Trademark Registration

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.

A trademark may give a business the right to stop others from using these marks to sell similar goods or services or using marks that may be confusingly similar. However, federal trademark protection is out of reach for hundreds of businesses across the country.

The recent announcement that the DOJ was rescinding the Cole Memo reminded us of the friction that exists between Federal and State laws, at least when it comes to Marijuana. The Cole Memo was seen, by some, to provide a sort of “safe harbor” for businesses in the 29 states and the District of Columbia where marijuana has been legalized in some form. Regardless of the Cole Memo, marijuana remains illegal under Federal law and therefore the USPTO will not register marijuana-related marks.

Consequently, an established marijuana dispensary might not be able to stop a competitor from setting up a shop with the same or similar brand name. Similarly, a grower who wins an award for a newly developed strain might not be able to stop others from selling marijuana under the same name. Inevitably, consumers will be confused. Such confusion may result in loss of goodwill or brand image associated with the name or trademark as well as lost sales.

In order to address this problem, some businesses have sought to obtain federal trademarks on non-marijuana-related goods and services. For example, businesses can still trademark their name or logo for use with clothing, accessories, and other merchandise. The more closely related the good or service is to marijuana sales or use the more likely the future protection if such activity becomes legal at the federal level. This is due to a doctrine known as the zone of natural expansion, which allows a company to use a trademark in a new geographical area or product line when the use in the newly expanded area is a natural extension of the prior use. That is, marijuana sales may naturally extend from the sales of rolling papers or vaporizers. However, such merchandise runs the risk of being considered illegal drug paraphernalia and thus similarly banned from trademark protection. Conversely, a business may obtain a trademark related to the sales of t-shirts or other merchandise but marijuana sales may not naturally extend from such products. Also, in order to maintain the trademark, the business must continually use the mark and have actual sales of such products. If such products are not popular, this could result in the loss of the trademark. Unfortunately, even with these steps, there may not be much protection from others using the trademark strictly for marijuana sales.

Another option is to register the mark for state registration. This may provide protection within a particular state but may not be effective throughout the country. For example, if a business registers a trademark in Oregon, it may not afford protection from the use of the same mark in Washington, California, or Nevada – three bordering states where recreational use is legal. A business could expand protection to those states, but this would require additional registrations and actual use of the mark in each state protection was sought.

The rescinding of the Cole Memo indicates this rift between Federal and State law is not going anywhere soon. As more and more states continue to legalize marijuana and the industry continues to grow, conflicts will arise. It is possible the marijuana industry will be as non-confrontational as its users are known to be, but my bet is the effectiveness of these strategies will soon be tested.

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.

In direct response to the U.S. Supreme Court’s decision striking down the constitutionality of section 2(a) of the Lanham Act, which as enacted barred the registration of disparaging trademarks, there is reason to believe that offensive trademark registration applications are on the rise.

According to Reuters, there were at least nine new applications filed with the U.S. Patent and Trademark Office (“PTO”) between the June 19, 2017 Supreme Court ruling and the end of July 2017.  Such marks include versions of the N-word, a swastika symbol, and other offensive terms/phrases.  For example, Snowflake Enterprises LLC has filed multiple trademark applications for offensive marks, examples of which can be found on the PTO’s website (a version of the N-word can be seen here and a swastika symbol can be seen here). Prior to the Supreme Court’s ruling, it’s likely that the PTO would have outright rejected such filings as they had with similar filings in the past.  But the PTO is now under new guidance—that trademark applicants are protected by the free speech rights guaranteed under the First Amendment to the United States Constitution.  According to Reuters, the PTO told its staff a few days after the June 19 Supreme Court ruling that they could no longer use section 2(a) of the Lanham Act to reject a trademark application for a disparaging trademark.

The full effect of the June 19, 2017 Supreme Court ruling remains to be seen, but the evidence to date suggests that applications for offensive trademarks will increase and that the PTO will be forced to approve them if the marks otherwise qualify for trademark registration.  However, if the applicant does not establish actual use of the offensive mark or does not use the offensive mark as a source identifier, the PTO can still reject the application.  Thus, with the exception of the once-applied disparaging trademark ban, the PTO will continue to apply the same standards to trademark applications as it has in the past.

Prior Above the Fold blog posts explaining the Supreme Court’s June 19, 2017 ruling in more detail can be found here and here.

Nike continues to flex its ever-growing muscles in protecting its lucrative Jumpman brand, blocking the NFL’s Rob Gronkowski’s registration of a silhouette of his signature touchdown spike earlier this week.  In a Notice of Opposition before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“USPTO”), Nike argues that Gronkowski’s mark is too similar to the Jumpman logo (a silhouette of Michael Jordan dunking a basketball), one of the most recognizable trademarks in sports.

