Whether the United States Patent and Trademark Office (USPTO) possessed trademark registrations for its own trademarks was honestly not something I had ever thought about before.  But then I received a link to the Director’s Forum blog earlier this month telling me that the Department of Commerce had recently filed for federal registration of the USPTO’s marks with the USPTO.  It appears the reason for doing so after so many years is based on the increase in misleading solicitations and trademark filing scams.  Simply put, the USPTO wants to be able to take legal action against scammers who impersonate it.

trademark brandind advertising copyright conceptIngesting humor into the blog, the USPTO said, “We recognize the intrigue and irony of filing for federal registration of the USPTO marks…with the USPTO. It’s a big reason why the Department of Commerce is filing the application on our behalf, just as it has for its other bureaus.”  Federal agencies that own federal trademark registrations apparently include the Internal Revenue Service, the Environmental Protection Agency, the Food and Drug Administration, the Federal Aviation Administration, the National Aeronautics and Space Administration, the National Oceanic and Atmospheric Administration, the Department of Homeland Security, the National Park Service, and branches of the U.S. military.

As the blog summarizes, “We firmly believe that it’s never too late to do the right thing, and doing everything within our power to protect our trademark customers is the right thing.”

In a recent precedential decision, the TTAB again revisited the doctrines of claim and issue preclusion.

Valvoline Licensing & Intellectual Property LLC (“Valvoline”) opposed Sunpoint International Group USA Corp.’s (“Sunpoint”) application to register the mark MAXVOLINE on the sole ground of likelihood of confusion.  Sunpoint moved for summary judgment based on the defense of res judicata, which people sometimes interpret as encompassing  the doctrines of both claim and issue preclusion.

Sunpoint argued that, in a prior cancellation proceeding between the parties based on the same registrations Valvoline asserted in the current opposition proceeding, the Board determined that Valvoline had failed to prove Sunpoint’s MAXVOLINE mark was likely to cause consumer confusion with Valvoline’s VALVOLINE and MAX LIFE marks.  Sunpoint argued this earlier “ruling” barred Valvoline’s current likelihood of confusion claim.

In an interesting wrinkle, despite commenting on the likelihood of confusion issue, the Board in the earlier cancellation proceeding did not enter judgment on the likelihood of confusion claim; it granted Valvoline’s petition to cancel only on the grounds that Sunpoint had failed to use its marks at the time it filed its statements of use.  Of critical importance, Sunpoint did not appeal the Board’s cancellation decision, choosing instead to file a new application to register MAXVOLINE.

Claim preclusion “bars a second action when there is (1) an identity of parties or their privies; (2) an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first.”  [Opinion, at p. 6 (citing Jet, Inc. v. Sewage Aeration Sys., 55 U.S.P.Q.2d 1854, 1856 (Fed. Cir. 2000)].  Issue preclusion, also known as collateral estoppel, bars a party from relitigating the same issue in a second action between the parties.  [Id. (citing B&B Hardware, Inc. v. Hargis Indus., Inc., 125 S. Ct. 1293, (2015)].  Issue preclusion requires “(1) identity of an issue in a prior proceeding, (2) that the identical issue was actually litigated, (3) that determination of the issue was necessary to the judgment in the prior proceeding, and (4) that the party defending against preclusion had a full and fair opportunity to litigate the issue in the prior proceeding.”  [Id., at pp. 6-7 (citing Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 76 USPQ2d 1310, 1313 (Fed. Cir. 2005)].  Significantly, neither type of preclusion applies if the party against whom the preclusion is sought to be enforced could not appeal the outcome of the earlier proceeding.  [Id., at p. 7].

As the prevailing party in the earlier proceeding, Valvoline was unable to appeal the Board’s adverse commentary on the issue of likelihood of confusion.  Moreover, while the Board in the earlier cancellation proceeding determined that Valvoline had failed to carry its burden of proof on the issue of likelihood of confusion, that determination did not change the final judgment, which the Board based on a claim of nonuse.  If Sunpoint had appealed the earlier Board decision, Valvoline could have cited likelihood of confusion as an alternate ground for affirming the Board’s decision.  Sunpoint, however, chose not to appeal, depriving Valvoline of that opportunity.  In view of these facts, the Board denied Sunpoint’s res judicata argument.

The decision is Valvoline Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 2021 USPQ2d 785 (TTAB 2021) (precedential).

In a recent precedential decision, the TTAB confronted the issue of timeliness of discovery requests served in opposition and cancellation proceedings—namely, whether Eastern Standard Time (EST) controls the timeliness of service of such discovery requests, regardless of the geographic location of the serving party.  While not a particularly exciting legal issue, it is no doubt one having ramifications for all TTAB practitioners.

