum” style home where they took their first photos together, but they “did not take into account the associations that weigh down this word referring to the period of history before The Civil War, which includes slavery.” The band pledged to drop the word “antebellum” and “move forward as Lady A, the nickname [their] fans gave [them] almost from the start.”

Following this announcement, the band was criticized by blues singer Anita White, who claims she has recorded music and performed under the name Lady A for decades. The parties attempted to work out a way where they could both use the name, with the band offering Ms. White money for legal fees and a promise to help her with her career if she gave them rights to use the name Lady A. Ms. White did not agree to these terms and requested a $10 million payment to allow the band to continue to use the mark. The band did not accept and filed suit in Tennessee federal court, seeking declaratory judgment that the band’s trademarks incorporating “Lady A” do not infringe any of Ms. White’s rights in “Lady A.” The band claims it has been using “Lady A” interchangeably with “Lady Antebellum” since 2006. The band attached evidence to its complaint that it registered the trademark “Lady A” for musical records and for entertainment services in 2010 and 2011. Ms. White did not oppose or contest the registrations, which are now incontestable. See Section 15 of the Trademark Act, 15 U.S.C. § 1065. The band also notes that Ms. White never applied to register “Lady A” as a trademark. The band specifies in its complaint that it does not wish to prohibit Ms. White from performing as “Lady A” nor does it seek damages; instead, it wishes to peacefully coexist with her.

Ms. White countersued in Washington federal court, alleging that the band “usurped” her brand and caused her to lose business and status. She brings causes of action for trademark infringement and unfair competition, claiming that she has used the stage name and trademark “Lady A” for nearly thirty years and has thus accrued common law rights in the trademark. She seeks an injunction and damages.

Both cases are still ongoing and nothing on the merits has been decided. There seems to be no dispute that the band has been using the name “Lady A” for at least a decade; they submitted proof of online articles, clothing, and other evidence that they can be associated by the name as well as by the name “Lady Antebellum.” The band also registered the mark, while Ms. White did not. The band notes the incontestability status of their marks, but this is likely not something that will help them in this case. Incontestability relates to the validity of a mark, not the strength of the mark. The mark’s registration as incontestable is not relevant to the issue of whether the mark is sufficient to trigger confusion. An incontestable mark is also subject to the challenge that another party used the mark in commerce first—before the incontestable mark’s registration. This is what Ms. White is claiming, that she used the mark in commerce first through performances and music sales. Ms. White claims she released albums as “Lady A” since 2006 and has been performing using the name since at least the early 1990s.

The band also claims that Ms. White has never used “Lady ‘A’” as a trademark to identify her goods or as a service mark to identify her entertainment services, and, if she did use it as a trademark, it was after the band established their rights in the mark. Ms. White disagrees, stating she has used the name for decades.

Ms. White will need to prove the territory in which she has continued to use the mark without significant interruption since prior to the band’s use in that territory. The band is nationally, if not internationally, known, but, as of now, it appears that Ms. White’s territory of use is not so clear or established. If Ms. White can establish her territory of use (along with a zone of natural expansion), she will likely have rights superior to the band in that territory. If Ms. White’s use has been restricted to only one small area, such as Seattle, the band may be granted nationwide use of the mark, subject only to an exception in that area. Even the band’s incontestable registration would not grant it the exclusive right to use the mark where Ms. White has continued to use the mark and has established rights since prior to the band’s registration. It is unclear how such a division and exception could be made for the band who performs and sells music nationwide.

As of now, the only pending questions before both district courts in the parties’ cases relate to venue and the first to file rule. But eventually, the dueling trademark rights will be analyzed and this will be an interesting case for trademark lawyers to continue to follow.

About the author: Hannah Brown is an associate and member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group, specializing in trademark, copyright, and patent litigation. She is a former law clerk to the Hon. Janis Sammartino and Hon. Cynthia Bashant of the U.S. District Court, Southern District of California.
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1 As an interesting intellectual property-related side note, this is not the first time the Redskins have been criticized for their name. In 1992, several Native Americans filed a joint petition with the Trademark Trial and Appeal Board (TTAB) of the U.S Patent and Trademark office requesting the cancellation of the term “Redskins.” The petition claimed the term is “disparaging” to American Indians. The TTAB judges canceled the federal registration of the mark Redskins “on the grounds that the subject marks may disparage Native Americans and may bring them into contempt or disrepute.” The case underwent several rounds of appeals. Eventually, the Fourth Circuit Court of Appeals reinstated the trademark. See Pro-Football, Inc. v. Blackhorse et al., Case No. 15-1874 (4th Cir. 2015). The decision was based on a Supreme Court decision issued in June 2017 in an unrelated case involving a rock band, the Slants. The Supreme Court declared that a section of federal law banning trademarks that may disparage people was a violation of the First Amendment. It was this section of the Lanham Act that the Native Americans relied upon to argue that the Redskins’ trademarks should be cancelled. The Fourth Circuit therefore issued a decision consistent with the Supreme Court ruling that the disparaging trademark ban is unconstitutional.
Although technically a loss for the plaintiffs, the lawsuit alerted the nation to the Native Americans’ contentions and feelings regarding the team’s name. Now, their request has been granted and the “Redskins” are no more.

Are Commercial Parody Dog Toys Subject to the Heightened Rogers Test, and Do They Qualify As Non-Commercial Works under the Trademark Dilution Revision Act? Jack Daniels and Amici Ask the U.S. Supreme Court to Overturn the Ninth Circuit

Author: Benni Amato

The dog toy industry has drawn the ire of many famous brands; one of the latest examples is VIP Products’s “Bad Spaniels Silly Squeaker” dog toy, fashioned to resemble Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey. The toy replaced “Jack Daniel’s” with “Bad Spaniels,” along with a drawing of a guilty-looking spaniel. Instead of “Old No. 7 Tennessee Sour Mash Whiskey,” the toy read, “Old No. 2 on your Tennessee Carpet.” Instead of “40% ALC BY VOL (80 PROOF),” the toy read, “43% POO BY VOL” and “100% SMELLY.”

Jak Daniel’s emerged victorious before the United States District Court, District of Arizona on summary judgment and after a bench trial on its trademark infringement and trademark dilution claims. However, while the Ninth Circuit Court of Appeals affirmed the validity of Jack Daniel’s trade dress, it vacated and remanded the judgment on the infringement claim, and reversed the judgment on the dilution claim.

