On August 14, 2014, Pro-Football, Inc. (“Pro-Football”) appealed the Trademark Trial and Appeal Board’s (“TTAB”) June 18, 2014 decision to cancel its registrations for six REDSKIN-formative trademarks. As we previously reported, the TTAB’s 2-1 decision found that those trademarks were not entitled to be registered on the basis that a “substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the football team’s] services” during the time period when registration was sought.
On July 14, 2014, the United States Trademark Trial and Appeal Board (TTAB) found the trademark “BioMcDiesel” for biodiesel fuel likely to cause confusion with McDonald’s Corporation’s (“McDonald’s”) famous family of MC-formative trademarks. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential]. The applicant, Joel Joseph, appeared pro se to defend his application, which was based on intent to use. McDonald’s challenged the application on three bases under the Lanham Act, namely, likelihood of confusion under Section 2(d), dilution under Sections 13 and 43(c), and on the basis that Mr. Joseph filed the application in bad faith, in that he lacked a bona fide intent to use the mark and solely filed the application for the purpose of selling or licensing the mark to McDonald’s. The TTAB’s decision addressed only the likelihood of confusion claim, and found the “BioMcDiesel” mark was not entitled to registration.
Earlier today, six trademark registrations for the Washington Redskins football team were cancelled on the basis that they are disparaging. In the long-awaited decision of Blackhorse v. Pro-Football, Inc., the Trademark Trial and Appeal Board (“TTAB”) found that the petitioners had shown “by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the football team’s] services” during the time period when registration was sought.
When music is sold, or a poem or novel is purchased, the composer or writer receives a portion of the initial sale or royalties on future sales of copies of the work. The more copies of a song, composition or book that are sold, the greater the royalties the composer or writer may receive. However, this is not true for all copyrightable material, particularly certain works of visual art such as contemporary paintings or sculptures. Unlike music and written works, that are mass produced and distributed, visual art, as noted by United States Copyright Office, “are produced singularly and valued for their scarcity.” The artist may receive a one-time fee or commission for their original work, but such works are often resold at auction with the artist rarely receiving any additional payment.
Time Bars for Joint Authors and Copyright Registration Cancellation: The Third Circuit Weighs in on Two Issues of First Impression
On January 29, the Third Circuit issued an opinion in Brownstein v. Lindsay that addressed two issues of first impression under United States Copyright Law. One was whether a court has authority to cancel a copyright registration. The second was when the statute of limitations begins to toll on a co-author’s claim of copyright ownership against his or her co-author.
Last Friday in Lontex Corp. v. Oakley, Inc., 1:13-cv-05459 (DNJ), Lontex sued Oakley in the U.S. District Court for the District of New Jersey for trademark infringement, counterfeiting and unfair competition relating to Lontex’s federally registered mark, SWEAT IT OUT, for sweatbands, headbands and other athletic apparel. In its complaint, Lontex alleges that Oakley is using the exact mark SWEAT IT OUT for a line of sweat-wicking headbands, and attaches exhibits showing that use on Oakely’s on-line store. Lontex further asserts that it has been using its mark for over 20 years, and that Oakley’s conduct violates federal and state trademark and unfair competition laws.
Coach Services, Inc., of the design house offering handbags, footwear and other luxury goods, recently lost a design mark battle challenging registerability of E&D Trading, Inc.’s (“E&D”) mark for DP in stylized format (the “Challenged Mark”) on the basis that it is likely to cause confusion with Coach’s federally registered “Signature C Design” marks. The parties’ marks both cover eyewear, among other goods. Coach’s protest was lodged with the Trademark Trial and Appeal Board (“TTAB”), an administrative body that is part of the Trademark Office and has authority to rule on challenges to registerability of marks, among other issues. TTAB proceedings and procedure are governed by the Federal Rules of Civil Procedure, as well as the detailed rules set forth in the TTAB’s Manual of Procedure (“TBMP”).
The Laws of Physics and Copyright Law: SDNY Rules that First-Sale Doctrine Does Not Apply to the Resale of “Used” Digital Media
Owners of books and music in physical media form need not fear if ever they decide to sell, rent, or otherwise dispose of these copyright-protected materials. The first-sale doctrine permits such activities by extinguishing a copyright owner’s exclusive right of distribution of copyrighted items that have been lawfully sold or transferred. However, according to a recent federal court ruling, Capitol Records, LLC. v. ReDigi Inc., No. 12 Civ. 95 (S.D.N.Y. March 30, 2012) owners of digital versions of the same works may find it more difficult to sell, rent, or otherwise dispose of their digital files.
Free Speech May Allow Disparagement, but the Trademark Office Does Not: TTAB Affirms Refusal to Register STOP THE ISLAMISATION OF AMERICA
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).
The GOLD GLOVE Trademark Infringement Action: Will Rawlings Strike Out For Failure to Adequately Plead Its Case?
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.