Source: USPTO

Gronkowski’s company, Gronk Nation, L.L.C. is applying for registration of the mark shown above and to the left in connection with “Clothing, namely, hats, caps, shirts, T-shirts, jerseys, sweatshirts, pants, jackets, [and] rain jackets”.  In a formal opposition, Nike alleges that Gronkowski’s goods, in combination with his mark, are too similar to the Jumpman logos used in connection with “Footwear and clothing, namely pants, shorts, shirts, t-shirts, sweatshirts, tank tops, warm-up suits, jackets, hats, caps, and socks”, as well as “Footwear, t-shirts, shorts, pullovers, pants, warm-up suits and tank tops”.  Nike believes that registration of Gronkowski’s mark will lead to consumer confusion as people could theoretically purchase Gronkowski-branded goods thinking that they are actually getting a pair of Air Jordan 4’s.

In addition, Nike seeks denial of Gronkowski’s registration based on fame.  Nike alleges that it has continuously used the famous Jumpman logo in commerce for more than 25 years; Nike’s earliest registration for the Jumpman logo was over 20 years ago; and its Jumpman logo became famous well before Gronkowski’s use of his mark.  As a result, Nike believes that registration of Gronkowski’s mark will lead to dilution of the distinctive quality of the Jumpman logo.

Nike’s opposition prevents Gronkowski’s application from proceeding to registration.  Gronkowski has until August 5 to respond to the Notice of Opposition or the USPTO can abandon his application.  Spokespersons for Nike and Gronkowski have said they wish to resolve the matter without a legal battle.

A potential legal battle would be an awkward clash between Nike – a behemoth in the sports apparel industry – and Gronkowski, who, ironically, has an endorsement deal with the very company that is opposing his registration.  If it comes to that, Gronkowski would need to overcome Nike’s arguments and evidence of consumer confusion.  Even if Nike loses on its likelihood of confusion claim, it would almost assuredly prevail on its dilution claim, as proving fame does not require any evidence of consumer confusion.  Moreover, Nike would likely have no issues proving the fame of its Jumpman logo.

Nike took advantage of USPTO filing procedures in receiving the maximum 180-day filing extension for its Notice of Opposition.  Gronkowski’s application would have likely proceeded to registration if no other parties had opposed the application as long as Gronkowski assured the USPTO that it was using his mark on the goods listed on his application.

Amid the hullabaloo over the U.S. Supreme Court’s decision this week in Matal v. Tam, a much broader and potentially more significant development might be overlooked. It shouldn’t be.

The case involved Simon Tam’s band “The Slants,” and as our Elizabeth Patton wrote earlier this week, it invalidated the Lanham Act’s prohibition on the registration of disparaging marks. The crucial development that might be missed, however, is separate from the fascination over whether this decision spells the end of efforts to invalidate the trademark registrations held by the NFL for its football team in Washington, D.C. – it does. Rather, the Slants’ case should be seen for what is lurking in the opinions of the concurring justices. That is, the Tam decision marks a potent evisceration of the First Amendment’s commercial speech doctrine, ensuring heightened constitutional protection for commercial speakers.

U.S. Supreme Court Building, Washington, D.C.
Copyright: Blakeley / 123RF Stock Photo

The commercial speech doctrine has long been invoked to allow broader, more intrusive regulation by government of speech that can be characterized as “commercial.” This is the doctrine that justifies not only the Trademark Office’s regulation of trademarks, but also the Federal Trade Commission’s regulation of social media, and a local municipality’s regulation of highway billboards. The commercial speech doctrine holds that because commercial speech is more robust – that is, because it is financially better equipped to defend itself – the government may have a freer hand in regulating such speech. Under this doctrine, a government regulation of commercial speech has heretofore been subject to a lesser degree of constitutional review – the so-called “intermediate” scrutiny of the Supreme Court’s Central Hudson test.

The Tam case dramatically undermines those prior principles.

Indeed, the various opinions in the Tam case buttress a development in the law that has been building in recent years, where the Supreme Court has been much more skeptical of government attempts to regulate the speech of businesses and other commercial actors. This latest case now solidifies a five-justice majority, and potentially a larger one, that will require rigorous, full-bore, core-speech “strict scrutiny” for government regulations of commercial speech when the regulations attempt to restrict or punish non-misleading commercial speech on the basis of the “viewpoint” expressed in the speech.

In other words, there are at least five justices, and likely more, who no longer focus on whether the speech being regulated is “commercial.” Instead, these justices are willing to apply strict scrutiny – and even a presumption of unconstitutionality – to a regulation that can be characterized as “viewpoint” based.