The Infringement Claim

The Ninth Circuit noted that while trademark and trade dress infringement cases turn on likelihood of confusion, if the otherwise infringing goods involve “artistic expression,” a plaintiff must also show either that the defendant’s use of the mark is either “not artistically relevant to the underlying work,” or “explicitly misleads consumers as to the source of content of the work”—otherwise known as the Rogers test, named after Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and adopted by the Ninth Circuit in Mattel, Inc. v. MCA Records, 296 F.3d 894, 900 (9th Cir. 2002).

Whether a work is expressive depends on whether the work “communicat[es] ideas” or “express[es] points of view.” The work need not be considered high art, nor do the work’s availability commercially vitiate any expressive qualities. The Ninth Circuit concluded that the Bad Spaniels toy was an expressive work that conveyed humor, and it thus vacated judgment and remanded the claim to the district court to consider the Rogers test.

Jack Daniels now seeks certiorari from the United States Supreme Court, arguing that the Rogers test should be limited to the use of trademarks in the titles or contents of expressive or artistic works, not a commercial dog chew toy.

The Dilution Claim

The Ninth Circuit noted that a non-commercial use of a mark is not subject to trademark dilution claims. Then, without any in-depth discussion, the Ninth Circuit concluded that because the Bad Spaniels product was protected by the First Amendment, VIP was entitled to judgment on the dilution claims in its favor.

Jack Daniels also seeks certiorari from the Supreme Court on this issue, arguing that a commercial product’s use of humor should not render the product “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), and thus barring a dilution by tarnishment claim.

Previously, in the Mattel case, the Ninth Circuit held that as long as a work was not purely commercial (for example, the song “Barbie Girl”), then the First Amendment defense can apply to dilution claims. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 907 (9th Cir. 2002). However, due to the lack of analysis in the Jack Daniels opinion, it is not clear how the Ninth Circuit found the Bad Spaniels squeaker toy as not purely commercial.

Jack Daniel’s and its amici—including Campbell Soup Company, Campari America, Alcohol Beverage Industry Associations, Constellation Brands, and International Trademark Association—expressed concern in their briefing that a defendant selling a commercial product may escape any liability under the dilution laws by simply making the product humorous.

Chewy Vuitton

One of the more famous dog toy cases is Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir. 2007), which involved a “Chewy Vuitton” dog toy. In fact, the Ninth Circuit cited to this Fourth Circuit case in supporting its own Jack Daniels opinion. However, in the Louis Vuitton case, while the dog toy’s parodic nature dominated much of the opinion, the Fourth Circuit found no likelihood of confusion in part because the products were different, and there was minimal overlap between advertising and sales channels. The Jack Daniels district court found the opposite, that likelihood of confusion existed, in part because Jack Daniels licensed its intellectual property for certain dog products.

As to the dilution by tarnishment claim in Louis Vuitton, the Fourth Circuit ruled that Louis Vuitton failed to satisfy its burden that the dog toy would harm its reputation. While reaching a similar result, the Ninth Circuit instead cited to the First Amendment and non-commerciality as its reason for reversing judgment on the dilution by tarnishment claim.

In other words, while both the Fourth Circuit and Ninth Circuit ruled in favor of the dog toy producers, the appellate courts relied on different analyses.

Case Status and Opinions

The Supreme Court has yet to grant certiorari to review the case. VIP Products and its amici—Trademark Law professors, including Rebecca Tushnet of Harvard Law School—filed their briefs on December 16, 2020, and Jack Daniels filed its reply brief on December 23, 2020.

While consumers may or may not confuse a famous whiskey brand with a potty-humored dog toy, and the dog toy may or may not tarnish the whiskey brand’s reputation, it appears that the main objections from the Jack Daniels amici and commentators stem from the Ninth Circuit’s reasoning, or lack thereof. The Ninth Circuit’s opinion could lead to an expansion of what constitutes “expressive” and/or “non-commercial” works, unless the Supreme Court decides to take on the issue and rule otherwise.

About the author: Benni Amato is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on litigation matters involving trademarks, copyright, trade secrets, patents, internet issues, cybersecurity, and contractual disputes, as well as domain name arbitrations and trademark and copyright prosecution and licensing. Ms. Amato’s biography can be found here.

A Generic.com Term is Not Per Se Generic

Author: Julia Whitelock

A generic term combined with a non-source-identifying term is just a generic term, right?  In United States Patent and Trademark Office v. Booking.com B.V., Case No. 19-46, 2020 U.S. LEXIS 3517, 591 U.S. ___ (June 30, 2020), the U.S. Supreme Court rejected a sweeping rule that the combination of a generic word with “.com” is automatically generic and, therefore, unregistrable per se.

Procedural History

Booking.com, a digital travel company that provides travel-related services under the brand “Booking.com,” filed applications to register the mark “Booking.com.”  A USPTO examining attorney and the Trademark Trial and Appeal Board (“TTAB”) concluded that the term “Booking.com” was generic for the services offered and denied registration.  According to the Trademark Manual of Examining Procedure (“TMEP”) (Oct. 2018), “[portions of the uniform resource locator (‘URL’), including the beginning, (‘http://www.’) and the top-level Internet domain name (“TLD”) (e.g., “.com,” “.org,” “.edu,”) indicate an address on the World Wide Web, and therefore generally serve no source-indicating function.”  TMEP § 1209.03(m).  Because “.com” “generally indicate[s] the type of entity using a given domain name, and therefore serves no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable.”  Id.  TTAB found that “booking” was a generic term for “making travel reservations” and “.com” only served to identify a commercial website.  It therefore concluded that “Booking.com” is unregistrable because it is generic or, in the alternative, descriptive and lacking secondary meaning.

The U.S. District Court for the Eastern District of Virginia and the U.S. Court of Appeals for the Fourth Circuit disagreed with the PTO.  Generic terms are the “common name of a product or service itself.”  Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).  The District Court, relying on Booking.com’s new evidence of consumer perception, concluded that the compound term “Booking.com,” as opposed to “Booking,” is not generic.  Instead, consumer perception evidence indicated that “Booking.com” is descriptive and had acquired secondary meaning as to hotel-reservation services.  The USPTO appealed only the District Court’s ruling on genericness.  The Fourth Circuit affirmed the District Court’s determination that “Booking.com” is not generic, finding no error in its assessment of consumer perception and rejecting the USPTO’s contention that combining a generic term with “.com” is “necessarily generic.”  The Fourth Circuit applied the three-step test for genericness: “(1) identify the class of product or service to which use of the mark is relevant; (2) identify the relevant consuming public; and (3) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates, which suggests that it is generic, or an indication of the source or brand, which suggests that it is not generic.”  Booking.com B.V. v. United States Patent and Trademark Office, 915 F.3d 171, 180 (4th Cir. 2019) (citing Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996)).

