Earlier this month, at the request of the United States Patent and Trademark Office, the Federal Circuit Court of Appeals officially set a trademark registration requirement by making an earlier ruling precedential.  That previously-unpublished ruling, which affirmed an earlier Trademark Trial & Appeal Board ruling, clarified the specific types of sales transaction information that are needed on a trademark applicant’s website to satisfy the “use in commerce” requirement for obtaining a trademark.

In evaluating “use in commerce,” the Federal Circuit distinguished between a website that merely advertises a product and a website that provides information important to buying the product.  Ultimately, the Federal Circuit affirmed that a website would need to display the product’s price range, minimum quantity requirement, acceptable payment methods, and shipping method.

As a result of this ruling, each trademark applicant should ensure that the proper detail is available on its website before filing for trademark registration when it plans to rely on its website to satisfy the “use in commerce” requirement.

 

I only (very briefly) fell for one April Fools’ prank this year.  Yesterday the University of Wisconsin tweeted what appeared to be a press release announcing that fans could no longer perform their “Jump Around” tradition at home football games due to concerns regarding seismic impacts.  After realizing my mistake and the fact that it was April 1, I wondered what company pranks I missed throughout the day.  It turns out there was no shortage.  Like every year, multiple brands took the opportunity yesterday to announce hilarious new product features and company changes, all in the spirit of light-hearted marketing and (presumably) increased consumer and media attention.  Hasbro announced that Mr. Potato Head would become Mr. Avo Head, which surely sparked the interest of avocado-loving millennials.  Red Lobster announced that it would be converting its straws to red licorice, which many tweeters hoped was true.

For additional examples of brands pulling April Fools’ pranks and a history of such pranks, read this online Vox article titled “Can a brand pull a prank?.”  For a list of bests from this year, read this online Time article titled “Here Are the Best April Fools’ Day Pranks of 2019.”

Earlier this week, the European Parliament voted in favor of a directive overhauling the European Union’s online copyright rules.  These controversial changes, following extensive lobbying and a 348-274 vote, implicate an intersection between regulators, content creators/authors, and internet companies like online platforms and news aggregators (think: social media sites, internet news sites).  The changes seek to impose liability on online platforms when users upload material that infringes on another’s copyright, a key difference from the U.S.’s Digital Millennium Copyright Act, which protects internet companies that promptly remove infringing content.  The changes would result in internet companies needing to monitor for infringing content and news aggregators being required to negotiate licensing deals with creators (i.e. paying for the articles they publish/share).

34126235 - copyrightProponents say the changes protect creators and place necessary obligations on internet companies; opponents believe the changes go too far and would limit privacy and freedom of expression.  Opposition to the changes continues to mount, as final approval and legislation is still subject to EU Ministers and member states.

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With the 2019 NCAA Men’s and Women’s College Basketball Tournaments in full swing, most people probably aren’t thinking “hmm, I wonder if the NCAA owns any trademarks related to the Tournament?” But, maybe they should be.

To date, the NCAA owns over twenty-four trademarks related to its annual Basketball Tournaments. Unsurprisingly, those trademarks include such well-known phrases as “March Madness,” “Final Four”, “Elite Eight,” and “The Big Dance.” However, many would be surprised to learn that the NCAA has also trademarked such lesser-known phrases as “And Then There Were Four” and “68 Teams, One Dream.”

Primarily, organizations like the NCAA trademark non-generic phrases or slogans that are suggestive of their product (in this case, the Tournaments) in an effort to protect its rights in licensing, advertising, and its general reputation. With those goals in mind, the NCAA is not shy about protecting its trademark rights. In fact, the NCAA provides guidance on its website regarding its trademark rights, noting that the “NCAA must be vigilant against the unauthorized use of its trademarks, tickets and references to its championships.”

In particular, dealing with and working around these trademarks can pose a challenge for business owners. For example, each year bars and restaurants have the potential to see increased revenue during tourney time. Die-hard and casual fans alike come to such establishments to eat, drink, and watch the excitement of the tournament, potentially causing a boon to a business’s profit. However, potentially infringing on the NCAA’s trademark rights by, for example, using its trademarked terms to advertise to patrons can have very real negative consequences. As a result, business owners should be wary of using any terms that encroach on the NCAA’s trademarks, and should consider erring on the side of generic, non-suggestive advertising.

The USPTO is seeking to change its federal trademark laws for trademark applicants, registrants, and parties who have are domiciled outside the United States.  The proposed change would require applicants, registrants, and parties to hire a U.S.-licensed attorney for representation at the USPTO.  Additionally, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters would be required to provide their bar membership information and confirm their status as an active member in good standing.  U.S. attorneys meeting these qualifications could still represent foreign and domestic trademark applicants and registrants at the USPTO.

