USPTO Trademark Trial & Appeal Board (TTAB)

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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.

The short answer is that ™ is supposed to mean someone just thinks something is a trademark. ® is supposed to mean that a government trademarking authority has agreed that it could be a trademark and has issued a registration certificate.

Registered trademark in a red background
Copyright: silvia / 123RF Stock Photo

Getting your trademark registered by a government trademarking authority always takes time and money. It is fitting that at the end of the process, if you are successful, you will receive a certificate that looks almost like a graduation certificate. In the United States, the paper certificate bears a gold embossed seal. And you deserve it! You spent time, money and often had to prove to skeptical bureaucrats the worth of your brand.

If you jump through these hoops, it can be irritating to see others wrongly proclaim that their trademark is registered with the registration symbol ® when they have not. But you can only take action against this misuse if you can prove the  symbol misuser did so deliberately–that it intended to deceive or mislead the public or the USPTO. This can be tricky to show.

For example, last month the Trademark Trial and Appeal Board dismissed an opposition in which the owners of two similar trademarks (FACETS versus PHACET) fought over which one used and had the right to register its trademark for software. The company applying for  the FACETS registration had successfully registered FACETS for several types of services but had not yet been granted a registration for the trademark in connection with software (the trademark had been registered a number of years ago for software but that registration had expired). Despite that, it used the registration symbol with the trademark In SEC filings to describe not only its services (correctly, since they had registered) but also its software (allegedly fraudulently because FACETS was not currently registered for software).

SEC filings are sworn statements but that’s not enough to make them evidence of symbolic fraud in the TTAB’s eyes, at least in this case.

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.

Source: http://thettablog.blogspot.com

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.

Source: http://thettablog.blogspot.com

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:

door
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.

The word “cars” is a synonym for “automobiles” (go figure!). But in the field of “software for capturing road data and determining safe curve speeds for automobiles, as well as hardware for capturing telemetry and road data,” the word “cars” as a trademark impermissibly describes the goods and services in that field, according to the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. The Board recently affirmed a Trademark Examining Attorney’s refusal to register the CARS mark as a result.

When a mark is used on or in connection with goods or services, the mark cannot be “merely descriptive” of those goods or services under the Lanham Act. “Merely descriptive” means the mark immediately gives the viewer information about some characteristic of the goods or services with which the mark is used.

“Suggestive” marks, on the other hand, don’t directly describe the goods or services. Those marks are allowed because they require some imagination or thought by the consumer to realize what’s being offered (e.g., SWEETARTS for candy).

The Board analyzes only the identification of goods and services in the application and not what the record before the Board reveals about the goods and services.

In affirming the CARS cancelled registration, the Board considered evidence establishing that “safe curve speed determinations are done for cars, and that cars often are used to gather the necessary information for such determinations, in that hardware and software installed in cars driven over the roads at issue collect the information.” Other companies in that field would use the term “cars” to describe their services in relation to curve speed determinations. The Board found that the Applicant even used the description “for automobiles” in its application – a signal that “cars” is a major part of describing curve speed determinations.

The Board was also persuaded by evidence showing that the word “cars” is generally used in the automobile software field, noting three other similar software’s websites used “car” and “cars” in describing software which collected data on a car’s speed while it travelled or monitored engine performance and functionality.

The Board rejected the Applicant’s argument that CARS constituted “a complete, indivisible hardware and software unit” used by state and local governments to gauge speed data because that description never made it to the actual application, so the Board could not consider that description.

The Board also dismissed the Applicant’s “double entendre” argument that CARS was an acronym for “Curve Advisory Reporting System.” The Applicant failed to submit evidence that consumers actually knew that CARS meant anything but a synonym for automobiles, and the application only included the CARS mark and not the words in the acronym. The Board could only assess the meaning of the mark from the perspective of what the consumer actually sees – CARS.

The Board concluded that consumers would see CARS and understand that the features of the hardware and software involve cars and are used in cars, making the CARS mark merely descriptive and un-registerable as a trademark.

Potential applicants should come up with marks that are at least suggestive and not descriptive of the products and services listed in the application. While a suggestive mark is stronger and more registerable, a descriptive mark that has acquired distinctiveness may also be registered.

For considerations in selecting a mark, visit the International Trademark Association (INTA) page on developing a list of potential trademarks.

Randall J. Collins is an Intellectual Property Associate in Fox Rothschild’s Philadelphia office.

When is a trademark not a trademark?  When it no longer performs the source identification function for which it was adopted.  In a recent decision of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, the Board cancelled the trademark registration (and refused a currently pending application) for the logo “I♥DC” covering various merchandise ranging from clothing to tote bags to stuffed animals.

