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How Much Use Is Enough?: CAFC Clarifies Use In Commerce Requirement

One of the primary requirements for trademark registration is that the mark is “Use in Commerce”, or that the mark was used in commerce in connection with a good or service for which it is being registered. The exact definition of the extent of “use” required was vague however. With a recent ruling in Christian Faith Fellowship v. Adidas AG, the Court of Appeals Federal Circuit (CAFC) has helped to clarify the contours of this requirement, giving potential trademark applicants more detailed guidance on important registration requirements. This case began with the Christian Faith Fellowship Church (“Church”) selling hats embroidered with the phrase “ADD A ZERO” in early 2005. The Church then applied for trademark registrations for the phrase “ADD A ZERO” in connection with two clothing-based classifications. In their trademark application the Church cited to actual use in commerce of the mark (the sales of hats in 2005), rather than intent to use. At the time the trademark examiner deemed the application sufficient and granted registration of the mark “ADD A ZERO”. The issue of this case stemmed from Adidas filing of a trademark application for the mark “ADIZERO”, in connection with clothing-based classifications, in 2009. Based on a likelihood of confusion with the Church’s “ADD A ZERO” mark, the USPTO refused registration of Adidas’s mark. In response, Adidas sought to cancel the Church’s mark on the grounds they had failed to use the mark in commerce before registration (something the Church had claimed they did as part of their application). The Lanham Act defines a mark as “used in commerce” when “the goods are sold or transported...

The Long Reach of the Lanham Act: Trademarks and Cross-Border Disputes

In late August of this year the 9th Circuit Court of Appeals reversed a dismissal of a trademark case between the food retailer Trader Joes, and the grey-market reseller of Trader Joe’s goods in Canada, Pirate Joes. The crux of this case involved Trader Joes trying to find a way to keep Pirate Joes from reselling their products at marked up prices in Canada. The unique, and potentially precedent setting, feature of this case however is how Trader Joes may finally achieve this goal; Trademark law under the Lanham Act. Since 2011, Canadian resident Michael Norman Hallatt has run a business that consists of buying popular Trader Joes products in the Washington city of Bellingham, and then transporting said products back to Canada to resell them at a marked-up price at his store named “Pirate Joes.” Trader Joes began to take notice of this practice in late 2011 and filed a lawsuit against Hallatt that same year for trademark infringement. Specifically, Trader Joes alleged that Hallatt mislead customers in believing the products he sold were authorized by Trader Joes, that his store used a confusingly similar trade dress to Trader Joes locations, and that Hallatt did not sell products in adherence to Trader Joes food safety practices. All of this resulted in damage and dilution to the Trader Joes trademark, as alleged by Trader Joes. This case was dismissed by the district court however. The reasoning given was the court lacked subject matter jurisdiction, and the Lanham Act did not apply to the extraterritorial conduct of Hallatt in Canada. This August however, the 9th Circuit reversed this dismissal. First,...

Brexit: And its Effect on IP Rights

On June 23rd the United Kingdom (UK) voted to leave the European Union (EU), a move now commonly referred to as the “Brexit”. With their exit from the EU, the UK will now have to renegotiate a long list of rules, regulations, and treaties that were formally governed under the EU regime. How this process of renegotiation affect intellectual property rights in the UK and the EU depends on the exact type of right, and how unified the protection of that right was throughout the EU member nations. To begin, the process of leaving the EU will take two years from the time UK leaders invoke Article 50, beginning the process of a member nation leaving the Union. As of current, Art. 50 has not been invoked, so the two year clock on unwinding the relationship between the UK and EU has not yet begun. With this being the case, any IP rights that were governed by institutions of the EU, unified over all of the member nations, will continue to be in-force. However it is these exact rights, the ones that are governed by EU regulations, which will be the most effected by Brexit. Patents: The European Patent Office (EPO) currently governs patent law in the EU. This is an institution made up of both member and non-member nations to the EU, so the UK’s exit from the EU will not effect its membership in the EPO. The European Patent Convention (executed by the EPO) allows for a European Patent (EP), which itself is not a single patent, but a bundle of patents that an inventor may obtain...

