Federal Circuit on the THE SLANTS: Shut up about the constitution already

See?  This works fine.

See? This works fine.

Remember when I said, and said, and said, the appeal involving the TTAB’s rejection of the trademark application for THE SLANTS was fundamentally about PTO procedure and hardly at all a matter of constitutional law?  And that the constitutional issue was, really, not necessary to reach for to find merit in the appeal?

I said that, right?

I thought I said that.  I thought I wrote that.  I thought I argued that.

Evidently, however, someone wanted to write an opinion on constitutional law.  Maybe someone wanted to write it in another case, even, but that case wasn’t before that someone.  So someone thought this case would be a good substitute for that case.

So the issues we appealed on got an amount of shrift which you are free to measure for yourself, and THE SLANTS lost their appeal.

And you’re wondering, by the way, was it unanimous?  Is there a dissenting opinion, perhaps, such as might form the basis for automatically taking the appeal to the full panel?

Well, go to page 12 of the opinion, and tell me the answer to that.  I’m always interested in additional views.

UPDATE:

Likelihood of improvement: Archer & Greiner, PC

Archer IPWelcome me to my new firm, Archer & Greiner, P.C.  I’ll be a partner resident in the firm’s New York City and Hackensack, New Jersey offices (that’s me, always straddling the Hudson) but at your beck and call in all the bunch of other ones, too — and, more importantly, embedded, for the first time ever, deep in the rich goodness of a bona fide IP-department which in turn is ensconced in a sophisticated full-service regional law firm for real.

There’s even PDF at this link that describes the IP group, to take home with you, for free.  No, really, it’s on the house.

This is going to be fun, right?

 

 

Meet the Bloggers – INTA, Dallas, 2013!

Originally posted 2013-04-23 14:05:03. Republished by Blog Post Promoter

Meet the Bloggers 2013 - INTA Dallas

What else is there to say?

Of course you’re invited!

MTB XI: Just picture it!

Meat

 

 

 

 

 

tub

loggers

 

 

Yep, you figured it out!  And you can RSVP for this year’s Meet the Bloggers, which will take place Monday, May 4, 2015, from 8:00 PM to 11:00 PM, at Henry’s Pub & Restaurant, 618 Fifth Avenue, San Diego, CA 92101, at this link.

See you there!

Proof of God’s existence

Mark-o! Polo!

Originally posted 2011-06-02 11:11:25. Republished by Blog Post Promoter

Horses and perfume -- perfect together

Looks like somebody’s going to be ponying up:  here’s the latest in the saga between the (old) rich (the U.S. Polo Assocation) and the (new) preposterously rich (Ralph Lauren):

The US Polo Association filed a suit against Ralph Lauren claiming that the fashion giant is trying to make money off the logo and the sport itself. The lawsuit comes as the US Polo Association looks to market its own line of fragrances.

A New York judge didn’t see things quite the same way as the Polo Association, though. Federal judge Robert Sweet noted that Ralph Lauren has been using the single player polo logo in conjunction with the word ‘polo’ on its products since 1978. He stated that while there is plenty of room for both companies to “engage in licensing activities,” it is another matter entirely for the US Polo Association to “use ‘polo’ in conjunction with the double horsemen mark on fragrances.” According to the judge, such use would cause confusion among consumers. Judge Sweet issued a permanent injunction requiring the polo association to drop all claims.

No respect for the upper crust

The opinion is here, via the Law of Fashion blog, which explains the context of the dispute — which outfit was the first one to realize that horses and fragrance were a good association? — and comments insightfully:

In a nutshell, Judge Sweet ruled that Polo Ralph Lauren got to the fragrance market first, and that the official U.S. Polo Association — which entered the market twenty years later, with a confusingly similar logo — is out of luck.  Permanently enjoined, to be precise.

Apart from arguing that there was no likelihood of confusion here, the USPA had accused Ralph Lauren and its fragrance licensees of “attempting to monopolize the depiction of the sport of polo.”  The Court responded:

There is . . . clearly room in our vast society for both the USPA and [Ralph Lauren] to engage in licensing activities that do not conflict with one another, and nothing contained in this opinion should be construed as precluding such activities . . . . Nonetheless, to the extent the USPA [uses] “polo” in conjunction [with] the Double Horsement mark on fragrances, this is another matter.

