Elizabeth A. Patton

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March Madness always brings about trademark enforcement-related news.  What we generally don’t see is news about a participating school submitting trademark applications while the basketball tournament takes place.  But according to numerous articles last week, including this one in the Baltimore Sun, the University of Maryland Baltimore County hadn’t sought trademark registrations prior to securing the first upset of a #16 seed over a #1 seed two weeks ago.  After that historic victory, however, the University asked attorneys to file trademark applications for the phrases “16 over 1,” “UMBC Retrievers,” and “Retriever Nation”—which the Baltimore Sun poignantly characterized as capitalizing on the University’s “skyrocketing commercial cachet.”  Given the immediate increase in university bookstore apparel sales, the University’s quick response to that newfound cachet is more than timely.

Contrast UMBC’s recent trademark enforcement efforts with those of Iowa State University, which we’ve previously covered on this blog.  As a reminder, Iowa State University had refused to continue to license university trademarks to two of its students and their chapter of the National Organization for the Reform of Marijuana Laws because the organization was using the university’s mark on pro-marijuana t-shirts.  That dispute raised issues of the interplay between trademark licensing principles for public universities and students’ First Amendment rights, the latter of which the federal court found was trump.  Last week, in addition to the $150,000 emotional distress damages and $193,000 in legal bills already awarded, the judge approved another $598,208 in attorneys’ fees and costs, bringing the total cost to state taxpayers to almost $1 million.

These quite varying anecdotes serve as a reminder that it isn’t just public and private companies that think and care about trademark enforcement—universities do too, even if they’re late to the party.

Failing to have adequate substantiation for advertising claims can land companies in hot water.  Case in point: The Federal Trade Commission (“FTC”) recently announced that it had settled charges against a company and its CEO related to their advertising of anti-aging products using what the FTC believed were false or unsubstantiated claims.  According to the FTC’s Complaint, Telomerase Activation Sciences, Inc. and Noel Patton (“TA Sciences”) lacked scientific evidence to support claims that their topical cream product and capsule/power product provided certain anti-aging and other health benefits.  Specifically, the FTC alleged that it was false, misleading, or unsubstantiated for TA Sciences to make the following representations about one or both products:

  • reverses aging;
  • prevents and repairs DNA damage;
  • restores aging immune systems;
  • increases bone density;
  • reverses the effects of aging, including improving skin elasticity, increasing energy and endurance, and improving vision;
  • prevents or reduces the risk of cancer;
  • decreases recovery time of the skin after medical procedures.

Additionally, the FTC alleged that TA Sciences made misrepresentations related to a paid program being independent and educational, related to consumers in its ads being independent users, and in promotional materials provided to other marketers.

The FTC alleged that TA Sciences’ conduct violated section 5(a) of the Federal Trade Commission Act, which prohibits unfair or deceptive acts, thus allowing the FTC to bring suit to enjoin such conduct.  The FTC’s suit alleged counts of (1) false or unsubstantiated efficacy claims, (2) false establishment claims, (3) deceptive format, (4) deceptive failure to disclose material connections with consumer endorsers, (5) false independent users claims, and (6) means and instrumentalities to trade customers.  The FTC’s proposed settlement order prohibits TA Sciences from making a number of representations related to these counts.  It also requires TA Sciences to notify purchasers of the products at issue about the FTC settlement order.  After a period of public comment, the FTC will decide whether to make the order final.

Of course, companies should ensure that they have adequate substantiation for advertising claims, whether health-related or otherwise.  As a reminder, the FTC requires that advertisers have a reasonable basis for advertising claims before disseminating them.  For more information regarding claim substantiation, review the FTC Policy Statement Regarding Advertising Substantiation.

Social media bots may seem like a futuristic phenomenon or something belonging only in the TV series “Homeland,” but they’re already here affecting businesses and individuals online.

Last month, the New York Times reported on its investigation into the selling of fake Twitter followers and retweets by an American company named Devumi, which it estimates has at least 3.5 million automated Twitter accounts and at least 55,000 of which that impersonate real people.  These individuals probably have no idea that Devumi purportedly uses their names, profile pictures, etc. to create automated accounts to sell to celebrities, politicians, businesses, and others looking to boost their following online.

