IP Law Alert : Intellectual Property Lawyers & Attorneys : Gibbons Law Firm : Copyrights, Patent Infringement, Unfair Competition

On February 7, 2013, the Trademark Trial and Appeal Board affirmed the refusal to register the mark, STOP THE ISLAMISATION OF AMERICA, for “providing information regarding understanding and preventing terrorism” on the basis that the mark “may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.” The registration of disparaging marks is explicitly prohibited by Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).

Applying the legal test for disparagement of a non-commercial group (such as a racial or religious group) set forth in In re Lebanese Arak Corp., the Board evaluated the likely meaning of the mark, as well as whether its meaning may be disparaging to a “substantial composite” of the group in question. In affirming the examining attorney’s refusal to register, the Board found that the mark conveyed the message “that the conversion or conformance to Islam must be stopped in order to prevent the intimidating threats and violence associated with terrorism.” It also found that the direct association of Islam and its followers with terrorism would be offensive to the majority of Muslims, citing a number of articles from prominent publications in support of its position.

The applicants’ arguments that refusal to register the mark violated their right to free speech under the First Amendment were rejected wholesale. As the Board rightly noted, the Trademark Office’s decision on registerability has no impact on the applicants’ ability to use the mark. Consequently, the refusal to register “imposes no restraint or limit on their ability to communicate ideas or express points of view, and does not suppress any tangible form of expression.”

Catherine M. Clayton is a Director in the Gibbons Intellectual Property Department.

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The upcoming Super Bowl, pitting San Francisco 49ers Head Coach Jim Harbaugh against his older brother, Baltimore Ravens Head Coach John Harbaugh, has been dubbed “Harbowl” by some. An individual in Rockville, Maryland is attempting to take this name to a new level, by filing a federal trademark application for use of the mark “HarBowl” on athletic apparel.

Last year, the National Football League (“NFL”) requested extensions of time to oppose an Indiana resident’s application for HARBOWL for hats and t-shirts. According to an ESPN.com article, the NFL wrote to this applicant, Roy Fox, expressing concern that his use of HARBOWL would be confusingly similar to its iconic SUPERBOWL trademark. Fox ultimately abandoned his application.

Do the Harbaugh Brothers have any say in all this? Federal trademark applications are scrutinized by the US Patent and Trademark Office (“PTO”) to determine whether a proposed mark meets certain statutory requirements to merit a trademark registration. In particular here, Section 2(a) of the Lanham Act examines whether a mark falsely suggests a connection with another person who is not the applicant. See 15 U.S.C. § 1052. This provision might provide the Harbaugh Brothers with some leverage, particularly if they can (or choose to) demonstrate that consumers confuse the source of the HARBOWL athletic apparel with them.

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IP practitioners are well aware of the new rules heralded by the America Invents Act (“AIA”). Section 10 of the AIA authorizes the Director of the USPTO to set or adjust any patent fees under Title 35 or Title 15 of the United States Code to “recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents… and trademarks…, including administrative costs of the Office with respect to such patent or trademark fees.” Beginning on March 19, 2013, new fees will be instated, as published Friday, January 18, 2013, in the Code of Federal Registration, 37 C.F.R. Parts 1, 41, and 42 (“CFR”).

The new fees are a significant increase over the fees originally signed in to law a little over a year ago, September 16, 2011. Of note, the new fee schedule includes:
 

• A 27% increase in total utility application filing fees ($1260 → $1600);
• A 29% increase in the first Request for Continued Examination ($930 → $1200);
• A new Second and Subsequent RCE fee that represents an 83% increase over the prior fee ($930 → $1700);
• A 122% increase in total Appeal Fees ($1260 → $2800);
• A 39% / 24% / 54% increase in the 3.5 / 7.5 / 11.5 year maintenance fees respectively ($1150 → $1600 / $2900 → $3600 / $4810 → $7400);
• A 68% increase in the independent claim in excess of 3 fee ($250 → $420) and 29% increase in the total claims in excess of 20 fee ($62 → 80); and
• A new correction of inventorship after the first Office action fee: $600.

