IP Law Bulletin

Summary: Recently the United States Trademark Trial and Appeal Board (TTAB) considered the implications of competing filings that occurred on the same day. In particular, a trademark applicant filed an express abandonment of its trademark application, and, later that same day, a third party filed an opposition against the trademark application. While the TTAB agreed with the applicant and both dismissed the opposition without prejudice and allowed the application to be abandoned without prejudice, the timing of the filings played no role in reaching this decision. To the contrary, the TTAB stated that it “shall not take cognizance of fractions of a day” and assumed that the parties’ opposition and express abandonment filed on the same day were filed at the same instant. What impact did the decisions being “without prejudice” as opposed to “with prejudice” have on the parties though?

Summary: It is rare that legal decisions are reported on by “The Worldwide Leader in Sports,” but that is exactly what happened when the U.S. District Court for the Eastern District of Virginia affirmed the U.S. Patent and Trademark Office Trademark Trial and Appeal Board’s decision to cancel six trademark registrations owned by Pro-Football, Inc., which does business as The Washington Redskins.  The marks were canceled on the basis that the marks “may disparage” a “substantial composite” of Native Americans.  However, does a ruling based on these grounds fly in the face of the First Amendment?  An upcoming decision by an en banc Federal Circuit may soon tell us when it determines whether an Asian-American band is allowed to register the trademark “THE SLANTS” for entertainment in the nature of live performances by a musical band.

Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. Moving from a mere “mark” to a lauded “brand” takes us into the realm of marketing, as most of what makes a mark into a brand is the result of marketing investment around the mark. However, there are still many legal considerations to keep in mind as you begin using your mark and building it into your brand.

The United States is one of the few countries that requires a showing of use for extension of trademark protection. Accordingly, questions concerning how “use” can be established are important to both domestic clients and international clients filing trademarks in the United States. Traditionally the United States Patent and Trademark Office (USPTO) interpreted the use requirement flexibly, allowing most specimens submitted to the USPTO to constitute use. However, until recently, U.S. courts had not settled on what is sufficient to establish trademark use, at least with respect to service marks.

As discussed in the previous article in Nutter’s IP Branding Series, monitoring competitors’ use of your marks and marks possibly akin to your marks, and enforcing your rights in your marks against those competitors, is an important aspect of protecting and building your brand. Equally important is policing your own use of the mark, the use of your mark by licensed third parties, and the use of the mark by third parties that are neither competitors nor licensees. The graveyard of brands that were arguably too successful because the brand name became genericised is fraught with lessons to be learned in protecting the use of your mark. Dilution is also a concern, although it is becoming increasingly more difficult to successfully show that your mark is being diluted or tarnished.

There are two types of taglines or slogans companies typically seek protection of, taglines tied to an advertising campaign or sales of a good or service, and taglines or slogans that are on merchandise intended to invoke or amuse people and drive them to purchase the merchandise. In deciding whether obtaining protection is a good business decision, most companies weigh the potential costs of obtaining protection against the strength of the mark for which protection is desired. A question that we commonly encounter when companies seek protection of a tagline is whether the tagline is even protectable. The short answer to that question is yes, usually.

Historically, the United States Patent and Trademark Office (USPTO) and the courts have been reluctant to extend trademark protection to slogans and taglines, leading to the reluctance of companies to seek protection at all. Over the past few decades, however, protection of taglines has become more commonplace, as it is now settled that the level of protection afforded to a tagline or slogan is the same as that for other trademarks. As early as 1970, the courts decided that slogans as trademarks are subject to the same scrutiny as non-slogan trademarks. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823 (C.C.P.A. 1970). Since then, courts and administrative bodies have followed the Roux Laboratories decision in evaluating slogan and tagline marks using the same scrutiny as non-slogan marks. For example, the Trademark Trial and Appeal Board affirmed registration of the slogan “AMERICA’S BEST CHEW” in 1986 because it had established secondary meaning. See Taylor Bros. Inc. v. Pinkerton Tobacco Co., 231 U.S.P.Q. (BNA) 412 (T.T.A.B. 1986).

To qualify as protectable, taglines or slogans must be either inherently distinctive or creative, or have developed enough secondary meaning to immediately call a product or service to mind. Secondary meaning is not typically a company’s first choice in establishing that a tagline is protectable. Descriptive taglines, however, require evidence of secondary meaning to be protectable. Secondary meaning refers to the distinction the mark has acquired with consumers to associate the mark with a source. This distinction can take time to establish, and can be proven with either five years of continuous use in commerce or substantial sales and advertising. Accordingly, unless the tagline is used in a substantial advertising campaign, establishing secondary meaning can be a lengthy and uphill battle with the USPTO.