In Island, LLC v. JBX Pty. Ltd., Defendant JBX argued Plaintiff Island’s discovery requests were untimely because Island served the requests after midnight EST on the last day for written discovery.  Island disputed JBX’s claim, arguing it timely served the discovery requests from California before midnight Pacific Standard Time (PST).

Under applicable Board Rules, parties must serve discovery requests in sufficient time to require responses before the close of discovery.  37 CFR § 2.120(a)(3).  In this case, discovery closed on January 2, 2021.  Because the answering party receives 30 days to respond to discovery requests, Island needed to serve its discovery requests on or before December 3, 2020.

Island served its discovery requests from California via email on December 3rd, at 11:43 PM PST, or 2:43 AM EST on December 4th JBX’s time.  JBX objected to the timeliness of the discovery requests and Island filed a motion to compel.

Eastern Time governs documents filed with the USPTO.  See 37 CFR § 2.195(a).  See also TBMP § 109.  The TTAB, however, noted that neither Rule § 2.195(a) nor TBMP § 109 reference an Eastern Time deadline, or any other time zone issue in the context of documents that are served between or among the parties, but that are not filed with the TTAB.  [Opinion, at p. 4].  For discovery, timeliness is determined on when a document is served, not when it is received.  37 CFR § 2.120(a)(3).

Trademark Rule 2.119, which governs the requirements for service, does not state whether a specific time zone controls the timeliness of service or whether timeliness is based on the serving party or the receiving party.  37 CFR § 2.119.  The TTAB, however, concluded that a review of its practice demonstrates that the date of service is determined in terms of when the document is transmitted for service.  [Opinion, at p. 5].  “In particular, ‘[w]henever a party to an inter partes proceeding before the [TTAB] is required to take some action within a prescribed period of time after the service of a submission upon that party by another party to the proceeding, and the submission is served by first-class mail, Priority Mail Express®, or overnight courier, the date of mailing or of delivery to the overnight courier will be considered the date of service.’”  TBMP § 113.05.

The TTAB further noted that it also permits a party who, because of a technical problem or extraordinary circumstances cannot serve discovery by email, to serve its discovery by a manner described in Trademark Rules 2.119(b)(1)-(b)(4).  37 CFR § 2.119(b)(1)-(b)(4).  See also TBMP § 403.02.  Thus, a party who meets the requirements to serve discovery requests by, for example, overnight courier will have timely served its discovery requests if it delivers them to the overnight courier thirty-one days before the close of discovery. [Opinion, at p. 6]. “And this is so even though the responding party would receive the discovery requests thirty (rather than thirty-one) days before the close of discovery.”  [Id.].  The answering party’s responses are still due based on the date of service, even though it does not receive the benefit of additional time to respond due to the manner of service.

Based on this analysis, the TTAB concluded that the date of service is to be based on when the document in question is submitted for transmission of service.  [Id.].  Island served its discovery requests by email from California.  Thus, the time zone in California applied to determine the timeliness of service of the discovery requests.  Because Island served the requests on December 3rd before midnight PST, the TTAB concluded Island timely served the discovery requests.  [Id.].

The case is Island, LLC v. JBX Pty. Ltd., 2021 USPQ2d 779 (TTAB 2021) (precedential).

Recently, the Federal Trade Commission (“FTC”) issued a new rule to prevent “Made in USA” labels from being used fraudulently. This new rule codifies the FTC’s policy which requires products which are labeled as “Made in USA”, to be supported by proof that all or virtually all of the product is made in the United States. Additionally, the product must be made from materials which are sourced from U.S. manufacturers. This new rule also expands the remedies which the FTC is authorized to seek, including commencing a civil action to seek civil penalties. Any product which represents that it is made, manufactured, built, produced, created, or crafted in the United States, is covered under this rule.

The FTC’s rules have gotten more stringent when it comes to “Made in USA” labels because of the meaning that these labels have. These labels signal a sense of national pride and communicate that the brand holds itself to certain standards. Brands which falsely use these labels can water down the meaning of what it means to be “Made in USA”. However, this new rule will require any person who tries to advertise a product labeled as “Made in USA”, to provide proof that the entire product or substantially all of the product is of domestic origin. It is possible that the enactment of this rule could slowly return “Made in USA” to its original meaning.

The Food and Drug Administration (“FDA”) and U.S. Department of Agriculture (“USDA”) also have rules regarding “Made in USA” labeling claims. Because both of these agencies have primary jurisdiction over their own regulated products, they can choose whether or not they would like to change their requirements to conform to the requirements set out in the FTC’s new rule.

Now more than ever, it is especially important that brands meet the FTC’s requirements prior to marketing a product as Made in USA or in America. Otherwise, brands run the risk of facing civil penalties. The FTC’s rule will be active 30 days after publication in the Federal Register. For more information and detail on the FTC’s new rule, you can visit the rule here.

