Posts in Trademarks

By Suzanna M. M. Morales
Download vCard

The Fourth Circuit Court of Appeals recently upheld a district court decision finding that BOOKING.COM can be registered as a trademark because it is not generic for hotel reservation services.

In a prior blog post, we discussed the lower court’s decision. The protection of the mark BOOKING.COM hinged on whether the term was generic or descriptive.

The primary significance of the mark as a whole is descriptive, not generic

In the recent appeals court decision, the Fourth Circuit held that the U.S. Patent and Trademark Office (USPTO), in determining whether a term is entitled to trademark registration, always bears the burden of showing that the proposed mark is generic. The court then held that the USPTO had not met its burden of demonstrating that the mark BOOKING.COM as a whole was generic for hotel reservation services.

Although courts may consider the meanings of each constituent part of the mark – here “booking” and “.com” – the Fourth Circuit held that court also must consider evidence of how the public primarily perceives the mark as a whole.

The Fourth Circuit rejected the lower court’s position that “.com” alone has any source-identifying significance when added to a second-level domain (i.e., booking), instead focusing on the public perception of the mark as a whole – “booking.com.” The court also rejected the converse position of the USPTO that adding two generic terms like booking and .com together always results in a generic term.

The court noted that considering the primary significance of the mark as a whole apart from its components is particularly important for domain names, where “the relevant public may recognize domain names to indicate specific locations on the internet.” However, the unique meaning of a domain name as an internet location may cut against the owner’s ability to protect its mark: “Given that domain names are unique by nature and that the public may understand a domain name as indicating a single site, it may be more difficult for domain name plaintiffs to demonstrate a likelihood of confusion.”

Even a winning applicant to pay USPTO’s attorneys’ fees

In our prior article on this case, we also discussed the implications of a rejected trademark applicant’s choice between two options for challenging the USPTO’s decision: 1) appealing to the Federal Circuit Court of Appeals, where the parties are confined to the evidence of record before the USPTO, or 2) filing a new suit in federal district court, where the parties can present new evidence but the trademark applicant may be required to pay the USPTO’s expenses.

Here, Booking.com chose to file a new suit in district court. While the company benefited from the ability to present new evidence – particularly consumer survey evidence – it also was required to pay the USPTO’s expenses, including attorneys’ fees, regardless of the outcome of the matter.

In the recent decision, the Fourth Circuit upheld the requirement for Booking.com to pay more than $76,000 in expenses of the USPTO, including more than $51,000 in attorneys’ fees. In 2018, the Federal Circuit held that a similar provision of the patent law requiring the applicant to pay “all the expenses” of the USPTO did not include the USPTO’s attorneys’ fees. The Supreme Court is currently deciding whether to grant a petition for certiorari to hear that case. In the trademark context of the BOOKING.COM case, the Fourth Circuit upheld the payment of attorneys’ fees based upon current Fourth Circuit precedent.

By Jason H. Kasner

The United States Supreme Court will soon hear arguments in a case that may significantly alter the face of trademark law for the second time in less than two years.

The case, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office v. Erik Brunetti, addresses a portion of Section 2(a) of the Lanham Act which authorizes the U.S. Patent and Trademark Office (“USPTO”) to refuse registration of “immoral . .  or scandalous” marks.

The USPTO refused to register the trademark “FUCT” for various clothing items on this basis, and Erik Brunetti, the owner of the “FUCT” mark, appealed the refusal to the U.S. Court of Appeals for the Federal Circuit.  The appeals court struck down the ban on “immoral” and “scandalous” marks, noting that, despite the “vulgar” nature of the “FUCT” trademark, “[t]he First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”  The U.S. government appealed this decision to the Supreme Court which must now determine whether the USPTO may continue to refuse registration to marks it considers “immoral” and/or “scandalous.”

Many will recall the repercussions of the 2017 Supreme Court case, Matal v. Tam, which found a section of the statute allowing the USPTO to refuse trademark registration for “disparaging” marks (Section 2(a) of the Lanham Act) to be an unconstitutional violation of the First Amendment.  Although that particular case addressed the USPTO’s refusal to register the mark “The Slants” by members of a rock band (who are Asian-American) by the same name, the fallout from that decision famously brought to a close the long-standing battle between the Washington Redskins and the USPTO by removing the statutory ban on registration for the term REDSKINS.

In sum, the government’s position in the current case is that “immoral” and/or “scandalous” marks can be treated differently than “disparaging” marks and the Slants decision is not conclusive of whether the statutory ban on “immoral” and/or “scandalous” marks is facially unconstitutional. Brunetti argues that the same principles of free speech that led to the removal of the ban on “disparaging” marks should likewise apply to “immoral” and/or “scandalous” marks.  That is the question now before the Supreme Court.

If the U.S. loses the appeal, the long-standing ban on registration of “immoral” and/or “scandalous” marks will be lifted, and a flood of trademark applications to register sexually explicit, vulgar and profane marks will likely follow. Trademark owners should be aware that a backlog of the examination of pending trademarks is likely while the USPTO deals with this influx.  The decision may open the door for trademark owners with arguably “immoral,” “scandalous” or “vulgar” marks to finally enjoy the full benefits of a federal trademark registration and enhance their ability to protect their brands.