Fortunately, many of the new fees are reduced from those published in the proposal last September. See 77 Fed. Reg. 55028, Sept. 6, 2012.

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On January 7, 2013, Cincinnati Reds second baseman, and three-time Gold Glove Award-winner, Brandon Phillips, moved to dismiss Rawlings Sporting Goods Co. Inc.’s (“Rawlings”) trademark infringement action arising from his use of a glove with gold-colored features.

Rawlings is the company that grants baseball players the RAWLINGS GOLD GLOVE AWARD®, which consists of a gold-colored baseball glove attached to a solid base, dating back to 1957. Players who win the award are also given a functional baseball glove that has a metallic gold indicia on it. Last summer, Rawlings sued Phillips and Wilson Sporting Goods Company (“Wilson”) in the Eastern District of Missouri alleging that Wilson’s manufacture of, and Phillips’ use of, a baseball glove with metallic gold-colored webbing, web stitching and lettering infringe Rawlings’ rights in and to its GOLD GLOVE trademarks and the trade dress in its functional glove.

Rawlings’ amended complaint appears to rely on its GOLD GLOVE word marks, and only vaguely alludes to its trade dress, merely describing it as “the common law trade dress embodied in the distinctive famous metallic gold-colored baseball glove that forms the centerpiece of the world famous Rawlings GOLD GLOVE AWARD®.” In his motion to dismiss, Phillips argues that Rawlings’ complaint is fatally defective and should be dismissed because (1) Rawlings failed to meet the minimum pleading requirements for asserting trade dress in the color gold as applied to a baseball glove; and (2) Phillips and Wilson made no use of the words GOLD GLOVE or of any other word mark asserted by Rawlings in the action. Phillips also asserts that Rawlings failed to show any trademark rights in the color gold and that its trademark rights in the word GOLD GLOVE are insufficient to prevent the defendants’ use of the color. In late December, Wilson filed its own motion to dismiss asserting similar arguments.

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On November 30, 2012, Representative Lamar Smith introduced H.R. 6621 to “correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code.”

The act seeks to provide a number of technical corrections to a variety of issues, including:

• eliminating a 9 month dead zone for inter partes review allowing inter partes reviews to be filed at any time for applications with an effective filing date before March 16, 2013;
• extending the time for filing the inventor’s oath or declaration until the payment of the issue fee;
• eliminating the prohibition on post grant review for reissue patents with narrowing amendments;
• clarifying the standards for initiating derivation proceedings;
• clarifying the calculation for patent term adjustment; and
• repealing 35 USC 373, which restricted the types of inventors or applicants that could file PCT applications at the U.S. Patent Office.

One “Technical Correction” that has gained a lot of attention is the elimination of 35 USC 154(c)(1). For applicants that had an application filed prior to June 8, 1995, this section provided that the patent term would be the greater of 20 years from filing or 17 years from issuance. As a result, applications that were filed before this date and that issue today have a 17 year patent term going forward. The proposed amendment will eliminate this 17 year option if these patent applications are still pending one year after enactment of the act. The apparent objective is to eliminate the enforceable term of submarine patents.

Gibbons will continue to monitor any developments surrounding H.R. 6621 and provide additional information in future posts.

Charles A. Gaglia, Jr. is Counsel to the Gibbons Intellectal Property Department. Christopher H. Strate, an Associate in the Gibbons Intellectual Property Department, co-authored this post.

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The U.S. Patent and Trademark Office (“PTO”) recently published for opposition the mark TIM TEBOW. The applicant for the mark in these various goods and services is XV Enterprises LLC of Denver, Colorado, who has indicated that Tim Tebow, the two-time Heisman Trophy winner and New York Jets quarterback (formerly with the Denver Broncos), has consented to the applications.