The proposed change is a response to the “increasing problem of foreign trademark applicants who purportedly are pro se and who are filing inaccurate and possibly fraudulent submissions that violate the Trademark Act (Act) and/or the USPTO’s rules.”  Foreign applications sometimes file applications claiming a mark’s use in commerce, but rely on mocked-up or digitally altered specimens that show the mark may not be in use.  Several of these applicants rely on advice or assistance from foreign individuals and entities who are not authorized to represent trademark applicants before the USPTO.

The USPTO also learned that U.S. attorneys have received emails from persons located in China and possibly other locations, offering to pay the attorneys to use their information in trademark filings.  The USPTO believes the solicitations are an effort to circumvent the U.S.-attorney requirement.

Public comments were accepted until March 18, 2019.  Whether the proposed change will be implemented is to be determined.

View the full text of the proposed change here.

SCOTUS has finally resolved the copyright registration debate but in doing so has emphasized a statute of limitations issue of which we should all be aware. This post follows up on my colleague’s prior posts (and here) regarding when a copyright holder can properly file a copyright infringement lawsuit.

Pursuant to 17 U.S.C. § 411(a), “no civil action for infringement of the copyright in any United States work shall be instituted until…. registration of the copyright claim has been made in accordance with this title.” As previously noted, some circuits have adopted a “registration approach,” which interprets the statute to mean a plaintiff must have a registration of their copyright before they can bring suit. Other circuits have adopted the “application approach,” holding that simply applying for and pursuing a copyright registration is all that is required to maintain a suit for infringement.

This circuit split was recently resolved by the Supreme Court, which adopted the registration approach. “[R]egistration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.” However, because an author gains its exclusive copyright rights immediately upon the work’s creation, SCOTUS clarified that “[u]pon registration of the copyright… a copyright owner can recover for infringement that occurred both before and after registration.” Notably, any recovery is still also dependent upon other factors such as when publication occurred, fair use, etc.

The Court acknowledged the time for registration has increased from one to two weeks in 1956 to several months today, due in large part to staffing and budgetary shortages. Because of the long wait to obtain registration, the petitioner, Fourth Estate, raised the concern that under the registration approach a copyright owner may lose the ability to enforce her rights if the Copyright Act’s three-year statute of limitations runs out before the Copyright Office acts on her application for registration. The Court dismissed petitioner’s fear as “overstated” because the “average processing time for registration applications is currently seven months, leaving ample time to sue after the Register’s decision, even for infringement that began before submission of an application.”

This raises an interesting and rare, if not novel, issue. By requiring a potential claimant to apply for and obtain a registration on their copyright before filing suit, the statute of limitations is, in essence, substantially shortened. That is, a copyright owner cannot wait until the end of the statute of limitations period to act. If she intends to sue, she must file an application for registration months before the statute of limitations expires. Moreover, even if the applicant acts diligently and submits their application months in advance, registration is entirely dependent upon a third party, the Copyright Office. Accordingly, the statute of limitations could pass before registration occurs through no fault or want of diligence on the copyright owner’s part. Because further budgetary shortages are entirely possible, if not likely, this problem is only likely to grow.

In recent years, the FTC has ramped up efforts to deter deceptive marketing practices on social media and customer review websites by issuing guidelines that apply to marketers and influencers alike and instituting enforcement actions against the guidelines’ most blatant violators.  These actions have largely placed the onus on brands and companies to ensure that any material relationships with influencers and reviewers who endorse or recommend their products or services are clearly disclosed, even if that means monitoring influencers’ social media accounts and review websites to confirm that all necessary disclosures have, in fact, been made.

Just this month, the FTC approved final settlements in enforcement actions against a PR company and a publisher in relation to a media campaign which used the mosquito-borne Zika virus outbreak and the 2016 Summer Olympics in Brazil to promote a mosquito repellant product.  According to the complaint, the companies hired athletes to promote the mosquito repellant on Instagram and other social media platforms.  The athletes’ social media posts failed to disclose that they were paid for their endorsements, and the companies themselves reposted many of the endorsements, again without any disclosure.  The complaint also alleged that the companies reimbursed employees and “friends” for posting positive reviews on ecommerce websites like Walmart.com.  According to the FTC, these practices constitute unlawful unfair or deceptive acts or practices.