This ruling is especially interesting because, in 2006, a jury found that “the solid Double Horsemen mark with [the accompanying text] ‘USPA’ [was] not infringing in the context of the apparel market.”  (Emphasis added; for more on the previous case, look here and here.)  For Judge Sweet, the fact that the present dispute involved fragrances, not apparel, and that the text accompanying the “Double Horsemen mark” differed in the two cases, meant that the earlier outcome had no bearing here.

Bear?  Horse?  Perfume?

What do I know?  In any event it appears that the Association’s claims failed the smell test.

Likelihood of extrusion

Originally posted 2011-04-18 14:15:24. Republished by Blog Post Promoter

iLrg-szyk-haggadah-four-sonsReprinting my annual Passover post, updated for modern microblogging sensibilities and adjusted for days of the week as they come out this year:

I’ve been hit by pre-Passover preparations — the First Seder is tonight — plus the need to front-load the making-a-living part to make up for the fact that I will be “out of pocket” this weekend and essentially on mission-critical-only duty for next week, too.

Here’s a nice thought on the topic, appropos for our 24/6 social media lifestyle:

The 21st century is certainly a marvelous time in which to live. Space exploration, computerization, the taming of vicious diseases are all truly amazing feats. But we also suffer more burnout, mental exhaustion, attention deficit disorders and high blood pressure than ever before. They are no doubt the effects of our own hi-tech servitude. Like it or not, we’re ruthlessly on call to someone for something all the time. And, we call it “normal.”
Read More…

Secondary Trademark Infringement: Don’t wait for the movie!

Critics agree:  Buy the Jane Coleman and Griff Price’s Secondary Trademark Infringement from Bloomberg BNA –or you’re liable to miss the big one!

Secondary Infringement

Goldman on Ticketmaster

Originally posted 2007-10-23 00:22:32. Republished by Blog Post Promoter

Eric’s Technology & Marketing Law Blog asks whether “the public interest got screwed” in the recent big win for Ticketmaster down in Alabama against RMS, a company whose software outsmarted Ticketmaster’s sales system. Copyright infringement was a lynchpin of the holding.

Ticketmaster-LogoI was once consulted on a similar case and I was hoping that it was that same former client that lost this one — because the son of a gun stiffed me on my fee! But because of that experience and the analytical framework I ended up working through while considering similar issues, I’m sympathetic to the defendant there, and to Eric’s take on it, too:

It’s easy to point at RMS and its customers as the bad guys. After all, they are trying to get an unfair advantage in the first-come, first-served allocation of scarce tickets for their economic benefit, with the result that later comers have to pay more to get the same tickets.

But what about Ticketmaster’s role in this situation? They haven’t designed a technologically gaming-resistant allocation of tickets, so they need legal help to solve that deficiency. I also remain suspicious about Ticketmaster’s incentives here, both in setting prices and in policing against ticket allocation gaming. Their motives may not be nearly so consumer-friendly as they try to portray.

Well, no company is as consumer-friendly as it likes to portray itself. But Ticketmaster? Go ahead and Google it. It’s not pretty. On the other hand, is a company really obligated to “design[] a technologically gaming-resistant” business model before it can have recourse to the law to enforce its rights? I don’t think Eric means that, either. Read, as they say, the whole thing, though.

Best of 2011: “Life rights”? (Making things with life?)

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

First posted May 23, 2011. Pittsburgh Trademark Lawyer Daniel Corbett brings us an NBA star’s attempt at a four-point shot:

Post-relationship drama takes many forms, but federal court litigation under the Lanham Act isn’t typically one of them– unless you’re Miami Heat forward Chris Bosh.  Bosh recently filed suit against the producer of VH1′s “Basketball Wives,” which, as Bosh correctly notes, comprises about as many ex-wives and/or girlfriends as it does “basketball wives” in the term’s purest sense. At any rate, Bosh is claiming that his ex-girlfriend and the mother of his child is violating his trademark, publicity, and “life rights” by using his name/likeness in connection with the show.  The lawsuit claims that  “[the show] provides these women with a vehicle and worldwide platform” to use the names of players without permission for commercial gain.”

Yes, “using the names . . . without permission for commercial gain” — that’s pretty much dog-bites-man in the IP / right of publicity arena these days.  That’s not blogworthy.

