Posts in Trademarks

Trademark Considerations: When is a (Sur)Name More than Just a (Sur)Name?

By David Jones
Download vCard

It is not uncommon for a business owner to name their business or a product after themselves. You can see examples every day nearly everywhere you look: FOLGERS® coffee, FORD® cars, GOODYEAR® tires, DISNEY®. . . everything.  However, registering your name as a trademark can actually be quite difficult.

As a starting point, the United States Patent and Trademark Office (USPTO) will not register a mark that is primarily merely a surname without a showing of acquired distinctiveness. 15 U.S.C. § 1052(e)(4).  This provision in the Trademark Act reflects the common law idea that exclusive rights in a surname cannot be established without evidence of long and exclusive use, with the idea being that such long-standing and recognizable use changes the significance to the public from the term being merely someone’s last name to being a trademark that identifies particular goods or services – hence, “acquired distinctiveness.”  But surnames are not always unique.  Can an individual stop someone else from using “their” surname?

The Schlafly case

The Federal Circuit most recently considered the issue in the matter of Schlafly v. Saint Louis Brewery, LLC, No. 2017-1468, 2018 WL 6168685, at *1 (Fed. Cir. Nov. 26, 2018).  In its opinion, the Court affirmed a ruling by the Trademark Trial and Appeal Board (TTAB) that the Saint Louis Brewery was entitled to register the mark SCHLAFLY for use in connection with beer and other related goods.  In so holding, the Court dismissed consolidated oppositions mounted by the successors of noted conservative political activist Phyllis Schlafly and other members of her family (including a son who used the Schlafly name in connection with his medical practice) in which they argued that allowing the brewery to register the mark would adversely impact their interest in the commercial value of the Schlafly name.

The Court declined to adopt a novel test proposed by the Schlafly camp (which opposers referred to as the “change in significance” test) under which they argued a surname could not be registered without the applicant showing that there was a change in significance to the consuming public that shifted the public’s perception of the proposed mark from a surname to a trademark associated and identified with specific goods and/or services.

The trademark owner’s evidence of acquired distinctiveness

In support of its position, the brewery presented evidence showing its considerable, continuous, wide-ranging use of the SCHLAFLY mark, including the sale of 75 million units of its 60 types of beer using the SCHLAFLY mark in 15 states and the District of Columbia, through 30 wholesalers and some 14,000 retail establishments, including several national restaurant chains between 2009 and 2014 alone. The brewery also presented evidence that these sales were supported by $1.1 million in advertising over the last five years, which featured the SCHLAFLY mark in advertisements and promotions in several media and at events.

Ultimately, both the TTAB and the Federal Circuit found the evidence presented by the brewery sufficient to show that the brewery’s use and promotion of the SCHLAFLY mark supported a finding of acquired distinctiveness. “No law or precedent suggests that surnames cannot be registered as trademarks if they have acquired distinctiveness in trademark use.” Id. at *5.  As you can see, however, obtaining a registration for your name as a trademark can be challenging, and anyone considering doing so should be sure to consult with an attorney before moving forward.

Supreme Court to Address Effect of Bankruptcy on Trademark Licenses

By David A. Jones
Download vCard

The Supreme Court recently agreed to hear a case that bears monitoring, particularly if licensing the trademarks of another brand owner is a significant aspect of your business. The case is Mission Product Holdings, Inc. v. Tempnology, LLC, and the primary issue to be decided is whether or not a brand owner that files for bankruptcy can revoke the rights of its licensee to use a trademark.

By taking this case on, the Supreme Court is expected to settle a split amongst the circuit courts in how they interpret a certain provision of the Bankruptcy Code that permits a debtor to decline to perform future obligations under a contract if the cost of performance outweighs the benefit. A revision was made to this section of the bankruptcy laws in the mid-1980s specifically permitting a licensee to keep its rights to “intellectual property” in the event a debtor/licensor elected to reject a license agreement.  However, the Bankruptcy code does not specifically name trademarks within the statutory definition of “intellectual property,” although other types of intellectual property, such as patents and copyrights, are included.

As a result, circuit courts have been left to their own devices to determine what the absence of trademarks from the definition of “intellectual property” means, and whether a trademark licensee’s rights are protected or not. On one side are circuits such as the Seventh Circuit, which ruled that the rejection of a trademark license did not strip the licensee of its rights to use the mark.  In a 2012 ruling (Sunbeam Products, Inc. v. Chicago Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012)), the Seventh Circuit Court ruled that rejection was merely a breach of the rejected contract, and that in cases of breach of contract, the “other party’s rights remain in place.” That is, the licensee could continue to use the bankrupt party’s trademarks.  Conversely, in the Mission Products case, the First Circuit took the opposite approach, holding that when Tempnology rejected its contract with Mission Products, Mission Products lost all rights granted to it under the agreement that were not expressly protected under the Bankruptcy code – which included trademark rights.