According to a related New York Times article, there have been a number of both federal and state inquiries into fake social media account practices such as these, including an investigation that the New York Attorney General’s office opened last month into Devumi’s practice of using stolen identities to sell fake accounts, which it believes would constitute illegal impersonation and deception.  Social media companies, on the other hand, appear to be grappling with how to best enforce their policies and handle fake user accounts, which can have a significant influence on businesses, politics, and consumer behavior.  And influencers themselves, who may believe they are buying legitimate followers, are likely left with questions of their own.

Today’s presence of social media bots requires companies to be even more cognizant of certain practices online.  Although social media can be a powerful tool in any company’s advertising or marketing plan, companies need to be careful for example when considering whether and how to purchase social media followers.  And, as always, companies should avoid any online practices that appear illegal or fraudulent.

It was that time of year again—when everyone looks forward to watching commercials and debating which companies hit and which companies missed.  Yes, Super Bowl LII happened yesterday and there was no shortage of funny, sad, strange, and intriguing ads during the commercial breaks.  What those of us in Minnesota also learned was that advertising surrounding the Super Bowl is not limited to those made-for-tv commercials.  Indeed, the Minnesota Super Bowl Host Committee planned a 10-day extravaganza in downtown Minneapolis that featured not only NFL and Super Bowl-related advertising, but a number of company-sponsored ads, tents/booths, and activities.  The Host Committee also created the “Bold North” tagline, which was featured all over downtown and on various types of merchandise.  According to a recent article in the Twin Cities Pioneer Press, a small group of Host Committee members came up with the tag line three years ago and it stuck.  To see how the Host Committee utilized this tag line as a brand, take a look at the Minnesota Super Bowl website.

In what may be the final installment of a series of blog posts related to the Lanham Act’s disparaging trademark ban and its effect on the Washington Redskins’ trademarks, the Fourth Circuit finally issued a decision in the Redskins’ case.  When the United States Supreme Court ruled last June in a case involving the Slants rock band that section 2(a) of the Lanham Act was unconstitutional, the fate of the Washington Redskins’ trademarks became clear.  But it took until yesterday for the Fourth Circuit to officially weigh in.

68951198 – washington redskins nfl team on white

In yesterday’s simple one-page decision, the Fourth Circuit vacated the lower court’s ruling (which affirmed the U.S. Patent and Trademark Office’s earlier order) that six of the team’s trademarks violated section 2(a) of the Lanham Act.  In other words, as expected, the Fourth Circuit issued an order in line with the Supreme Court’s decision that the disparaging trademark ban is unconstitutional and cannot bar the registration of an allegedly disparaging trademark.  As part of its ruling, the Fourth Circuit dispensed with oral argument and remanded the case to the lower court for further proceedings consistent with the Supreme Court’s decision.  Given that the remand is merely a formality at this point, the Washington Redskins may now finally feel closure on the issue (though in true procedural fashion, the Fourth Circuit’s Notice of Judgment does confirm that there is 90 days to file a petition for certiorari to the Supreme Court).

To trace this blog’s history of this interesting trademark issue, check out blog posts here, here, here, here, here, here, here, here.

At most public universities, student organizations are permitted to license various university trademarks to designate the organization’s involvement with the university and the organization’s status as a registered student organization.  My colleague Chris Beall previously wrote blog posts here and here about a dispute stemming from this practice that involved the First Amendment, Iowa State University, two of its students, and their chapter of the National Organization for the Reform of Marijuana Laws (“NORML”).  As a reminder, the case involved Iowa State University’s refusal to continue to license university trademarks to NORML because the organization was using the university’s mark on pro-marijuana t-shirts.  The federal district court, and later the Eighth Circuit (twice), ruled in favor of the students, finding that the First Amendment trumps normal trademark licensing principles for public universities and that Iowa State University violated the students’ First Amendment rights.