The nose-counting for this principle looks like this:

In his separate concurrence in Tam, Justice Thomas reiterated his long-held view, one that he persistently expressed along with the late Justice Scalia, that all government regulation of commercial speech should be subjected to strict scrutiny if the speech to be regulated is not misleading. Thus, as First Amendment scholars have long recognized, Justice Thomas already stands in the camp that rejects the rationale of the commercial speech doctrine, that commercial speech is entitled to less protection under the First Amendment.

In addition to Justice Thomas, a four-justice wing led by Justice Kennedy concurred with the outcome in Tam. Kennedy, along with Justices Ginsburg, Sotomayor, and Kagan (that is, the so-called “liberal” wing of the Court) sounded a clarion call for the highest level of constitutional scrutiny on regulations that attack a person’s speech based on the speaker’s viewpoint, regardless of whether the speaker is engaged in commercial speech. Justice Kennedy wrote that “it is a fundamental principle of the First Amendment that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys.” He then said that regardless of whether the speech in question is commercial – that is, regardless of the nuances of the commercial speech doctrine – “[a] law found to discriminate based on viewpoint is an egregious form of content discrimination which is presumptively unconstitutional.” (emphasis added)

Thus, there is a five-justice majority, between Kennedy, Thomas, Ginsburg, Sotomayor, and Kagan, that will apply full First Amendment protection against a government regulation that discriminates on the basis of a speaker’s viewpoint, regardless of whether the speaker is commercial or not.

And finally, there is reason to anticipate sympathy for this view even among the rest of the justices. The portion of Justice Alito’s principal opinion that reflected only a four-justice plurality of himself, and Chief Justice Roberts and Justices Thomas and Breyer, observed that the Supreme Court has said “time and again” that the public expression of ideas “may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”

These pronouncements line up to be an eight-justice majority, and potentially a unanimous Court once Justice Gorsuch’s views become known (he did not participate in the Tam case). The Court has thus made clear that the government is barred from regulating truthful, non-misleading commercial speech where the only justification for the regulation is that the commercial speech offends the sensibilities of the listeners.

This expansion of the strict-scrutiny regime into territory once thought to be an area of more fulsome government regulation puts into play all kinds of statutory regimes. Clearly, in addition to the anti-disparagement provision of the Lanham Act, that statute’s additional prohibitions against the registration of trademarks that are “scandalous” or “immoral” soon will be invalidated. (Indeed, the Trademark Office has already signaled its recognition of the likely invalidity of these provisions in briefing it submitted to the Federal Circuit last year.) As a reuslt, trademark applicants who previously were unable to obtain registrations of marks with profanity in them or marks with sexual innuendoes now likely will be able to obtain such registrations.

Similarly, the FTC’s regulatory guidance that has required media companies to disclose whether content on their websites are “sponsored” is potentially subject to strict scrutiny because these restrictions are a regulation of commercial speech based on the viewpoint of the speaker.

Other statutory regimes are equally at risk under this now more robust protection of commercial speech. Hence, states that have enacted “veggie libel” laws that prohibit advertising that criticizes a state’s agricultural products are now likely to face a presumption of unconstitutionality and a need to justify the laws under a strict scrutiny regime.

In addition, states that have enforced restrictions on companies’ truthful, non-misleading advertising will face more legal challenges. One prime example will be the states where marijuana has been legalized but the states have also restricted how those cannabis businesses may advertise their products. Those regulations discriminate against the cannabis business’ advertising based on their viewpoint. The Tam decision means that those regulations are presumptively unconstitutional.

Similarly, municipalities that have prohibited or restricted the advertising of ride-sharing or room-sharing businesses also will find it much more difficult to defend such commercial speech regulations because they enjoin speech on the basis of the speakers’ viewpoints.

The fundamental sea change that can be seen in the Tam decision is that non-misleading, truthful commercial speech is no longer the benighted stepchild of the First Amendment. Rather, such speech now is entitled to the strongest form of constitutional protection when the government seeks to regulate such speech because of the speaker’s viewpoint – that is, when the speech is targeted “based on the government’s disapproval of the speaker’s choice of message.”

The practical effect of the Tam case, when read together with the earlier line of decisions applying the highest form of First Amendment protection against viewpoint discrimination, is that businesses now have an even stronger First Amendment basis to resist government efforts to control the way they speak to the public and their customers when their speech is not misleading.