“Disparaging” is Not Grounds to Deny: USPTO Not Allowed to Deny Trademark Registration For Being Disparaging Under §2(a)

On December 22, 2015 the Federal Circuit Court of Appeals, in the matter In re Simon Shiao Tam, issued an important decision regarding the refusal of federal registration to a mark considered to be “disparaging”. The case revolved around an Asian-American rock band with the potentially racially charged name of “The Slants”. The band was denied federal registration of their trademark of the same name, but appealed claiming this was unconstitutional; Federal Circuit Court of Appeals agreed stating, “content-based regulations are presumptively invalid.” Refusal of trademark registration on the grounds of being disparaging is an improper limiting of speech. Specifically, §2(a) of the Lanham Act states: “No trademark… shall be refused registration… unless it… Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…” The Court took issue with this statute by first holding “It is beyond dispute that § 2(a) discriminates on the basis of content in the sense that it ‘applies to particular speech because of the topic discussed’.” The government tried to claim their opposition to the mark was “content-neutral” because they would have opposed the mark had it been intended as a disparaging term or not (note: it was found the band was in fact not intending disparagement, but rather seeking to reclaim and repurpose the term in a positive manner). However, this argument was swiftly dismissed by the fact “an applicant can register a mark if he shows it is perceived by the referenced group in a positive...

Are Big Companies Taking Their Trademarks Too Far?

In what appears to be another slew of trademark battles, Red Bull energy drinks has challenged the use of the word “ox” in the brand name of a small craft brewery in Virginia. Red Bull filed its opposition with the USPTO against trademark applications from “Old Ox Brewery,” which opened in the northern Virginia suburb of Ashburn in June 2014. Old Ox Brewery is scheduled to produce over 4,000 kegs of beer by December, set for distribution to only a small area of Virginia. Red Bull argues that the ox used in the brewery’s name is likely to cause customer confusion. It bases this on the fact that both an ox and a bull are bovine animals and are virtually indistinguishable to customers. The brewery’s president, Chris Burns, was not pleased with Red Bull’s actions. Burns sent a letter to Red Bull, contending that Red Bull was holding the small company “hostage” and that their action would severely limit Old Ox Brewery’s ability to use their brand. Burns’s letter cites to his frustration with the claim of trademark confusion, and Burns makes statements including, “You are a big Red Bully […] just like that mean kid from grade school pushing everyone down on the playground and giving us post-gym class wedgies. You are giving us one hell of a corporate wedgie. We don’t appreciate it and we sure as hell don’t deserve it.” This isn’t the first time a large entity has gotten in the way of a small entity. In 2011, an individual named Bo-Muller Moore filed a trademark for the phrase “Eat More Kale.” The company Chick...

“Your Assignment, Should You Choose to Enforce It”: New case law on IP assignment contracts obligates employers to diligently protect their legal rights

The United States Court of Appeals for the Federal Circuit, which hears all appeals involving patent law complaints, recently decided Personalized User Model, LLP, and Konig v. Google, Inc., case 14-1841/15-1022 (Fed. Cir., Aug. 18, 2015), which focused on an employment agreement for the assignment of intellectual property rights. The plaintiff, Yochai Konig, signed an agreement with his former employer, SRI International, which stated: “In consideration of my employment at SRI International, I agree: . . . To promptly disclose to SRI all discoveries, improvements, and inventions, including software, conceived or made by me during the period of my employment, and I agree to execute such documents, disclose and deliver all information and data, and to do all things which may be necessary or in the opinion of SRI reasonably desirable, in order to effect transfer of ownership in or to impart a full understanding of such discoveries, improvements, and inventions to SRI . . . . I understand that termination of this employment agreement shall not release me from my obligations hereunder . . . .” While employed by SRI, Konig conceived of a personalized information services invention, which became U.S. patents 6,981,040 and 7,685,276, both of which were assigned to plaintiff Personal User Model (“PUM”). PUM sued Google in July 2009, asserting infringement of both the ‘040 and ‘276 patents. Subsequently, Google acquired “any rights” that SRI had in the asserted patents, and asserted that Konig had breached his contract with SRI, by not transferring ownership or assigning any interest to SRI in any inventions conceived during his employment with SRI. “It is not enough to secure...