Trademarks and Brands

Waving the Checkered Flag: Ninth Circuit Affirms Dismissal of Trademark Claims Arising from PlayStation Racing Games

The U.S. Court of Appeals for the Ninth Circuit this week summarily affirmed a dismissal, from two years ago, of trademark claims brought by flooring company VIRAG, S.R.L. (“Virag”) against Sony Computer Entertainment America, LLC (“Sony”).  In a three-page unpublished opinion, the appeals court held that Sony’s use of the “VIRAG” trademark as set dressing in its Gran Turismo 5 and 6 video games was protected by the First Amendment and immune from liability under federal trademark law.  The ruling’s brevity, however, should not detract from its significance.

In 2004, Virag, a global commercial flooring distributor, became a sponsor of the Rally of Monza, a Formula One auto race held in Monza, Italy.  Starting in 2006, the plaintiff’s “VIRAG” mark was displayed on a bridge over the Monza track for each race.  Virag claims that its name and trademark has not only become affiliated with its products, but also the rally.  Continue reading

Band Not Banned: High Court Finds Unconstitutional Trademark Office’s Basis for Refusal to Register THE SLANTS Trademark

On June 19, 2017, the U.S. Supreme Court handed down its much-anticipated decision in Matal v. Tam, 582 U.S. __ (2017), issuing a ruling that clarifies that the door is open to trademark registration to a new category of trademarks:  trademarks that may disparage others.

The facts that the Court looked at are relatively simple:  The Slants, a dance-rock band whose members are Asian-Americans, sought to register their name as a trademark.  Although the band argued that they chose the name because they were looking to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity, the U.S. Patent and Trademark Office (USPTO) refused to register the mark THE SLANTS on the ground that it was a derogatory or offensive term.  An appeal to the USPTO’s Trademark Trial and Appeal Board failed on similar grounds.  But a further appeal to the U.S. Court of Appeals for the Federal Circuit resulted in this case finding itself before the U.S. Supreme Court:  the majority of the Federal Circuit, sitting en banc, found that the USPTO’s basis to refuse to register THE SLANTS was unconstitutional. Continue reading

Elliot v. Google, Inc. (9th Cir. May 16, 2017): Internet Search Giant Dodges Grammar-Based Genericide of Its Ubiquitous Trademark

A panel of the U.S. Court of Appeals for the Ninth Circuit ruled this month that Google’s trademark has not lapsed into the public domain by becoming generic even though today’s digital vernacular uses “google” as a verb synonymous with searching the Internet.  As a general rule, generic terms used as trademarks are not protectable because they do not identify the product’s source.  Also, an otherwise valid trademark like “GOOGLE” may suffer death by “genericide” when the public “appropriates” the trademark such that the “primary significance” of the mark is as a generic name for a particular type of good or service rather than an indicator of the source of that good or service.  Classic examples of former trademarks that are now generic terms include aspirin, thermos, brassiere, and cellophane.  On the contrary, the term “google,” at least according to the Ninth Circuit, still stands strong as a brand identifier. Continue reading

#TRADEMARKS: Registration of Hashtag Marks

The #hashtag, once confined to Twitter, has become ubiquitous across virtually all social media platforms.  The hashtag (formerly known as the “pound” sign) has revolutionized the way information is organized, discovered, and shared online.  Social media users use hashtags – i.e., a keyword or phrase preceded by the hashtag symbol (#) – to identify social media posts or messages on a specific topic.  The hashtag functions as a searchable link, which can be clicked on to find other posts related to that specific topic.  The phenomenon is not just for millennials; brand owners have embraced the hashtag as a way to boost brand recognition, generate buzz around new products, engage with their consumers, and attract new ones.

It is no wonder that brand owners look to trademark law to protect their valuable hashtags.  The United States Patent and Trademark Office (“USPTO”) has recognized the registrability of “hashtag marks,” but the legal community is still grappling with the legal nuances of this trend-turned-staple.

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Cowan, DeBaets, Abrahams & Sheppard LLP is Pleased to Announce that Scott J. Sholder has Become a Partner of the Firm

Cowan, DeBaets, Abrahams & Sheppard LLP is pleased to announce that Scott J. Sholder has become a Partner of the Firm

Scott J. Sholder is a partner in the firm’s Litigation Group. Scott represents individuals and companies in the entertainment, traditional and digital media, sports, and consumer products industries. His practice focuses on matters involving copyrights, trademarks, the right of publicity, and contractual and business disputes.

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In re: Tam Take Two: Federal Circuit Strikes Down Disparagement Provision of Lanham Act § 2(a)

In May we reported that a panel of the U.S. Court of Appeals for the Federal Circuit had affirmed the USPTO’s denial of a registration for the trademark “THE SLANTS” to refer to an all-Asian-American rock band, but had, in a prescient “additional views” opinion, prompted en banc reconsideration.  A majority of the full Federal Circuit held last week that the provision of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a) (“Section 2(a)”) which prohibits the registration of “disparaging” trademarks violates of the First Amendment, and vacated the USPTO’s holding that Simon Shiao Tam’s mark was unregisterable.

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CDAS Attorneys Appointed to 2016-2017 INTA Committees

Cowan, DeBaets, Abrahams and Sheppard LLP Partner, Eleanor M. Lackman, and Associate, Joshua Wolkoff, have been appointed to International Trademark Association (INTA) committees for the 2016-17 term.

Ms. Lackman will serve on the International Amicus Committee. The committee provides expertise concerning trademark and other IP-related laws to courts and trademark offices around the world through the submission of amicus curiae  briefs or similar filings.

Mr. Wolkoff will serve on the Young Practitioners Committee. The committee develops services and programs specifically designed for young practitioners who wish to advance their careers in the trademark field.

Throwing the Challenge Flag: NCAA Athletes Successfully Demand Expansion of Publicity Rights

Two recent federal court decisions reflect a judicial willingness to extend the traditional bounds of publicity rights, affording both current and former National Collegiate Athletic Association (NCAA) athletes the opportunity to share in the revenues earned from commercial use of their names and likenesses in videogames, live game telecasts, and other licensed products. Under the NCAA rules currently in place, college athletes are required to effectively assign their publicity rights to the NCAA (and the schools for which they play). As a result, players are unable to participate in a licensing market valued at $4 billion per year. Both federal court opinions address the collegiate licensing market, and affirm that the right of publicity, along with federal antitrust law, undermines the validity of the NCAA’s current licensing program. Continue reading

Redskins Redux: In re: Simon Shiao Tam and the Fate of “Disparaging” Trademarks

Last year we reported on the hotly debated ruling of the U.S. Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) in Blackhorse v. Pro Football, Inc., which cancelled six trademarks belonging to the Washington Redskins football team on the grounds that those marks were disparaging to Native Americans.  While the district court appeal of that decision remains pending in the summary judgment phase, a new dispute concerning another racially charged trademark has paved the way for a potentially significant ruling by the full U.S. Court of Appeals for the Federal Circuit on the key underpinning of the Blackhorse case: the constitutionality of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a) (“Section 2(a)”).

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Fashion Brands Can’t Get a Royal Boost

In a rare precedential opinion, the Trademark Trial and Appeal Board (the “Board”) affirmed a refusal to register the trademark ROYAL KATE for use on cosmetics, handbags, bedding and apparel.  The Board found that this mark falsely suggests a connection with Kate Middleton, the Duchess of Cambridge and, more famously, wife of Prince William, and that it identified the Duchess without her consent.  The decision counsels fashion brands that the trademark office will not condone trading off of the fame of others, even when the mark sought is not such a person’s actual name. Continue reading

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