No, you guessed it:  The four-point-shot is the new and exciting proposed tort of “life rights”!  My first inclination, as a child of the ’60’s — no, I mean, really, I was a child then, not that I was born in the ’50’s but kept acting like a child in the ’60’s — was this:

But evidently, no. Read More…

Functionality in trademark and patent law

The TTABlogWhat with all the hoopla over controversial and headline-making cases, it’s tempting sometimes to forget about the need to drill and to stay up to date on the everyday craft of trademark law.  So when John Welch sees fit to pause from keeping tabs on the TTAB and share his thoughts on a fundamental topic in the art, not paying heed may constitute a prima facie departure from the standard of care for anyone unable to demonstrate that they’re as good at this stuff as he is.

Which, of course, you may be.  And indeed people who are very good at this stuff tell me they read this blog, presumably for entertainment.  Be that as it may, here’s what I, for my part, couldn’t have told you before I read John’s post of March 19, 2015, entitled, “Some Thoughts on de facto and de jure Functionality,” which begins as follows:

FunctionSection 2(e)(5) of the Lanham Act bars registration of a proposed mark that “comprises any matter that, as a whole, is functional.” The shape of a product or a feature of a product may have a function –i.e., it may have utility – but still be registrable as a trademark. In other words, the product or feature may be de facto (in fact) functional but not de jure (in law) functional.

Confusion over these concepts sometime arises when, in considering the registrability of a product shape, the TTAB or a court encounters design patents or utility patents that are related to the product. Utility patents, as the name indicates, concern things that have utility: “any new and useful process, machine, manufacture, or composition of matter.” Design patents concern the ornamental features of useful objects: the way things look rather than the way they work. Thus both utility and design patents are directed to things that are useful (or de facto functional).

A particular device may be the subject of a both a utility patent, because it incorporates a useful invention – say, a corkscrew that operates in a new way – as well as a design patent, because the device has a novel and nonobvious shape – suppose the corkscrew is shaped like a kangaroo. Read More…

B&B Hardware: Beyond Nuts and Bolts

SealtiteI’d promised I’d wait on this, but I couldn’t, and you’ll see why.  Here’s my take on today’s Supreme Court decision in B&B Hardware v. Hargis Industries Inc., which — notwithstanding my reluctance to be accused of being that hammer to which everything looks like a nail — may very well have implications for some of the pending litigation involving that popular topic of late, Section 2(a) of the Lanham Act.

First, the analysis of the main holding.

I was struck by the court’s point that Congress could not have been too concerned about making efficiency or cost-effectiveness a priority in the registration process when it authorized de novo challenges of TTAB decisions under 15 U. S. C. §1071(b).  Having established that there was nothing in the Lanham Act that made TTAB decisions different from other agency determinations for purposes of issue preclusion principles, the court then stated that preclusion based on TTAB determination could be applied following those principles.  In other words, there is preclusion where “the issues in the two cases are indeed identical and the other rules of collateral estoppel are carefully observed.”

What the Eighth Circuit had said, of course, was that under these principles, preclusion did not apply, because the “rules” were not be the same: different standards are applied in evaluating likelihood of confusion in inter partes proceedings as opposed to District Court actions.

Certainly I agree with the Supreme Court that the different circuits’ formulations of the likelihood of confusion standards and the way likelihood of confusion is understood and applied in the PTO do not constitute different “rules”; practitioners know these are all essentially different formulations of the same test – they certainly should be!

My concern was far more with the procedural differences between the two kinds of proceedings.  The B&B decision deals with this issue in rather cursory fashion, stating that

The ordinary law of issue preclusion, however, already accounts for those “rare” cases where a “compelling showing of unfairness” can be made.

This formulation is problematic, because, while there may be (I hope) exceptions, there are few times a court is going to be inclined to find “compelling unfairness” in a TTAB determination.  Moreover, the argument, after all, is not about unfairness, but differentness.  Under the Supreme Court’s analysis, however, there’s no room for that; if there’s preclusion, it’s presumptive, and you need that “unfairness” level of badness to uproot the TTAB’s ruling.  That’s a problem.

As the court says, however, there is a solution for a party worried about how a TTAB finding on likelihood of confusion might affect its rights:  De novo review of TTAB decisions in the District Court, with full evidentiary submissions — with all the expense that entails.  The only alternative appears to be amendment of the Lanham Act, which is probably one thing that should be considered to establish a streamlined, economical quality of PTO proceedings the Supreme Court has determined is not a policy of the Act now.

So… what was I saying about Section 2(a)?   Read More…