The Supreme Court’s Ruling Reaffirms the Primary Significance Test for Analyzing Genericness

The Supreme Court affirmed the Fourth Circuit, concluding that “Booking.com” is not generic.  The Court held, “[w]hether any given ‘generic.com’ term is generic…depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”  2020 U.S. LEXIS 3517, *16.  The Supreme Court’s ruling rejected the USPTO’s assertion of a blanket rule that deemed all “generic.com” terms as generic.

The Booking.com Court’s holding does not materially change the test for genericness as announced in Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118, 83 L. Ed. 73, 59 S. Ct. 109 (1938).  In Kellogg, the Supreme Court stated that the owner of the mark “must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.”  Id.  In Booking.com, the Supreme Court held that the owner of the mark must show that “consumers in fact perceive that term…as a term capable of distinguishing among members of the class.”  Accordingly, the Booking.com opinion reinforces the primary significance test in determining whether a mark is generic or descriptive in the context of a generic.com term.  To do so, the Court necessarily had to reject the USPTO’s position that a generic term combined with a generic corporate designation (in this case “.com”) is basically per se an unregistrable generic term.    

In Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., the Court held that “Goodyear Rubber Company” was not “capable of exclusive appropriation.”  128 U.S. 598, 602, 32 L. Ed. 535, 9 S. Ct. 166 (1889).  “Goodyear Rubber” was a class of goods and the combination of a generic term with “Company” “only indicates that parties have formed an association or partnership to deal in such goods.”  Id.  In Booking.com, however, unlike a generic term combined with “company,” a generic term combined with “.com” refers to a specific entity due to the exclusivity of domain name ownership.  2020 U.S. LEXIS 3517, *14.  Therefore, “consumers could understand a given ‘generic.com’ term to describe the corresponding website or to identify the website’s proprietor.”  Id. *15.  The Booking.com Court clarified Goodyear’s principles, in conjunction with the subsequent enactment of the Lanham Act, as “A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.”  Id. *15-16.  However, “[a] ‘generic.com’ term might also convey to consumers a source-identifying characteristic: an association with a particular website.”  Booking.com, 2020 U.S. LEXIS 3517, *14.  The point is that a court must look at consumer perception to determine whether the combined “generic.com” term identifies a class of goods or a particular producer. 

Impact

The decision may increase the cost of trademark prosecution.  The ruling seemingly opens the gates for an onslaught of generic.com applications.  However, applicants will need to show consumer perception that the generic.com term identifies a brand, not a class of goods.  The Booking.com Court provided a non-exhaustive list of support for consumer perception of a term’s meaning, to include: “consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.”  2020 U.S. LEXIS 3517, *16 n.6.  Compiling such evidence may be costly to trademark applicants seeking to register facially generic terms.

The decision may create a path for federal registration for other combination generic terms and non-source-identifying terms.  The Booking.com Court’s holding specifically identifies the factual circumstances for which to apply its rule – when analyzing whether a “generic.com” term is generic.  However, the analysis could likely be extended to other generic terms that lack a source-identifying term (such as other TLDs like “.org” or “.net”, or # or HASHTAG).

While a generic.com mark may be registrable (assuming proof of the mark’s primary significance as source to consumers), Booking.com does not alter the tenets of trademark law – likelihood of confusion and fair use.  “[E]ven where some consumer confusion exists, the doctrine known as classic fair use, [4 McCarthy] § 11:45, protects from liability anyone who uses a descriptive term, ‘fairly and in good faith’ and ‘otherwise than as a mark,’ merely to describe her own goods.”  2020 U.S. LEXIS 3517, *18 (citing 15 U.S.C. §1115(b)(4); KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122-23, 125 S. Ct. 542, 160 L. Ed. 2d 440 (2004)).   

However, the decision may ultimately increase the instance of trademark bullying.  Even though a generic.com mark is registrable, as the Court explains and Booking.com concedes, the mark is a weak descriptive mark with a more difficult path to showing likelihood of confusion.  First, Booking.com concedes that “Booking.com” is a weak mark and as a descriptive mark, it is “harder…to show a likelihood of confusion.”  2020 U.S. LEXIS 3517, *18 (quoting Tr. of Oral Arg. 42-43, 66).  Second, Booking.com accepts that close variations of “Booking.com” are unlikely to infringe.  Id.  And finally, the federal trademark registration of “Booking.com” “would not prevent competitors from using the word ‘booking’ to describe their own services.”  Id.  However, it is conceivable that a generic.com trademark owner could and would use its federal registration to scare users of the generic term into ceasing use for fear of a costly, protracted legal battle.

About the author: Julia Whitelock is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property and Commercial Litigation Practice Groups.  Her practice focuses on litigating matters involving trademarks, copyrights, trade secrets, commercial disputes, and consumer claims, and advertising & e-commerce law.

Trademark Battle Heats Up Over Fizzy Way To Cool Down

Author: Tessa Carberry

In the past few years, cooling off with a hard seltzer on a hot summer day has become increasingly popular. While the two biggest players in the market, White Claw and Truly, enjoy the lion’s share of the market, many other companies are looking to capitalize in the hard seltzer market. And, as the Summer of 2020 begins to heat up, so does the trademark battle between two of these companies: Future Proof Brands, LLC (“Future Proof”) and Molson Coors.1

The Products and the Marks

On September 1, 2019, Future Proof launched “Brizzy,” a seltzer cocktail offering consumers a refreshing alcoholic beverage with only 100 calories, 2 carbs, 1 gram of sugar and 5% alcohol by volume. Brizzy flavors include Watermelon Mule, Strawberry Rose, and Mixed Berry Mojito. Future Proof applied to register the Brizzy mark with the USPTO in November 2018. Originating in Austin, Texas, the products can now be found in over 1,000 retail locations in four states with plans to expand into more states this year.