Throughout this summer, the United States Patent and Trademark Office (USPTO) is offering its series of virtual webinars dubbed “Trademark Basics Boot Camp.”  The series appears to be tailored to small business owners and entrepreneurs and is broken up into eight modules focused on discrete topics.  Registration for the upcoming modules listed below, as well as access to other past and future modules, is available here.

The USPTO is also offering a separate upcoming event geared toward the restaurant industry.  The free two-hour virtual event, titled “Don’t burn your brand: intellectual property for restaurants,” is set for July 19.  It will include an overview of trademarks, patents, copyrights, and trade secrets in the food-service industry and will cover topics ranging from trademark basics to choosing, filing, and registering trademarks.  Registration for the event is available here.

Don’t miss these opportunities for free information and advice on trademarks and other intellectual property – valuable ways to protect and promote your brand – from the USPTO itself.

The NCAA announced that it will allow student-athletes throughout the country to profit from their name, image, and likeness (“NIL”) starting on July 1, 2021, which marks a major shift from the NCAA’s longstanding amateurism model.  So far, nine states—including Alabama, Florida, Georgia, Mississippi, New Mexico, Texas, Kentucky, Ohio, Oregon, and Illinois—have signed NIL legislation to take effect on July 1.

Neither the NCAA nor the federal government have addressed NIL laws, which has made for a fragmented model that varies from state to state.  For example, Georgia’s NIL law allows for team pooling arrangements whereby student athletes who receive compensation for the use of their name, image, or likeness agree to contribute a portion of the compensation they receive to a fund for the benefit of other student-athletes.  Mississippi’s NIL law even authorizes student-athletes to hire agents to negotiate marketing opportunities.

Some student-athletes have already started taking advantage of this seismic shift in college sports.  University of Wisconsin quarterback Graham Mertz recently tweeted a video of his new trademark, and University of Iowa basketball player Jordan Bohannon tweeted a picture of his new apparel brand.

It will be interesting to see how NIL laws change the college landscape.  Recruiting is one of many areas where NIL laws may have an effect.  For example, a highly touted prospect with endorsements deals on the horizon might be swayed from School A to School B if School B is in a state with a less restrictive NIL law.  It will also be interesting to see how colleges and universities respond to their student-athletes’ outside endorsements.  What if a student-athlete signs a contract that conflicts with school policy or with the school’s pre-existing sponsors?  Navigating  NIL laws may present some obstacles, and might very well add a unique layer of intrigue and drama to college sports this season.

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As you may recall, the early days of the COVID-19 pandemic saw a short supply of various products. Toilet paper, alcohol wipes, hand sanitizer, masks, and even flour were in such high demand, that some consumers would need to visit half a dozen stores before finding such precious commodities. Due to these extreme shortages coupled with extreme demand, new concerns arose regarding predatory pricing practices and misleading advertising that could result from COVID-19. This led Congress to enact what is known as the COVID-19 Consumer Protection Act which, by its very text, is meant to prohibit deceptive acts or practices in connection with the novel Coronavirus.

The aforementioned act provides the Federal Trade Commission (“FTC”) with the exclusive authority to enforce its provisions. Just recently, the FTC began to exercise that power. For example, in April of 2021, the FTC brought its first action under the COVID-19 Consumer Protection Act when it charged Eric Anthony Nepute and Quickwork LLC for deceptively marketing products as proven to treat or cure COVID-19.

Now, just yesterday, the FTC has brought its first action under the Act against a PPE related entity. Specifically, the FTC filed a complaint in the Middle District of Florida against Frank Romero, also doing business as multiple other entities, for falsely advertising an ability to quickly deliver N95 facemasks to consumers. For example, Romero on multiple occasions failed to deliver any PPE at all, failed to deliver PPE in a timely manner, failed to issue any refunds, and at times even delivered cloth masks despite promising delivery of N95 masks. As a result, the FTC filed an action against Romero for violating both the COVID-19 Consumer Protection Act and the FTC Act. Likely, these exemplar cases are only the beginning of cases that the FTC may bring under the COVID-19 Consumer Protection Act.

The news cycle remains dominated by COVID-19 issues.  One thing we’re watching is whether and to what extent the World Trade Organization (WTO) will waive intellectual property (IP) protections for vaccines in an attempted effort to increase global access to vaccines.

A broad proposal for waiver on enforcement of IP related to COVID-19 prevention, containment, and treatment, requested by India and South Africa and supported by many developing countries, has been pending for months at the WTO.  The United States originally opposed the waiver but, just in May, the Biden administration announced that it would support a temporary waiver on IP protections for COVID-19 vaccines (a seemingly narrower waiver than that proposed).  Others like the United Kingdom and European Union members still continue to oppose a waiver, with concerns of whether a waiver will actually boost vaccine supply.  In fact, in early June, the European Union proposed its own plan to increase global COVID-19 vaccine distribution, focusing on increasing production, decreasing export restrictions, and issuing limited licenses.