This morning, the United States Supreme Court issued its long-anticipated ruling in the Lee v. Tam (now designated Matal v. Tam) trademark dispute involving the rock band, The Slants.  As detailed in an earlier blog post, the legal issue faced by the Supreme Court was whether section 2(a) of the Lanham Act, which bars the registration of disparaging trademarks, is constitutional.

Copyright: 72soul / 123RF Stock Photo

Justice Alito wrote the opinion for the Supreme Court, which affirmed 8-0 the Federal Circuit’s prior determination that the disparaging trademark ban is facially unconstitutional under the First Amendment’s free speech clause.  In reaching that conclusion, Justice Alito explained that trademarks constitute private speech, not government speech as the government had argued.  As Justice Alito pointedly and simply stated, “Speech may not be banned on the ground that it expresses ideas that offend.”  Justice Alito’s analysis, other aspects of his opinion joined by a smaller number of justices, and two concurring opinions can be read here.

As noted in an earlier blog post, although the Supreme Court decided to hear the Tam case last year, it decided not to hear the Washington Redskins’ related trademark dispute described in another earlier blog post.  It now seems that the Supreme Court’s decision with respect to The Slants will allow the Washington Redskins to keep their federally-registered trademarks in the Redskins name, despite the United States Patent and Trademark Office’s prior cancellation of a number of those trademarks.  More broadly, the outcome of the Tam case may entitle any trademark registrant to invoke the First Amendment’s free speech clause to register disparaging or offensive trademarks.

The Trademark Trial and Appeal Board refused to allow registration of a USA Warriors Ice Hockey Program mark for “arranging and conducting ice hockey programs for injured and disabled members and veterans”, finding the mark was too similar to a mark owned by USA Hockey, Inc. (see a comparison of the marks below). The Board rejected USA Warriors’ arguments that USA Warriors owned an existing registration for a similar mark that had co-existed with the USA Hockey mark, and that USA Hockey consented because USA Hockey actually displayed USA Warriors’ registered mark on its website.


The Board’s precedential ruling affirmed a Trademark Examining Attorney’s refusal to register the USA Warriors’ mark under Section 2(d) of the Lanham Act, which is the statutory basis for refusing to register a mark due to likelihood of confusion with another mark. USA Warriors never disputed that the marks were similar and that the services were related. USA Warriors’ principal argument on appeal to the Board was that the marks had co-existed and that, under a previous Board decision called Strategic Partners, the Board should overturn the refusal and allow the mark to register. Similar to Strategic Partners, USA Warriors argued for invoking the 13th factor (one of the “du Pont” factors) in analyzing likelihood of confusion, which “accommodates the need for flexibility in assessing each unique set of facts”.


In rejecting USA Warriors’ argument, the Board noted that Strategic Partners involved an applicant’s registered that had co-existed for more than five years. The Board found the five-year period significant because, once the mark was registered for more than five years, it could not be challenged for likelihood of confusion under the Lanham Act. In the USA Warriors case, its existing registration for the mark shown below was issued less than five years ago making it subject to a cancellation action by USA Hockey based on likelihood of confusion. The 3 ½ years of coexistence was insufficient to outweigh the other du Pont factors, the Board concluded.


As to USA Warriors’ consent argument, the Board determined USA Warriors and USA Hockey never entered into a consent agreement, which would have likely played a “crucial role” in the Board’s likelihood of confusion analysis. Although USA Hockey did display the USA Warriors’ mark on its website, the Board concluded that such evidence was insufficient for a finding of consent.


This case allows us to remind potential applicants that for purposes of obtaining a trademark registration, a third party’s mere permission to use a mark, even on the third party’s website, is insufficient because, from the Board’s perspective (and the Examining Attorney’s perspective), the third party never actually consented to registration of the mark. The best way to show that a third party did consent to registration is a consent agreement.

This week, the Federal Circuit issued a new decision that once again reflects the tricky conundrum facing businesses whose trademarks are a collection of descriptive words.

In such circumstances, the Patent & Trademark Office – as well as the courts that review PTO decisions – frequently require such a business to “disclaim” any rights in the words that comprise the business’ mark.  This disclaimer requirement is imposed on the grounds that the words in the mark are merely descriptive on their own and that as a result, the business should not be permitted to own trademark rights which would otherwise prevent other businesses from using those words for their own separate businesses.

In some cases, as was the situation for DDMB, Inc., the Chicago business involved in the current case, the Trademark Office will require the business to disclaim every word in the business’ name, such that the business is not entitled to any rights in any of the individual words apart from their inclusion in the full mark.