Molson Coors’s hard seltzer, “Vizzy,” is advertised as “the only hard seltzer with antioxidant Vitamin C.”2 It similarly offers 100 calories, 2 carbs, 1 gram of sugar and 5% alcohol by volume. In September 2019, Molson Coors filed an application to register the Vizzy trademark. Vizzy flavors include “hint of” pineapple mango, black cherry lime, blueberry pomegranate, and strawberry kiwi.

Future Proof Attempts to Protect Brizzy

In February 2020, after filing an action for trademark infringement, Future Proof filed a motion seeking a preliminary injunction prohibiting Molson Coors from selling and marketing Vizzy on the grounds that Vizzy was confusingly similar to Brizzy.3 Future Proof sought to enjoin Molson Coors from: (1) advertising or selling alcoholic beverages with Vizzy or any other confusingly similar mark to Brizzy; and (2) using, registering, or applying to register the Vizzy mark or any variation thereof.

However, the court refused to grant the preliminary injunction finding Future Proof did not meet its burden on the first requirement of the Rule 65 standard—namely, that it was likely to succeed on the trademark infringement claim. The court held that Future Proof failed to show it would succeed on the merits of the claim because there was not a likelihood of confusion between the marks – one of the two elements of infringement. The court examined the eight factors for confusion, discussed below, before concluding that, taken as a whole, there was insufficient evidence to demonstrate a likelihood of success on the merits.

The strength of the mark allegedly infringed

While Future Proof asserted that Brizzy was a strong mark, the court disagreed for two reasons. First, relying on precedent, the court reasoned that because the two marks share in the common root word “fizzy,” “which is certainly an adjective that a customer looking for a flavored, alcoholic seltzer product would desire…Plaintiff cannot realistically hope that by obtaining a mark based on and characterized dominantly by one word…it can prevent competitors from doing the same.” Second, the court points out there is a “plethora of competing products humorously close to [Future Proof’s] mark” such as Malibu’s Fizzy, Izzie Beverages, and Bizzy Cold Brew, among others. For these reasons, the court weighed this factor strongly in favor of denying the injunction.

The similarity between the two marks

Here, the court considered the similarity of the two marks by looking at their appearance, sound, and meaning. The court acknowledged that the letter “B” and “V” are easily confused4, but agreed with Molson Coors that the “logos, font, coloring, cans and packing could not be more different.” Since this factor is considered through the lens of how the customer perceives the marks, the court did not believe there was a high likelihood a customer would think the marks are similar, favoring denial of the injunction.

The similarity of the products or services, identity of the retail outlets and purchaser, and the advertising media used

The court considered these elements together and, with relatively minimal discussion, concluded they weigh in favor of granting the injunction.

The defendant’s intent

The court focused its inquiry on whether Molson Coors intended to derive benefits from Future Proof’s reputation. Future Proof presented no evidenced that Molson Coors intended to derive such a benefit and the court noted Molson came up with Vizzy months before Brizzy hit the market. This factor weighed in favor of denying the injunction.

The evidence of actual consumer confusion

Future Proof offered one instance of actual confusion wherein a wholesaler asked a Future Proof employee to talk about “Vizzy” when referring to the Future Proof product. However, the court drew the distinction that this was not consumer confusion, but wholesaler confusion and added this was a “fleeting mix-up of names.” Again, the court weighed this factor in favor of denying the injunction.

The degree of care exercised by potential purchasers

The court did not spend much time on this factor, stating “given the low cost of the products at issue, this factor provides little or no relevance to the court’s determination.”

Future Proof Refuses to let its Argument Fall Flat

On April 20, 2020, Future Proof filed a notice of interlocutory appeal of the court’s denial of the preliminary injunction motion. On June 10, 2020, Future Proof, refusing to let its argument fall flat, filed its 54-page brief opening brief on appeal, raising the overarching question of whether the “trial court erred in applying the factors…for evaluating a likelihood of confusion.”5 Future Proof asserted that Molson Coor’s use of Vizzy is “textbook trademark infringement” and focused its argument on four of the eight confusion factors: strength of the mark; similarity of marks; actual confusion between marks; and consumers’ degree of care and Molson Coor’s intent.

Strength of the Mark

Future Proof argues the trial court erred in finding Brizzy is a “weak” mark because it misapplied precedent by: (1) ignoring the presumption of distinctiveness enjoyed by a trademark holder and; (2) ignoring the tests adopted by the 5th Circuit to assess descriptiveness. Future Proof asserts that “a trademark is presumed to be inherently distinctive where, as here, the PTO registered the mark without requiring evidence of secondary meaning,”6 while also acknowledging this is a rebuttable presumption. Future Proof claims the only evidence Molson Coors has offered is an empty assertion that Brizzy comes from the word fizzy. Future Proof also challenges the court’s descriptiveness analysis, arguing that the court did not consider any of the four applicable tests under 5th Circuit precedent, under which Future Proof asserts its mark is not descriptive.

Mark Similarity

Similarly, Future Proof asserts the trial court erred in two distinct ways by: (1) focusing on certain visual differences in product packaging instead of the marks; and (2) ignoring the aural similarities between the marks. Future Proof relies on 5th Circuit authority stating the words should be the focus of the analysis, not the product packaging. Further, Future Proof states that the rhyming and audible difficulty in distinguishing between the “V” and “BR” consonants when spoken establishes similarity. Future Proof raises an interesting point in that sound in this case is particularly important as alcoholic beverages are likely to be ordered orally at a restaurant or bar.

Actual Confusion

Future Proof relies on authority suggesting that actual confusion is the best evidence of a likelihood of confusion and that “testimony of a single known incident of actual confusion by a consumer has been found to be sufficient evidence to support the district court’s finding of actual confusion.”7 Future Proof refuted the trial court’s distinction between a wholesaler and a consumer, citing 5th Circuit authority to support the proposition that a retailer or distributor’s confusion is consumer confusion.

Degree of Care and Intent

Future Proof argues that the trial court failed to give due weight to these two factors. Concerning the degree of care consumers use in selecting the products, Future Proof asserted that in the hard seltzer market, with a relatively low price point, consumers are making quick decisions among a “crowded array” of products in fast-paced environments, tilting this factor in its favor. Finally, Future Proof asserted that Molson Coors did have the intent to infringe based on a Molson Coors executive’s awareness of Brizzy before launching its media blitz for Vizzy.

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While we await a ruling from the 5th Circuit to determine whether there is a likelihood of confusion between Brizzy and Vizzy, let the arguments of each side percolate and bubble as you come to your own conclusion.

