IP Law Bulletin

The European Union’s (EU) trademark regulations are undergoing a significant overhaul as of March 23, 2016. For starters, the terminology is changing: the title “Community Trade Mark” or “CTM,” will be replaced by “European Union Trade Mark,” or “EUTM.”

There are more changes than can be fully summarized within the scope of this blog post. Here are three changes in particular that brand owners should be mindful of:

The Trademark Trial and Appeal Board of the United States Patent and Trademark Office has recently become a more dangerous place.

The Trademark Trial and Appeal Board—usually referred to by its acronym “TTAB,” which is spoken (most often) as four separate letters (tee, tee, ay, bee) rather than the obvious and more concise vocalization of “tee-tab”—is the tribunal where you can go on appeal if you do not like the examiner’s rejection of your trademark application. It is also the tribunal that hears and adjudicates “Oppositions” filed by third party “opposers” against “applicants” seeking registration and “Petitions for Cancellation” where third party “petitioners” proceed against “respondents” registrations they feel were improvidently granted.

In a decision dismissing plaintiffs’ claims of service mark infringement, the District of Massachusetts held that the plaintiffs’ transfer of “goodwill” in an asset purchase agreement also transferred plaintiffs’ rights to their service marks. In Pereyra and City Fitness Group, LLC v. Sedky, et al. (No. 15-cv-12854, 2015 WL 7854061, December 3, 2015) plaintiffs City Fitness and its sole owner, Roberto Pereyra, alleged that defendants unlawfully used City Fitness’s service marks after the parties executed an Asset Purchase Agreement (APA) that did not explicitly transfer the service marks to the defendants. Pereyra and City Fitness negotiated the APA with the defendants for the sale of City Fitness’s three Eastern Massachusetts health clubs, as well as the company’s assets. City Fitness operated its health clubs under the trade name “Leap Fitness” and registered two service marks under that name. The Leap Fitness marks appeared on the company’s signage, letterhead, business cards, t-shirts and its website. Defendants continued to use the marks for identification, marketing and promotional purposes after the deal with City Fitness.

On December 22nd the Court of Appeals for the Federal Circuit issued its sua sponte en banc In re Tam decision regarding the constitutionality of the “disparaging” marks bar under Section 2(a) of the Lanham Act.  A Federal Circuit panel previously upheld a Trademark Trial and Appeal Board (the TTAB) decision affirming the refusal under the disparaging marks provision of Section 2(a) of a trademark application for the mark "THE SLANTS." Would a “substantial composite” of Asians find the phrase THE SLANTS disparaging?  The answer was “yes”, as detailed in our earlier blog posting on this case.  Judge Moore, writing for the Federal Circuit panel in initially affirming the appeal decision, however, raised the question as to whether the court should consider the constitutionality issues about the registration standard raised by Mr. Tam on an en banc basis.  Her peers agreed to do so.

In Scholz v. Goudreau, No. 13-CV-10951, 2015 WL 5554012 (D. Mass. Sept. 21, 2015) rock legends are before the District of Massachusetts grappling, in part, over a familiar band’s legacy.

After guitarist Barry Goudreau left the band BOSTON in 1981, he filed a suit against Thomas Scholz—one of the band’s founders—as well as BOSTON’s other members, in order to ascertain the parties’ rights and obligations going forward.

Over the summer we analyzed a decision by the Court of Appeals for the Ninth Circuit that denied Amazon.com, Inc.’s (Amazon) motion for summary judgment as to watchmaker Multi Time Machine, Inc.’s (MTM) claims that Amazon’s use of MTM’s trademarks as keywords at amazon.com was infringing. The Ninth Circuit has now taken the unusual step of revisiting and vacating its July decision, upholding the federal district court’s grant of summary judgment in favor of Amazon. 

Nutter’s series on building a brand began with the selection of a trademark and the process of formally protecting a mark via trademark registration. More recent articles in the series have addressed policing a brand, proper trademark usage, and brand considerations in the social media environment. This article, the last in the series, focuses on additional post-registration considerations, namely: (1) exploiting your mark through licensing, including important quality control considerations; (2) applying to register branding elements in addition to the core plain text mark to enable more effective policing of your brand’s entire commercial impression; and (3) assessing the unauthorized use of your brand by third parties (or using another’s mark without authorization) for purposes of determining whether such uses are “fair” or, on the other hand, harmful and actionable.

On September 1, 2015, the U.S. Patent and Trademark Office (USPTO) launched a pilot program that allows some trademark owners the opportunity to amend their identifications of goods or services that would otherwise be beyond the scope of the current identification. The program allows owners to “catch-up” their trademark registrations with the “wheels of technology” so to speak. Did your company at one time obtain a trademark registration covering “printed newsletters” that are now offered as “downloadable online subscriptions?” Or perhaps your company had a registration for “phonograph records featuring music” that is now offered as “downloadable music files?”

Summary: The nature of public trademark data lends itself to information mining and a significant amount of confusion, deception, and fraud. Accordingly, many private businesses have monopolized public data for their own commercial gain. These private businesses send scam e-mails and letters to clients and counsel including “invoices” that are often paid due to their perceived authenticity. To prevent deception by these fraudulent scams, clients should be advised of the nature of these scams and what to look for when receiving trademark related correspondence.

The doctrine of “initial interest confusion,” scorned by many legal commentators and rejected by numerous courts, is alive and well in the Ninth Circuit, as evidenced by its recent usage by a watch manufacturer to overcome a summary judgment motion by online retailer Amazon. The initial interest confusion doctrine holds that a defendant can be deemed liable where a plaintiff can demonstrate that consumers are likely to be confused by a defendant’s conduct at the time of the consumers’ initial interest in a product or service, even if that initial confusion is corrected prior to an actual purchase. The doctrine is prevalent in so-called “keywords” cases in which one company pays the proprietor of an Internet search engine (e.g., Google) to prominently display the paying company’s website(s) in Internet searches conducted by consumers that include keywords such as a competitor’s company name or products. Alternatively, in the present case, the proprietor of the searchable website uses particular keywords associated with one company or product to drive consumer traffic to a similar product offering.