This legal doctrine came to bear most recently against a company that operates a pair of Chicago restaurants, in the case In re DDMB, Inc., — Fed. Appx. —, 2017 WL 915102 (Fed. Cir. Mar. 8, 2017).  In its decision, the Federal Circuit affirmed a prior ruling in January 2016 by the Trademark Trial and Appeal Board, denying federal registration for a service mark using the phrase “EMPORIUM ARCADE BAR.”  The examining attorney at the Trademark Office had required the applicant to disclaim the word “emporium,” after the business already had disclaimed the words “arcade” and “bar,” in its application to register the following mark:

Emporium Arcade Bar - Trademark Registration Application
Source: In re: DDMB, Inc. Opinion, Issued March 6, 2017

When the Chicago business refused to agree to the additional disclaimer of the word “emporium,” the Trademark Office refused to approve the registration, which was being sought in connection with bars, bar services, and providing video and amusement arcade services. The Office’s insistence on a disclaimer of the word “emporium” was approved by the TTAB in a subsequent decision in January 2016. And, that decision has now been affirmed in this week’s ruling by the circuit court.

In holding that a disclaimer of the word “emporium” is required because it is merely descriptive of the applicant’s bar and arcade services, the TTAB had ruled that this word describes attributes of a large establishment with a wide variety of merchandise and activity going on within it, and that as a result, the word functions as a description of the applicant’s services rather than as an indicator of the origin or source of the services. The TTAB’s ruling was premised on dictionary definitions and at least seven other trademark registrations where the word “emporium” had been seen to be descriptive and where a disclaimer was required as a result. Specifically, for example, the TTAB cited registrations where disclaimers were imposed for the marks “THE FLYING SAUCER DRAUGHT EMPORIUM,” “McDADE’S EMPORIUM,” and “STAMPEDE MESQUITE GRILL & DANCE EMPORIUM,” each of which involved businesses with similar bar services.

(The circuit court affirmed the TTAB’s ruling, in a non-precedential, per curiam decision in light of the extremely generous standard of review on appeal for such factual determinations by the TTAB because the circuit court is required to affirm such determinations if there is “substantial evidence” to support them.)

The In re DDMB case stands as a cautionary tale for businesses with names that are otherwise descriptive words, or collections of descriptive words. The trouble for the applicant here is that there is a long history of the Trademark Office requiring applicants to disclaim the word “emporium.” This trouble was accentuated by the fact that the applicant sought to register a composite mark that had other descriptive words in the mark that the applicant already had disclaimed. The specimen that the applicant submitted with its application highlighted this trouble:

Emporium Arcade Bar - USPTO File Wrapper Record Image
Source: USPTO file-wrapper record, U.S. TM Serial No. 86312296, June 17, 2014.

In such circumstances, instead of seeking registration for a mark in which the word “emporium” was displayed with equal visual significance as “arcade” and “bar,” the applicant might have considered applying for registration of a different version of the mark, with only the one word “emporium,” such as what is now visible at the applicant’s storefront at its Logan Square restaurant in Chicago, as shown on its website:

Emporium Arcade Bar - Front
Source: Emporium Arcade Bar Website, March 10, 2017

Ultimately, however, even if the application had focused on only one word, as opposed to three, it is still likely that the Trademark Office would have required a disclaimer of the word “emporium” because of the long history of treating this word as merely descriptive.

As a result, and as a lesson for businesses with highly descriptive words in their names, it may be wise to accept a demand from a trademark examiner to disclaim the descriptive word in a business’ mark – if only as a means of moving forward with the federal trademark registration –and then to invest in building consumer recognition of the business’ mark. Some of the most famous marks today, which have been around for generations, continue to have disclaimers on portions of the mark. Hence, The Coca Cola Co.’s registration of DIET COKE® continues to carry a disclaimer for the word “diet,” and KFC Corp.’s registration of KENTUCKY FRIED CHICKEN® continues to carry disclaimers for the words “fried” and “chicken.”

The moral of this story may be that disclaimers are a necessary evil when a business’ mark is a word that the Trademark Office already has concluded is merely descriptive.

In the United States, unlike overseas, you get a lot of legal protection right away simply by coming up with a brand name and USING it to sell goods and services. USE is the crucial issue here.

This means that we trademark attorneys spend a lot of time thinking about how to prove that our clients’ trademarks have been used. It’s not as easy as it sounds!

For example, last month the USPTO’s reviewing board rejected a real estate company’s attempt to prove it was using its name. The company submitted digital photos of the front door of its facility where it provided and managed its real estate services:

Source: In re Republic National LLC (TTAB Opinion), February 23, 2017

Not good enough. As experienced trademark attorneys know, the USPTO is persnickety about what proof it will accept to show a trademark is actually in use. In this case, it wanted to see a description of the services being offered, not just a name on a door.