About the author: Tessa Carberry is a litigation associate in the Denver office of Gordon Rees Scully Mansukhani and a member of the firm’s Intellectual Property Practice Group. With a background in biology and mathematics, and as a former emergency medical technician, Ms. Carberry’s interests include the overlap between healthcare and IP law.
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1 Molson Coors refers collectively to both named defendants in the lawsuit: Molson Coors Beverage Company F/K/A Molson Coors Brewing Company and MillerCoors, LLC.
2 https://www.vizzyhardseltzer.com/#about-us
3 Future Proof Brands, LLC v. Molson Coors Beverage Company, et al., No. 1:20-cv-00144-JRN (W.D. Tex. Feb. 6, 2020).
4 Examining Krim-Ko Corp. (Krim-Ko Div., Nat. Sugar Ref. Co.) v. Coca-Cola Bottling Co. of New York, 390 F.2d 728, 731-32 (C.C.P.A. 1968)
5 Future Proof Brands, LLC v. Molson Coors Beverage Company, et al., 5th Cir. Court of Appeals Case No. 20-50323, Appellant’s Opening Brief.
6 Alliance for Good Gov’t v. Coalition for Better Gov’t, 901 F.3d 498, 507- 508, 510 (5th Cir. 2018).
7 Streamline Prod. Sys. v. Streamline Mfg., 851 F.3d 440, 457 (5th Cir. 2017)

SCOTUS: Willfulness Not Required for Trademark Infringement Plaintiff to Recover Defendant’s Profits

Author: Patrick Mulkern

On April 23, 2020, the Supreme Court resolved a long-standing circuit split regarding whether a trademark infringement plaintiff must show willfulness as a prerequisite to recovery of the defendant’s profits. In Romag Fasteners, Inc. v. Fossil, Inc., Case No. 18-1233 (Apr. 23, 2020),1 a near-unanimous Court2 lowered the bar for half the country, announcing: no, a trademark holder need not show willfulness before it can recover the accused infringer’s profits.

Summary of Underlying Dispute

Petitioner Romag Fasteners, Inc. (“Romag”) sells magnetic snap fasteners for use with leather goods, while Respondent Fossil, Inc. (“Fossil”) sells fashion accessories. The parties entered an agreement under which Fossil would use Romag’s fasteners in Fossil’s handbags. Eventually, Romag learned that Fossil’s manufacturer was using counterfeit fasteners instead of authentic Romag products.

At trial, the jury agreed with Romag, finding that Fossil had infringed and acted “in callous disregard” of Romag’s rights—but ultimately rejected the contention that Fossil had acted “willfully” as that term had been defined by the judge. Therefore, pursuant to then-applicable Second Circuit precedent under which a trademark plaintiff must first prove the infringement was willful, Romag could not recover Fossil’s profits. A well-defined split among the circuit courts on this issue led to the Supreme Court’s grant of certiorari.

Court’s Decision

The Court’s decision can be broken down into three sections: a statutory interpretation portion, a historical analysis portion, and a policy argument portion.

The statutory interpretation segment began with the language of the Lanham Act, noting the only limitation on recovery under Section 1117(a) (including “defendant’s profits”) was “subject to the principles of equity.” The Court explained why this limitation was significant, as the Lanham Act does explicitly require willfulness as a precondition for profits under Section 1125(c) (governing dilution)—but Romag had proceeded under Section 1125(a) (relating to false or misleading use of trademarks). The Court identified a slew of instances in which the Lanham Act clearly required specific mental states,3 and concluded that “this court [does not] usually read into statutes words that aren’t there. It’s a temptation we are doubly careful to avoid when Congress has (as here) included the term in question elsewhere in the very same statutory provision.”

The Court then reviewed Fossil’s argument that “principles of equity” provided a historical basis for requiring willfulness—an argument that the Court characterized as a “curious suggestion.” Citing first to Black’s Law Dictionary, then treatises from the 1800s, as well as several of the Supreme Court’s own decisions, the Court held “principles of equity” is a “trans-substantive” concept and does not relate or call to mind any trademark-specific requirements. Even if the Court were to assume the Lanham Act sought to incorporate common law principles, it was “far from clear whether trademark law historically required a showing of willfulness before allowing a profits remedy.” On this point, the Court acknowledged competing authority—with Fossil’s cases seeming requiring willfulness, and the fact that “Romag cites other cases that expressly rejected any such rule”—and then reiterated “the ordinary, trans-substantive principle that a defendant’s mental state is relevant to assigning an appropriate remedy.”

Finally, the Court’s decision concluded by identifying the parties’ competing policy arguments, then punted, stating, “the place for reconciling competing and incommensurable policy goals like these is before policymakers” (i.e., Congress).

Concurring Opinions

Justices Alito, Breyer, and Kagan wrote one of two concurrences, in which they simply reiterated the point that “willfulness is a highly important consideration in awarding profits under § 1117(a), but not an absolute precondition.” Justice Sotomayor wrote the other concurrence, in which she rejected the majority’s suggestion that profits would (or should) ever be awarded for innocent infringement, but agreed in the ultimately judgment. In so finding, she wrote to explicitly disagree with any interpretation of the Lanham Act in which profits could be awarded “for innocent or good-faith trademark infringement[.]”

Impact

This decision lowers the bar for nearly half the country, as the First, Second, Eighth, Ninth, Tenth, and D.C. Circuits had previously used willfulness as a threshold requirement in trademark infringement claims seeking defendants’ profits. Now, it is likely that defendant’s profits analysis will track that which has been used in the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits, where willfulness was just one of several factors in a flexible analysis. See, e.g., Quick Techs., Inc. v. Sage Grp. PLC, 313 F.3d 338, 349 (5th Cir. 2002) (stating that “willful infringement” is “an important factor”).

Ultimately, the following passage from the Court’s opinion (together with the language found in both concurring opinions) will likely serve as support for those circuit courts that wish to make willfulness a key factor in their analysis going forward:

[I]t is a principle long reflected in equity practice where district courts have often considered a defendant’s mental state, among other factors, when exercising their discretion in choosing a fitting remedy. . . . Given these traditional principles, we do not doubt that a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate. But acknowledging that much is a far cry from insisting on the inflexible precondition to recovery Fossil advances.