This is clearly an important question, and on the circuit split highlights a potential concern that licensees may lose the right to use the licensor’s trademarks when the licensor is in bankruptcy. Depending upon how the Supreme Court rules, it may continue to be a possibility that a company that contracts to use someone else’s trademarks could have the rug pulled from beneath them if that company files for bankruptcy.

Trademark Considerations: Scams and Solicitations

By Jason H. Kasner

Some of the most common inquiries we receive from our clients concern scams in the form of unsolicited letters or notices received after their federal U.S. trademark applications are filed.

Since the information in federal trademark applications (including the trademark owner’s address) is accessible to the public, scammers collect the contact information of new applicants and use it to send what appear to be official correspondence regarding the trademark application. These solicitations take many forms, and most have the look and feel of official notices from government agencies or are styled to look like invoices.  These notices commonly include (false) instructions to make payments or offers to publish or monitor the trademark application for a fee.  The purpose of these scams is to create a false sense of urgency that the trademark application is at risk (it is not) or that the superfluous services offered will benefit the trademark owner (they will not).

This is yet another reason to work with a good trademark attorney to file federal trademark applications. Not only will an attorney help minimize common filing mistakes, but as the appointed attorney and correspondent, your attorney will also receive all official notices and correspondence from the U.S. Patent and Trademark Office (“USPTO”) regarding your application directly.  You can then rest assured that your attorney is receiving all official notices and anything you receive directly regarding the trademark application is either a scam or a superfluous service you do not need. Here are some more tips for dealing with and recognizing these scams:

  • – All official notices sent by postal mail from the USPTO will have a return address of Alexandria, Virginia. Similarly, all official notices sent by electronic mail from the USPTO will be sent from an e-mail address ending in “uspto.gov”

If there is any doubt about the validity of a notice you receive, you should contact your attorney before taking any action. Your attorney can help you weed out these scams so you can concentrate on what’s important – building your brand and growing your business.

How can we help you?

TTAB Decision Offers Guidance on Trademark Consent Agreements

By Jason H. Kasner

A recent precedential decision of the Trademark Trial and Appeal Board (“TTAB”) sheds some light on how the TTAB evaluates consent agreements between parties with potentially conflicting trademarks. In the case In re American Cruise Lines, Inc., the TTAB held that the mark AMERICAN CONSTELLATION for cruise ship services was not likely to be confused with the prior registered mark CONSTELLATION for the same services. In Re Am. Cruise Lines, Inc., 128 U.S.P.Q.2d 1157 (T.T.A.B. Oct. 3, 2018).

What are consent agreements?

The U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure (“TMEP”) defines a consent agreement as “an agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of an identical or similar mark by the other party.” TMEP §1207.01(d)(viii). These agreements are often presented as evidence in favor of registration of the junior user’s mark following a USPTO refusal to register based on a likelihood of confusion with the senior user’s registered mark. Consent agreements typically include provisions such as limitations on the goods and services to be offered under the respective marks, requirements for presenting the marks (i.e., in a particular font/style and/or with a design element), and the measures the parties will take to avoid confusion in the marketplace. The evidentiary weight and probative value of consent agreements are generally determined on a case-by-case basis, with some limited guidance offered in the TMEP. Id.

The TTAB decision: Do consent agreements need to include provisions for avoiding confusion?

The TTAB considered various consent agreements entered into between the applicant and the owner of the cited CONSTELLATION trademark registration. The USPTO Examining Attorney who had reviewed and rejected the application argued that the consent agreements were not probative on the question of likelihood of confusion since they contained no provision that the parties make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future. The TTAB disagreed, holding that such provisions are not required.

Provisions of this nature are typically seen in trademark consent agreements, but this precedential decision clarified the TTAB’s position that while these provisions may render the agreement more probative in a likelihood of confusion analysis, they are not mandatory.

Consent agreements are a common tool for owners of potentially-conflicting trademarks to allow them to co-exist without causing confusion to consumers and obtain important protections of trademark registration. If your company’s trademark registration has been refused on the basis of a prior registration, we can assist with overcoming the refusal, which can include filing an appropriate consent agreement.

x