During discussions in early June, the WTO council overseeing the issue sought the competing proposals and an agreement from the members by the next meeting in mid-July.  We will be watching to see how this plays out.

While the NFL’s Washington Football Team decides on a more permanent name (likely in 2022), its hopes of trademarking its current moniker have been put on ice.  On June 18, 2021, the United States Patent and Trademark Office (“USPTO”) issued an initial refusal of the Team’s application to trademark “Washington Football Team,” nearly a year after the mark was applied for.

The USPTO’s reasoning was twofold.  First, the USPTO reasoned that the applied-for mark was “primarily geographically descriptive”—i.e., that the mark was too generic.  Second, the USPTO determined that “Washington Football Team” too closely resembled a preexisting registration for the “Washington Football Club,” a trademark applied for by Martin McCaulay.  Mr. McCaulay is a longtime fan of the Team who holds several trademarks for Washington-related team names, including the “Red-Tailed Hawks” and the “Americans,”  Because of these issues, the Washington Football Team may have a difficult time preventing others from copying its name on apparel and other merchandise throughout the 2021 NFL season.

The Washington Football Team has until December 18, 2021, to file a response to the USPTO.  By that time, the Team will be thirteen games into the now seventeen-game NFL season.

 

On May 20, 2021, the TTAB issued a lengthy and comprehensive precedential opinion canceling Proof Research, Inc.’s registration for the trade dress of a gun barrel (as shown below) on grounds of de jure functionality under Section 2(e)(5).

The registered trade dress “consists of trade dress applied to gun barrels formed with a mottled pattern of irregularly-sized, rippled patches, resembling a quilt having striated patches of varying shapes and reflectivity depending on the ambient light source and viewing angle.”

Petitioner McGowen Precision Barrels, LLC sought cancellation of the registered trade dress on five different grounds—namely that (1) the mark “comprises matter that, as a whole is functional,” (2) the Registration “encompasses more than one mark,” (3) the “trade dress encompassed in [the] Registration … is generic,” (4) the trade dress is aesthetically functional, and (5) the Registration was obtained through fraud. [Opinion, at p. 2]. The TTAB did not reach grounds #2-5, relying, in large part, on Proof Research’s own utility patent to find the trade dress functional. [Id., at p. 3].

Significantly, the parties did not dispute carbon fiber composite barrels provide various functional benefits for rifles.  Instead, the focus of the dispute centered on whether the specific appearance of Proof Research’s carbon fiber composite barrels is functional as a natural by-product of the manufacturing process or whether it is  the result of aesthetic efforts to create a trade dress consumers associate with Proof Research.

The TTAB began its analysis noting, “A product design or feature is considered functional in a utilitarian sense if: (1) it is ‘essential to the use or purpose of the article,’ or (2) it ‘affects the cost or quality of the article.’ [Id., at p. 37 (citing TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982))].  If functionality of the trade dress is established under the Inwood test, an analysis of all types of Morton-Norwich evidence is unnecessary. [Id., at n. 193].

In reaching its decision that the trade dress was functional, the TTAB relied heavily on Proof Research’s utility patent, citing well-settled law that “‘[a] prior [utility] patent … has vital significance in resolving the trade dress claim’ and ‘is strong evidence that the features therein claimed are functional.’” [Id., at p. 39 (quoting TrafFix, 58 USPQ2d at 1005)].  Following a thorough examination of the claims in Proof Research’s utility patent, the TTAB held that Proof Research’s trade dress was the result of a manufacturing process that followed a specific claim of the utility patent:

The TTAB further found the particular appearance of the trade dress resulted from Proof Research’s implementation of the “best mode” for practicing its patented invention. [Id., at pp. 40-41]. “In other words, the appearance of the barrel is dictated by its function.” [Id., at p. 56].

The TTAB ultimately concluded, as follows: “‘[W]e view the disclosures in the [’117] Utility Patent as so strong as to be sufficient, by [themselves], to sustain the functionality refusal without consideration of the other Morton Norwich categories of evidence.’ In re OEP Enters., Inc., 2019 USPQ2d 309323, *10-11 (TTAB 2019). See also Grote Indus., 126 USPQ2d at 1203. Simply put, the patent evidence, combined with the evidence regarding Respondent’s manufacturing process, is dispositive on the issue of functionality.” [Id., at p. 65]. In view of this analysis the TTAB cancelled the Registration under Section 2(e)(5).

The TTAB’s decision is a stark reminder that a risk in applying for utility patent protection and trade dress protection for the same product exists because of the inherent tension between the utilitarian usefulness required for utility patent protection, and non-functionality of the same design features required for trade dress protection

The decision is McGowen Precision Barrels, LLC v. Proof Research, Inc., Cancellation No. 92067618 (TTAB May 20, 2021).