By Suzanna M. M. Morales
Download vCard

If you or your company owns a U.S. trademark registration, eventually you may hear that you have the opportunity for the registration to become “incontestable.” “Incontestable” sounds impressive, but what does it mean? And is it worth it for you to pay the extra filing fee to the U.S. Patent and Trademark Office (“USPTO”) to obtain that designation?

First, what is incontestability? In the United States, trademark rights are established through use. This differs from many other countries, where it is necessary to have a registration to enforce the brand owner’s rights. That said, registration plays an important role in enforcement of trademark rights, as well as to put others on notice of the company’s trademark rights.

When the USPTO acknowledges a claim of incontestability, the registration is then conclusive evidence of the owner’s exclusive rights in the mark, subject to some specific conditions and defenses. 15 U.S.C. § 1115(b) This can be quite valuable if the trademark owner needs to go to court to enforce its rights. (In contrast, a registration that has not become incontestable is prima facie evidence, which means it can be rebutted.) An incontestable registration also cannot be challenged on the basis that the mark merely describes the goods or services. Park ‘n Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985).

Requirements

So how does your registration become incontestable? The registrant must submit a signed declaration stating: a) that the registered mark has been in use for the goods or services covered by the registration continuously for a period of five years immediately preceding the declaration; b) that there has been no decision in court or before the USPTO adverse to the owner’s rights in the mark; and c) that there are no pending cases before the USPTO or a court that would affect the owner’s rights.  There is an additional USPTO fee for filing the declaration of incontestability, which is currently $200 per each class of goods and services in the registration.

Unlike other filings before the USPTO that are required to maintain one’s registration, incontestability is not mandatory. In addition, there is no deadline for filing for incontestability. Although the declaration of incontestability frequently is filed between the fifth and sixth year of registration to coincide with a mandatory maintenance deadline, the trademark owner may claim incontestability any time the registration meets the requirements.

Conclusion

Incontestable status can be beneficial if you ever need to enforce your rights against an infringer. For a relatively low USPTO filing fee (the current USPTO fee for claiming incontestability is $200), you’ll have these protections in your pocket should you ever need them, along with the right to call your registration “incontestable.”

By David A. Jones
Download vCard

Trademark infringement, briefly, is the unauthorized use of a trademark or service mark of another in a manner that is likely to cause consumer confusion. In some cases, affirmative defenses may excuse the otherwise infringing actions of a later user, and permit that later user to continue its use of the protected mark. One of the more common defenses is “fair use.”

In general, fair use can fall into one of two categories. Descriptive fair use, as the name suggests, occurs where a later user makes use of a trademark to describe the user’s products or services, rather than for the purpose of indicating the source or origin of a particular good or service. This is often referred to as “classic” fair use. For a real-world example, SWEETARTS is a registered trademark for candy. The then-owner of the mark sued Ocean Spray for using the term “sweet-tart” to describe the taste of its cranberry juice. The court found Ocean Spray’s use of the term “sweet-tart” to be descriptive fair use and thus not an infringement. See Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995).

What is nominative fair use?

The second category is nominative fair use. In the case of nominative fair use, the second user deliberately uses the registered trademark of another, but does so for the purpose of referring to the goods or services of that trademark owner. For instance, it would be odd and cumbersome for every football fan to have to refer to “the football team from New York that wears red, white and blue uniforms” when you can just say the New York Giants. This type of fair use also encompasses things such as comparative advertising, media reporting, commentary and parody.

Nominative fair use generally is permissible as long as (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark as is reasonably necessary to identify the product or service is used and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. See, e.g. New Kids on the Block v. News Am. Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

Limitations on nominative fair use

Nominative fair use does have its limitations, however. It is a doctrine that was created through case law. In other words, there is no law or statute that specifically carves out a nominative fair use exception. As a result of being a judicially-driven concept, the doctrine is not universally applied across all federal courts.

For example, disclaimers are often used to state that the party naming another’s trademark is not associated with the trademark owner, i.e., “NEW YORK GIANTS is a registered trademark of New York Football Giants, Inc.” or “XYZ company is not affiliated with the NEW YORK GIANTS football team.” Most courts view the use of disclaimers favorably, but even that is by no means a “Get Out of Jail Free” card. How prominent is the disclaimer? What does it say? Where is it placed? Is it legible? These are all things to consider when analyzing whether any particular use qualifies as a nominative fair use. (Both types of trademark fair use differ from fair use of copyrighted creative works, which we discussed in a prior blog post.)

In our current global-commerce society, it is also important to remember that fair use is not a universal concept that all countries recognize and treat the same. For instance, a comparative advertising campaign being launched in Europe must comply with the European Union directive governing comparative and misleading advertising.

In sum, if you are intending to make use of the trademark of another, you must tread carefully. Do not use any more of the mark than is necessary. If at all possible, try to use the trademark in a narrative form rather than “as a trademark.” This includes things such as making sure that if you are using someone else’s mark, it is not in a different color or font size or style than the surrounding text. As described above, disclaimers can help, but be careful how they are drafted, and remember that a disclaimer alone is not guaranteed to save an otherwise infringing use.

If you have questions regarding a use you intend to make of someone else’s trademark, or if you feel that someone else has made an improper use of your trademark, please feel free to contact our office. We will be happy to review it with you and discuss any relevant issues and potential pitfalls.