About the author: Patrick J. Mulkern is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property litigation and transactional matters, with a particular emphasis on patent, trademark, and trade secret litigation. Mr. Mulkern is a registered patent attorney and his biography can be found here.
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1 https://www.supremecourt.gov/opinions/19pdf/18-1233_5he6.pdf.
2 Justice Gorsuch delivered the opinion of the court, with which all but one justice joined. Justice Sotomayor concurred in the judgment only.
3 See, e.g., § 1117(b) (requiring treble damages and attorney’s fees when certain conduct is intentional); § 1117(c) (increasing cap on statutory damages for certain willful violations); § 1118 (permitting courts to destroy infringing items for any violation of section 1125(a) or any willful violation of section 1125(c)); § 1114 (providing certain innocent infringers subject only to injunction); § 1125(d)(1)(A)(i) (prohibiting certain conduct only if undertaken with “bad faith intent”).

Lions, Tigers, and Trademarks: IP Lessons from “Tiger King”

Author: Alison Pringle

Netflix’s recent docu-series “Tiger King” has quarantined Americans captivated—a reported 34 million viewers binged the series within the first ten days of its release alone. Amongst the series’ tiger-related exploits lies a bitter trademark lawsuit brought against the series’ mullet-sporting anti-hero Joseph Maldonado-Passage (known to viewers as “Joe Exotic”).

Maldonado-Passage created the Oklahoma-based “GW Exotic Animal Memorial Park” and filled it with tigers, lions, and other exotic animals. Throughout the 2000s, Maldonado-Passage became infamous in animal rights circles for breeding tiger cubs and exhibiting his animals at malls across the country.

The “Tiger King” series chronicles the long-standing feud between Maldonado-Passage and Carole Baskin. Baskin is the founder of “Big Cat Rescue,” a non-profit sanctuary for big cats. Maldonado-Passage was eventually put on trial after an unsuccessful plot to murder Baskin went awry. While Maldonado-Passage is currently serving a twenty-two year prison sentence for attempted murder-for-hire and violations of the Endangered Species Act, it was a trademark judgment that served as the catalyst for Exotic’s downfall.

Trademark Litigation

In 2005, the Big Cat Rescue Corp. registered a BIG CAT RESCUE logo for charitable fund raising services, animal rescue services, and entertainment services such as animal exhibition1:

After trying to shut down Maldonado-Passage for years, it was Baskin’s trademark rights that allowed her to finally pounce and take legal action against him. In 2011, Big Cat Rescue filed a lawsuit in the Middle District of Florida against Maldonado-Passage and GW Exotic after the latter adopted the trade name “BIG CAT RESCUE ENTERTAINMENT.” Big Cat Rescue alleged Maldonado-Passage and GW Exotic sought to disparage Big Cat Rescue through the “BIG CAT RESCUE ENTERTAINMENT” mark by causing the public to believe Big Cat Rescue was engaged in the exploitation of exotic animals.

For a trademark infringement claim, a plaintiff must show that: (1) it has developed a protectable trademark right in a trademark; (2) the defendant uses a confusingly similar mark in such a way that creates a likelihood of confusion, mistake and/or deception with the public; and (3) the plaintiff incurred damages as a result of the defendant’s infringing actions.

Big Cat Rescue’s trademark registration evidenced its rights in the “BIG CAT RESCUE” mark. Big Cat Rescue also did not have a large hurdle to jump in demonstrating Maldonado-Passage’s “BIG CAT RESCUE ENTERTAINMENT” mark was confusingly similar to the “BIG CAT RESCUE” mark. Big Cat Rescue further presented three key facts demonstrating Maldonado-Passage willfully infringed its mark.

First, Maldonado-Passage created the below ad featuring the “BIG CAT RESCUE ENTERTAINMENT” mark over a photo of a snow-leopard’s eyes, which Big Cat Rescue alleged was “virtually identical” to a photograph Big Cat Rescue used as the banner for its website at the time. The ad for the Oklahoma-based zoo displayed a Florida telephone number and the words “Florida Office,” which Big Cat Rescue argued would confuse the public into believing “Big Cat Rescue Entertainment” was affiliated with the Florida-based Big Cat Rescue.

Second, Big Cat Rescue demonstrated Maldonado-Passage used the BIG CAT RESCUE ENTERTAINMENT mark to try to divert Google traffic to his sites rather than those of Big Cat Rescue. A Facebook post created by a user named “Joe Exotic” stated, “If you must know, I registered Big Cat Rescue Entertainment and leased the name out so you could ruin BCR on Google all by yourself, and it is working. LOL.” Another “Joe Exotic” post referred to Big Cat Rescue Entertainment as “My new company LOL.” Maldonado-Passage attributed both posts to hackers.

Finally, Big Cat Rescue alleged Maldonado-Passage had also sought to file the trade name “The Caroll Baskin Entertainment Group.”

In defense of the infringement claim, Maldonado-Passage argued in his pre-trial statement that his actions were a necessary response to BCR’s campaign of disseminating misinformation about him in an effort to shut him down:

Defendants had no alternative but to respond, in part, by reflecting the egregious conduct of BCR and the Baskins back upon BCR through a counter-campaign designed to do nothing more than cause BCR to suffer from its own misconduct.

This lawsuit, and BCR’s abuse of copyright laws, is merely one more tool for the Baskins and BCR in their all-out assault on Defendants.

This argument did not absolve Maldonado-Passage from liability for the trademark claims brought against him. The parties ultimately stipulated to entry of a consent judgment against Defendants prior to trial.

References to Baskin’s Late Husband Excluded from Trademark Trial

Of note for fans of the series and legal procedure buffs, Big Cat Rescue filed a motion in limine to exclude any reference at trial to Baskin’s late husband, Jack Donald Lewis. Lewis’s 1997 disappearance remains a significant source of controversy and was featured heavily in the docu-series. Throughout his feud with Baskin, Maldonado-Passage frequently spouted his belief that Baskin killed Lewis and fed him to one of her tigers. Maldonado-Passage even went so far as to reference Lewis’s disappearance in his pretrial statement and press releases related to the lawsuit. As Big Cat Rescue argued, and the Court affirmed in granting the motion (unsurprisingly), mention of Lewis’s disappearance would likely prejudice a jury against Big Cat Rescue and had no relevance to the trademark infringement claims at issue.