The publication for opposition is a procedural step where the PTO gives notice to the public that an application has passed Examining Attorney review by publishing information about the application in the PTO’s Official Gazette. The application reflects the “intent to use” the TIM TEBOW mark on goods and services including in class 9 for DVDs featuring sports and entertainment subjects, sound recordings, and computer games; in class 41 relating to on-line education and entertainment in the field of training and sports; in class 25 for men’s, women’s and children’s clothing, footwear and headwear; in class 28 relating to sporting goods, toys and games; in class 14 for jewelry and watches; and in class 16 relating to paper goods, posters, school supplies and books in the field of sports. Other applications for marks using the name “Tebow” or a variation of it also are pending before the PTO.

The publication of an application starts a 30-day period during which third parties who believe that they will be harmed by registration of the subject mark can either file an opposition with the PTO, or request an extension of time to oppose. If no opposition is filed, the application will either be allowed or registration will be granted, depending on the application’s filing basis. If an opposition is brought, the proceeding will be heard by the Trademark Trial and Appeal Board, an administrative tribunal that is part of the PTO.

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D’Artagnan Trademarks LLC, (“DT”) recently sued the Saul Zaentz Company (“SZ”) in the District of New Jersey regarding the trademark ROHAN.

In December 2011, DT filed a trademark application for ROHAN in connection with the sale of poultry, namely, duck. The PTO approved the application and SZ opposed its registration when it published for opposition in late March. SZ alleged that it has exclusive rights to certain trademarks (the “Marks”) derived from the trilogy of books known as “The Lord of the Rings,” by J.R.R. Tolkien. Readers might recall that in the books, “Rohan” is a fictional realm within the fantasy world of the stories. SZ alleges it owns federal trademark registrations for ROHAN, RIDERS OF ROHAN and ROHAN NUTRITION, relating to animal feed and feed supplements for horses, plastic figurines for use with table top hobby battle games, and website services about computer games. SZ has a number of licensees using these marks.

Trademark registrant DT is the affiliate of luxury foods purveyor D’Artagnan. DT sought the mark for poultry, claiming the name ROHAN is a variation on the word “Rouen,” a city in the Normandy region of France, and Roeun duck, a kind of duck inhabiting that region. Rohan also was the name of a royal family living near Rouen centuries ago.

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In a prior blog, we reported that the Supreme Court had granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, to an appeal from the Second Circuit’s decision affirming the Southern District of New York’s holding that a covenant not to sue entered in a trademark dispute ended the case and controversy between the parties.

The issue before the Supreme Court is “[w]hether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.”

On August 16, 2013, petitioner Yums filed its opening brief with the Court. Yums argues for reversal on the basis that Nike’s covenant not to sue Yums did not divest the district court of jurisdiction over Yums’ challenge to the validity of Nike’s asserted trademark registration. In short, Yums asserts that, although it may not be sued based on the registration, the continued validity of that registration is harmful to it. The registration creates the appearance that Nike may exclude others from using a similar shoe configuration which, Yums posits, disadvantages it “both procedurally and substantively, in [its] efforts to attract investment and compete with [Nike] in the marketplace.”

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Today, ICANN, the Internet’s domain name registration watch dog, will publish a listing of nearly 1,900 new generic Top-Level Domains (“gTLDs”) that may be approved for use as early as March 2013. We previously wrote about ICANN’s expansion program and suggested safeguards that companies could implement to protect themselves.

The Domain Name System helps PC users to navigate the Internet. Every domain name ends with a top level domain (“TLD”), such as .com, .net, .biz and others. The Internet Assigned Numbers Authority (“IANA”) maintains a complete listing of approved domain names. The new program expands the domain name sysyem (“DNS”) already in use and well-known, by allowing any entity to apply for a new gTLD.

As we discussed, this expansion will change the Internet forever. It will also pose new potential risks for trademark owners, who already face a myriad of threats from cyberspace. These newly proposed gTLDs are by no means set in stone. An informed objector may be able to stop an application. However, time is of the essence as the opportunity to properly object or comment is limited.

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