More frequently, a tagline will be protectable if it is considered inherently distinctive or creative. Better protection is afforded to marks that are more distinctive or creative. Taglines and slogans are subject to the same scrutiny as non-tagline trademarks when being examined by the USPTO for inherent distinctiveness. Inherently distinctive or creative taglines typically consist of made-up words, words that are surprising or unexpected in the context of their usage, or words that cleverly connote qualities about the product or service. Examples of inherently distinctive taglines include Coca-Cola’s “It’s The Real Thing,” McDonalds’ “I’m Lovin’ It,” and Nike’s “Just Do It.” The threshold for inherent distinctiveness is not notably high. For example, “Your Financial Service is Our Business” was registered on the basis of inherent distinctiveness for insurance planning services, as was “From Maine’s Cool Breeze to the Florida Keys” for moving services. Although inherent distinctiveness is not a particularly high threshold, merely informational taglines are not protectable. Taglines such as “Think Green” or “Proudly Made in the USA” have been denied protection by the USPTO for being merely informational.

Generally, taglines and “traditional” trademarks are governed by the same rules. Accordingly, so long as a tagline or slogan is either inherently distinctive or has developed secondary meaning, a tagline is protectable as a trademark. If a tagline is closely linked to an advertising campaign or used frequently on goods or services, it is likely a good business decision to file for trademark registration with the USPTO.

This update was prepared by the Intellectual Property practice of Nutter McClennen & Fish LLP. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

When last we met, you had successfully navigated the trademark-examination process and were gazing with pride and happiness upon your Certificate of Registration from the United States Patent and Trademark Office.

In Octane Fitness LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), decided in April 2014, the Supreme Court lowered the bar for obtaining attorneys’ fees in patent infringement cases. In particular, the Supreme Court replaced the previously restrictive interpretation of an “exceptional case” that qualifies for the award of attorneys’ fees under § 285 of the Patent Act (chapter 35 of the United States Code (U.S.C.)) with a lower, more discretionary standard. We previously provided an analysis of Octane Fitness, and the related Highmark Inc. v. Allcare Health Mgmt. Sys., Inc. decision in an April 30, 2014 advisory. Since then, there has been a rash of litigants attempting to cash in on their success in intellectual property litigation of all types—including trademark and trade dress litigation brought under the Lanham Act (15 U.S.C.). Section 1117(a) of the Lanham Act includes a provision for awarding attorneys’ fees that is identical to § 285 of the Patent Act; however, because Octane Fitness only expressly addresses exceptional cases under § 285 of the Patent Act, courts are struggling with whether to replace the prevailing standard in their Circuit with the new, lower standard in cases brought under the Lanham Act. So far, courts are divided as to whether Octane Fitness applies to the Lanham Act, although a greater weight of authority exists in favor of applying the Octane Fitness standard to § 1117(a) of the Lanham Act.

Following the conclusion of trademark prosecution, your certificate of registration has arrived in the mail. Now what? Some lawyers still advise their clients to keep the certificate “in a safe place,” but one wonders how much longer paper certificates will even be prepared and issued. Maybe they will last as long as (paper) newspapers. After all, the information contained on the paper certificate is readily available online at the web site of the U.S. Patent and Trademark Office (USPTO), and either a link to the USPTO web site or a printout of the online record will serve the same evidentiary purpose as the paper certificate.

Before the Supreme Court’s 2006 decision in eBay Inc. v. MercExchange, L.L.C., it was axiomatic that, upon a showing of a likelihood of success on the merits, a trademark owner was entitled to a presumption of irreparable harm when moving for preliminary injunctive relief. But after eBay, there was no such presumption in patent cases, leaving the question open whether the presumption would apply in trademark cases. Just a few weeks ago, on October 6, 2014, the Supreme Court denied certiorari in Herb Reed Enters., LLC v. Florida Entm. Mgmt., Inc., in which the Ninth Circuit held that trademark owners are not entitled to a presumption of irreparable harm simply by making a preliminary showing of a good case on the merits. Accordingly, the Supreme Court has left it to the circuits to resolve the presumption question in trademark cases, at least for now, causing litigants to query what evidence will suffice to establish irreparable harm without the presumption and to consider the prevailing law in the various circuits when choosing a forum.