Trademark Judgment

 The docu-series demonstrates the power and value of a trademark as well as the potentially high stakes of an infringement suit. The trademark judgment aided in eventually bringing down the “Tiger King.” Big Cat Rescue was able to recover all of Maldonado-Passage and GW Exotic’s profits from their mall road shows during the time period Defendants adopted the “BIG CAT RESCUE ENTERTAINMENT” mark. Total gross receipts from Defendants’ road shows between 2010 and 2011 equaled $653,000.00. Big Cat Rescue was also entitled to $300,000 for its attorneys’ fees and costs related to the trademark lawsuit, amounting to a total judgment of $953,000.

As shown in the series, the judgment financially ruined Maldonado-Passage and GW Exotic. Big Cat Rescue’s aggressive judgment enforcement actions seem to have sent Maldonado-Passage into a tailspin that eventually led to him hiring a hitman to take out Baskin.

Tiger King offers much in the way of Jerry Springer-esque entertainment and nothing when it comes to moral guidance. Viewers can take away one lesson, though: don’t use your competitor’s trademark as a weapon and brag about it on the internet.

Alison Pringle is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on intellectual property and commercial litigation, with an emphasis on trademark, copyright, contract, technology, and privacy disputes. She also counsels clients on transactional intellectual property issues. Ms. Pringle’s biography can be found here.
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1 USPTO Serial No. 76568568. In 2014, the Big Cat Rescue Corp. also registered the word mark BIG CAT RESCUE under USPTO Serial No. 85850084.

Effective August 3, 2019, the U.S. Patent and Trademark Office Makes a Big Splash through the Adoption of its New Trademark Law Concerning Foreign Trademark Applicants in an Effort to Preserve and Protect the Trademark Registry

Author: Gregory Brescia

On August 3, 2019, non-U.S. domiciliaries will require representation by a U.S. licensed patent lawyer for all matters related to trademark applications, registrations, and parties to Trademark Trial and Appeal Board Proceedings (collectively referred herein as, “foreign applicants”). See Federal Register – Trademark Laws as of August 3, 2019. In addition to the adoption of the above, the USPTO is requiring all U.S. licensed attorneys representing foreign trademark applicants to submit proof of their active state bar membership. The purpose of this recent adoption resonates from the USPTO’s efforts to (1) improve the quality of the federal trademark register; (2) stop the unlicensed practice of law before the USPTO; and (3) assist in regulatory compliance.

Many foreign applicants may ask: “how will this impact me?” Prior to the adoption of this new rule, foreign applicants had the ability to prosecute and handle all trademark-related matters on their own behalf. Of course, foreign applicants had the ability to retain foreign counsel as well, so long as certain requirements were met. With the adoption of this new rule, foreign applicants will be required to retain U.S. counsel to file applications, respond to office actions, correspond with examining attorneys at the USPTO, and handle post registration submissions.

The primary changes that foreign applicants will see through the adoption of this new rule include the following:

  1. New applications filed by foreign applicants on or before August 3, 2019 under Sections 1 or 44 of the Lanham Act must obtain U.S. counsel to prosecute a complete application from inception through maintenance.
  2. New applications filed by foreign applicants on or after August 3, 2019 under section 66(a) of the Lanham Act, a subsection of the Madrid Protocol, will not require U.S. counsel for the initial filing so long as prior to the publication, the foreign application submitted satisfies all formalities and statutory requirements. In the event the application does not meet all the formalities and statutory requirements, U.S. counsel is required.
  3. For applications filed by foreign applicants prior to August 3, 2019 that require further action, applicants must retain U.S. counsel to handle any actions, including post-registrations maintenance.
  4. Retaining U.S. counsel is not necessary for applications filed by foreign applicants prior to August 3, 2019; however, U.S. counsel must be retained for any subsequent actions.
  5. Retaining U.S. counsel is required for marks registered by foreign applicants prior to August 3, 2019 for handling any post registration actions, as well as any post registration maintenance on or after August 3, 2019.

As discussed above, the adoption and implementation of this new rule is cornerstone of the USPTO’s initiative to preserve and protect the quality of the U.S. Trademark Registry. We encourage foreign applicants to take these recent changes seriously as they can have a significant impact on the validity and their current and future U.S. trademark portfolios. Moving forward, Gordon Rees Scully Mansukhani’s Intellectual Property team will monitor the development and implications associated with the USPTO’s recent rule adoption. Should you have any questions, comments or concerns regarding the USPTO’s new rule, please feel free to contact our offices.

About the author: Gregory Brescia is a registered patent attorney and a member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property prosecution and litigation. He also counsels clients on intellectual property enforcement and corporate transactions involving formation, compliance, and licensing. Mr. Brescia’s biography can be found here.

Supreme Court Holds that Offensive Marks Are Registrable

Author: Lara Garner

As predicted in an earlier post here, the Supreme Court has held that the Lanham Act’s prohibition on registration of “immoral[ ] or scandalous” trademarks violates the First Amendment. Iancu v. Brunetti, No. 18–302, 588 U.S. ___ (2019).

Erik Brunetti, a counter culture artist, sought to trademark “FUCT.” Brunetti’s streetwear clothing line used the brand, which stands for “Friends U Can’t Trust” and is pronounced as the four letters “Eff U Cee Tee.” The Court noted one might read it differently, and if you did “you would hardly be alone.” Because of that common perception, when Brunetti discovered knockoffs using the brand, he attempted to register the trademark. His application was denied under a provision of the Lanham Act that prohibits registration of trademarks that consist of or comprise “immoral[ ] or scandalous matter,” 15 U. S. C. §1052(a). Brunetti challenged the denial under the First Amendment. The Federal Circuit invalidated the “immoral or scandalous” bar.

Two years ago, in Matal v. Tam, 137 S. Ct. 1744, 1763 (2017) the Court had declared unconstitutional the Lanham Act’s ban on registering marks that “disparage” any “person[ ], living or dead.” §1052(a). The ban was found to be the essence of viewpoint discrimination: allowing marks that are “positive” about a person and disallowing marks that are “derogatory.” In Brunetti, Justice Elena Kagan wrote for the majority, “[t]oday we consider a First Amendment challenge to a neighboring provision of the act.” In a 6-3 vote, the Justices held that the ban on “immoral[ ] or scandalous” trademarks also violates the Constitution: “We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.”