According to the Des Moines Register last week, the State of Iowa agreed to pay $150,000 to the two students as emotional distress damages and $193,000 in legal bills to their two law firms.  But apparently this agreement only resolves attorneys’ fees related to the Eighth Circuit aspect of the parties’ dispute, not the district court work for which the students plan to request an additional amount in attorneys’ fees from the court.

As my colleague previously wrote, this case stands as an important reminder that trademark licensing principles are different for governmental organizations because of the overarching constraints of the First Amendment.

This post follows up on my prior blog post regarding the case pending at the United States Supreme Court involving the question of when a copyright holder can properly file a copyright infringement lawsuit.  The petitioner, Fourth Estate Public Benefit Corp., has framed the issue in its petition for certiorari as follows:  “Whether ‘registration of [a] copyright claim has been made’ within the meaning of § 411(a) when the copyright holder delivers the required application, deposit, and fee to the Copyright Office, as the Fifth and Ninth Circuits have held, or only once the Copyright Office acts on that application, as the Tenth Circuit and, in the decision below, the Eleventh Circuit have held.”

34126235 - copyrightFollowing the parties’ respective briefing as to whether the Supreme Court should grant certiorari and thus review the case, the Supreme Court has now invited the United States Solicitor General to submit a brief as well.  In other words, the Supreme Court is interested in the Solicitor General’s view on the issue.  A recent American Bar Association article explains that the Supreme Court has increasingly requested the views of the Solicitor General in order to assess how the United States’ interests are being affected by a lower court’s decision and to determine whether the case is important enough or a circuit split is developed enough to warrant the Supreme Court’s review.  This may mean that the Supreme Court is considering granting certiorari in this case, but it will likely be some time before we learn of that.

Following up on my blog post related to the Federal Trade Commission’s (“FTC”) prohibition on illegal sales calls and robocalls, today the FTC issued its National Do Not Call Registry Data Book for Fiscal Year 2017.  Now in its ninth year, the 2017 fiscal year Data Book contains “statistical data about phone numbers on the Registry, telemarketers and sellers accessing phone numbers on the Registry, and complaints consumers submit to the FTC about telemarketers allegedly violating the Do Not Call rules.”  New this year, according to the FTC, is a breakdown of robocalls versus live calls, information about the topic of those calls as reported by consumers, and a state-by-state analysis of consumer complaints.

In its press release issued today, the FTC reported that the Registry now contains over 229 million phone numbers and that there were over 7 million consumer complaints about unwanted telemarketing calls in 2017.  Of those, over 4.5 million were complaints about robocalls, which is a marked increase from the prior year.  Notably, the most frequent topic that consumers identified when submitting a robocall complaint was “Reducing Debt,” which accounted for over 700,000 of the complaints received in 2017.

As a reminder, companies should make sure to follow proper procedures when making sales calls, particularly pre-recorded sales calls, to consumers.

Continuing my ongoing coverage of the Lanham Act’s disparaging trademark ban, the Federal Circuit ruled today that the U.S. Supreme Court’s June 2017 ruling striking down the ban on disparaging trademarks also applies to the ban on “immoral” and “scandalous” trademarks set forth in section 2(a) of the Lanham Act.  Applying First Amendment free speech rights, the Federal Circuit overturned the U.S. Patent and Trademark Office’s refusal to allow a trademark applicant to register the term “Fuct” for his apparel brand.  Despite the Supreme Court’s ruling regarding disparaging trademarks, the USPTO had apparently continued to take the position that it would not register immoral or scandalous trademarks.  The Federal Circuit has now rejected that position, finding that the ban on immoral and scandalous trademarks is unconstitutional just like the ban on disparaging trademarks.

Following up on my blog post last month related to the Coachella/Filmchella trademark infringement case pending in the Central District of California, the court held this week that the organizer of the Filmchella music festival cannot use the name Filmchilla now either.  The court had previously issued a preliminary injunction in favor of the organizers of the Coachella music festival enjoining the defendant’s use of Filmchella, but following the parties’ flurry of motions, the court extended its ruling to enjoin the use of Filmchilla as well.  The court was apparently persuaded that Filmchella and Filmchilla sound very similar to each other and are both similar enough to Coachella to warrant injunctive relief.