The case highlights the FTC’s continuing interest in deterring deceptive marketing practices on social media by aggressively pursuing brands and companies that fail to ensure compliance with FTC guidelines.  Companies engaged in social media marketing can protect themselves by reviewing the FTC’s Endorsement Guides, which provide guidance for marketers and influencers alike.  Some takeaway points include:

  • Material connections must be disclosed.  Any “material connection” between an endorser and an advertiser must be disclosed unless it is already clear from the context of the communication.  A “material connection” is one that might affect the weight or credibility that consumers give the endorsement.  This could be a business or family relationship, a monetary payment, or the gift of a free product.
  • Disclosures must appear clearly across all devices and platforms.  Disclosures must be clear and prominent regardless of the device or platform that a consumer uses to view the post.  Understanding how consumers interact with posts differently depending on these variables is important because what works in one context might not in another.  For example, consumers viewing Instagram posts on mobile devices typically see only the first three lines of a longer caption unless they click “more,” which many users do not do.  As a result, any material connections must be disclosed above the “more” button.
  • Use plain, straightforward language.  The language used must also Disclosures are not effective unless they communicate the nature and existence of the material connection to reasonable consumers.  As such, disclosures should be in plain language that is as straightforward as possible.  Acceptable terms include “Ad,” “Advertisement,” “Paid Advertisement,” and “Sponsored Advertising Content.”  Commonly used terms that do not satisfy FTC guidelines include “#sp,” “Thanks [Brand],” and “#partner.”

Much like the sphere they are meant to regulate, the FTC’s rules for social media endorsements are still evolving.  Companies can protect themselves by keeping informed of changes to the Enforcement Guides and by regularly auditing their social media practices.

Yesterday the Food & Drug Administration (“FDA”) Commissioner announced a new plan for increased oversight over dietary supplements.  In his statement, the Commissioner noted how much the dietary supplement market has grown and how many consumers now take a dietary supplement on a regular basis, stating that “consumers need to have access to safe, well-manufactured, and appropriately labeled products.”

As a reminder, the FDA does not pre-approve dietary supplements like it does new drugs; however, it does require that dietary supplements be safe for their intended use and be properly labeled/advertised.  It is clear that the FDA is concerned with products being marketed as dietary supplements but being advertised as new drugs that can cure certain diseases or health conditions.  Indeed, the Commissioner’s statement indicates that, as part of this new effort, the FDA just sent a multitude of letters to companies whose products claim to prevent, treat, or cure Alzheimer’s, diabetes, or cancer.

While the FDA has numerous priorities related to dietary supplements, the first and foremost being consumer safety, advertising and labeling appear very important.  As always, manufacturers/sellers of dietary supplements should make sure that their products are safe, properly labeled, and advertised truthfully.

For a thorough discussion of the FDA’s increased dietary supplement oversight and resulting reactions, read the Washington Post’s recent article here.  As a reminder of the industries the FDA regulates and how, including dietary supplements, see my prior blog posts here and here.

The United States Patent and Trademark Office (“USPTO”) approved Campbell Soup Company’s (“Campbell’s”) application to trademark the word “chunky.”  Campbell’s filed an application with the USPTO back in May 2018.  In its application, Campbell’s cited to “massive unsolicited media coverage of chunky,” according to the Philadelphia Business Journal.  The word “chunky” has been parodied by pop culture on various outlets, including programs like Saturday Night Live, The Simpsons, Family Guy, and The Daily Show.  Campbell’s has also maintained a twenty-year partnership with the NFL.

According to the Philadelphia Business Journal, Campbell’s said the “chunky” trademark will be limited to connection with soups.  Using “chunky” in connection with other types of food will not be an issue.  “’Non-prominent, descriptive’ uses of the word — like ‘chunky-style’ — that aren’t a trademark or brand name also pose no issues.”  Campbell’s first used the word “chunky” back in 1969.  Since that time, Campbell’s said it has spent more than $1 billion in advertising soup products under the word “chunky.”  About 75 percent of consumers associate “chunky” with Campbell’s.

From beer to snacks to cars to tech, we love them all. Or, we love judging them all. Each year, we tune in to see which companies—both the old staples and the new blood—will shell out the cash for a Super Bowl ad.

Top 10 IllustrationThroughout breaks in the game (or cheating with an online search), we intently watch for laugh-out-loud quips, emotional storylines, and cringe-worthy moments, knowing “which was your favorite?” will be an office topic of conversation the following morning. There are things we anticipate (cute animals promoting products having nothing to do with animals), and things we don’t (our favorite celebs feeling like sell-outs). But that’s all part of keeping us entertained. And keeping us guessing.

Whether the advertisers ultimately yield a return on their investment matters none to we consumers who have come to expect—even demand—high-quality and creative commercials we love to hate every other day of the year. This is advertising at its finest. Particularly when the game itself is, well, rather boring.