The divided Court in Matal had agreed on two propositions: (1) if a trademark registration bar is viewpoint based, it is unconstitutional; and (2) the disparagement bar was viewpoint based. In Iancu, the Court found the “immoral or scandalous” bar similarly flawed because it discriminates on the basis of viewpoint. Supported by a review of the dictionary definitions of “immoral” and “scandalous,” the statute was found facially biased in favor of messages that are in accord with society’s sense of decency. And in practice, the Court noted, the PTO has refused to register marks that are at odds with society’s views regarding topics such as drug use, religion, and terrorism but has approved registration of marks on those same topics that comport with society’s views.

The Government argued that the statute could be preserved by a limiting construction, narrowing the bar to marks that are lewd, sexually explicit, or profane. But the language is not ambiguous and to do so, the Court found, would be to rewrite, rather than interpret, the statute. Fairly interpreted, the viewpoint bias of the bar ends the inquiry and the bar must be invalidated.

Separate opinions dissenting in part with the majority were written by Chief Justice Roberts and Justices Breyer and Sotomayor. Each agreed with the majority in striking the “immoral” portion of the law. But all three agreed with each other that “scandalous” can be read to prohibit only marks that are “obscene, vulgar, or profane.” The three, along with Alito in his concurrence, expressed concern for a flood of new, crude trademarks and the creation of public spaces that would be repellant to some. As Justice Sotomayor explained, lamenting the expected result of the Court’s decision, the Government will have no choice but to begin registering the “coming rush” of “marks containing the most vulgar, profane, or obscene words and images imaginable.”

Justice Alito noted in his concurrence that the mark at issue could be denied under a narrower statute banning vulgar terms as the mark expresses no idea (and signifies the “severely limited vocabulary” of its user). But, that “[a]t a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.”

Justice Roberts, concurring in part and dissenting in part, observed that the trademark registration system merely confers additional benefits. Denying registration does not restrict or punish speech. And First Amendment protections do not extend to require “the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.”

Justice Breyer concurred in part and dissented in part at length, writing that precedents warn against interpretation of statutes that renders them unconstitutional. Agreeing with Justice Sotomayor’s narrow interpretation of “scandalous,” he proceeded to address the question of whether the benefits of trademark registration can be denied on the basis of the narrowly construed statute without offending the First Amendment. He concluded in the affirmative.

According to Justice Breyer, the category-based approach taken by the majority is inadequate. The speech-related categories for First Amendment analysis (such as “viewpoint discrimination”) should be viewed, not as outcome-determinative rules but rather as “rules of thumb.” They are not absolute rules; they sometime give weight to competing interests. And they are sometimes applied, as here, too rigidly. Justice Breyer urged that the Court look to the values the First Amendment seeks to protect and refrain from striking down ordinary regulations that pose little threat to free speech interests. The Court should ask whether the regulation at issue “works speech-related harm that is out of proportion to its justifications.”

The statute in this case, Justice Breyer wrote, does not fit neatly into the categories. It is an open question whether the trademarks statue merely regulates “commercial speech.” And it cannot be straightforwardly described as regulating “government speech.” The concept of “public forum” does not apply, although “limited public forum” may have some application as may cases involving government subsidies of private speech. The bounds between “viewpoint discrimination” and “content discrimination” may be hazy, and the denial of the benefits of federal trademark registration to highly vulgar or obscene words would not offend the Constitution. While emotion-laden, such words do not, standing alone, convey a viewpoint labeling them content-based should not be, according to Justice Breyer, outcome determinative.

A proportionality analysis of the statute, as interpreted by Justice Sotomayor, results in a conclusion that it does not offend the Constitution. A ban merely on registration does not bar businesses from using the words, and trademarks are highly regulated with the specialized aim of assisting customers with identification of goods. Those regulations necessarily limit speech. The Government has an interest in avoiding involvement in, and protecting children from such speech, which scientific evidence suggests may be different in kind – they have a physiological and emotional impact that most words do not. As such, in Justice Sotomayor’s view, risks to the First Amendment are minor in light of these objectives.

Justice Sotomayor’s concurrence in part and dissent in part was joined by Justice Breyer. An alternative to the majority’s interpretation is, according to Justice Sotomayor, “equally possible” and saves the statute rendering it a reasonable, viewpoint neutral-restriction. The Government does not have to confer trademark benefits at all but also cannot do so in a viewpoint-discriminatory way. However, the term “scandalous” should not be collapsed with “immoral” as the majority does because the term is ambiguous and the text of the statute comports with a narrow reading of its meaning.

In Justice Sotomayor’s view, “scandalous” can be read broadly to cover both idea and manners of expressing them, or narrowly to cover only manners of expression. Congress used the “scandalous,” “immoral,” and “disparage” to describe separate prohibited features. While “immoral” and “disparage” target offensive ideas, “scandalous” can be read, not as a synonym of “immoral,” but with a distinct, non-redundant meaning, as offensive due to the mode in which it is expressed. The most obvious such mode of expression is with the use of obscenity, vulgarity, or profanity. Justice Sotomayor does not propose a list (other than “the apparent homonym of Brunetti’s mark,” and “at least one particularly egregious racial epithet”) but would leave it to the USPTO to identify the “small group” of such words.

A limiting construction, according to Justice Sotomayor, is appropriate here and consistent with precedent. It is reasonable in the context of an ancillary benefit as compared to, for example, criminal statutes that threaten freedom. Brunetti would not even be prohibited from using his mark, merely from registering it. “Properly narrowed, ‘scandalous’ is a viewpoint-neutral form of content discrimination that is permissible in the kind of discretionary governmental program or limited forum typified by the trademark-registration system.”

The impact of this decision remains to be seen. But, notwithstanding the worries of some Justices, it seems unlikely that the USPTO will see a flood of attempts to register vulgarities. The value of a trademarks is in the goodwill associated with it. Building a mark’s positive reputation takes a considerable investment of time and care. The novelty of registering a mark that is unlikely, by its nature, to appeal to a wide class of consumers is outweighed by the expense of doing so. Registrations may still be rejected on the basis of other criteria, such as similarity to exiting marks. And it remains to be seen whether Congress will address the issue as it seems likely that a narrower prohibition would be upheld. As Justice Alito wrote in his concurrence, it is up to Congress, if it wants, to devise a “more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.”

About the author: Lara Garner is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on Intellectual Property litigation and counseling for patents, copyrights, trademarks, and trade secrets, and in a broad range of matters, including contract, technology, and privacy issues. Ms. Garner’s biography can be found here.