I (Heart) DC 1

I (Heart) DC 2

As grounds for the cancellation, the Board found that the mark no longer served its purpose of identifying the source of the goods, but instead was perceived as an expression of enthusiasm rather than a source indicator for the goods. In finding the wording no longer functioned as a trademark, the Board relied upon widespread ornamental use of the logo by third parties for a long period of time and evidence showed that consumers associated the slogan “as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.” – even despite extensive use of the slogan on product hang tags (traditional indicators of trademark use).  Here the Board went so far as to recognize that many other “I ♥…” expressions also fail to function as a trademark (but instead simply imply an expression of enthusiasm).

Of course, the trademark owner did herself no favors, admitting that she did not create the design, that she was aware of other third party vendors using the slogan when she originally filed; that her rational for filing the application was to prevent copying of the products affixed (not necessarily the trademark); and when asked what the logo meant, she responded that “they love D.C” and that the customers buy the goods “to remember that they’ve been there”.  All candid responses, and all overwhelming support for a finding that “I♥DC” failed to function as a trademark.

Curiously, while no love exists for I♥DC trademarks, some 200 miles up I-95, we find ourselves in an alternate universe, where I♥NY has for decades stood as the focal marketing piece and perhaps one of the most famous brands associated with the State of New York.  In fact, the brand is so well known, aggressively enforced, and strategically licensed, that its owner, the New York State Department of Economic Development has its own website dedicated to the brand and licensing opportunities.  What a difference!

Although the facts overwhelmingly tipped against I♥DC (and its individual owner), the decision raises questions about “I♥[insert geographic location]” trademarks generally.  Don’t they all act as an “expression of enthusiasm, affection or affiliation with respect to the [insert geographic location]” – New York being no different?  And apparently affixing the logo onto hang tags is not enough to show “trademark use”.  So where is the line?

While the New York State Department of Economic Development may withstand challenges based on historic policing efforts, use on a wide range of goods and services, and developing an entire licensing program; owners (public and private) with smaller budgets and shorter histories likely face the same dangers and attacks as I♥DC.  Police your mark, keep ornamental use to a minimum and have a documented history of how you use your mark as an indicator of source of the product, not just as a cute slogan that you love a particular city.  And for those looking to enter the “I♥[insert geographic location]” branding market (whether entrepreneur or local government), check the registry, investigate your marketplace for preexisting use, and study this case for what to do (and not to do) in your use of the brand – as opportunities exist as both first adopter or simply on the coattails of prior owners failing to treat their brand as anything more than a slogan showing “enthusiasm” for the location.

There has been much debate and discussion over whether the Redskins—Washington D.C.’s professional football team in the National Football League—should voluntarily change their name under the view that it disparages Native Americans.  In May, the Washington Post reported that a poll of Native Americans across the country found that nine in ten Native Americans are not offended by the Redskins name.

American football
Copyright: tiero / 123RF Stock Photo

Regardless of what any poll may or may not suggest, there is also a separate debate on this issue—whether the Redskins should lose their federally-registered trademarks in the Redskins name.  The basis for this debate is section 2(a) of the Lanham Act, which bars registration of disparaging words or phrases.  And central to the debate is the First Amendment’s guarantee of the right to free speech.

In 2015, when a federal district court affirmed the United States Patent and Trademark Office (“USPTO”) cancellation of a number of the Redskins trademarks, it seemed almost certain that the Redskins would lose their trademarks.  But then the Federal Circuit ruled in a separate matter—related to the rock band the Slants—that section 2(a) is itself an unconstitutional restriction on the right to free speech.

The decision related to the Slants was appealed to the United States Supreme Court, and now the question of whether section 2(a) can prohibit the Redskins trademarks may be headed to the same place.  Initially, the Redskins filed an appeal of the cancellation of their trademarks to the Fourth Circuit Court of Appeals.  But in April, shortly after the Slants case was appealed to the Supreme Court, the Redskins filed a petition asking the Supreme Court to hear the case before the Fourth Circuit issues a decision in light of the fact that the Supreme Court may hear the issue in the case involving the Slants. Although the Redskins team apparently believes that both cases should be decided by the same court, particularly given the sums of money it has spent building the Redskins brand, the government disagrees that the Supreme Court should hear the case.  According to the New York Times, the Supreme Court only occasionally allows such a “certiorari before judgment.”

The outcomes of this case and the Slants case, whether ultimately decided by the Supreme Court, may have a significant impact on the ability to register disparaging or offensive trademarks in the future.  If section 2(a) is found by the Supreme Court to be unconstitutional, the USPTO would likely begin registering trademarks widely considered offensive or disparaging.