Viewing post categorized under: Trademark



March 31 / Blogs, Trademark

Not Quite a Marathon: The TTAB’s Effortless Denial of the “Marathon Monday” Trademark

Abstract: The brackets have finally been released for the annual NCAA Men’s Basketball Championship, commonly called March Madness.  The term “March Madness” evokes images of massive upsets, busted brackets, and sounds like the buzzer and Bill Raftery’s voice.  “March Madness” is just one example of a sports event that truly owns a time of the year and a name that fosters a powerful resonance in American culture.  Other examples include Monday Night Football, Sunday Night Football, and Super Bowl Sunday.

The Boston Athletic Association (BAA) thought that “Marathon Monday” was a unique day and term that specifically referred to the Boston Marathon.  In late October 2015, however, the U.S. Patent and Trademark Office’s Trial and Appeal Board (TTAB) ruled that “Marathon Monday” does not point “uniquely and unmistakably” to the BAA.  The TTAB was correct in denying the trademark, because Marathon Monday is not an event that is specifically associated with the Boston Marathon.  Beginning in the 1970’s, marathons have become incredibly popular throughout the United States, and that meant that there was a high probability that the term “Marathon Monday” would be used in many different ways.  The BAA should have attempted to trademark the term in the 1970’s, because now the Disney Marathon and New York Marathon both use the term “Marathon Monday.”

VIEW PDF

February 9 / Article, Trademark

Mascot Madness: Are Characters in Times Square Violating Trademark Law?

Abstract: In recent years, New York City’s Times Square has become overrun with life-sized cartoon characters and superheroes.
The costumed performers – often undocumented immigrants – wander the streets dressed in costumes, posing for pictures with tourists and demanding money in return. Their solicitations are often aggressive. Refusals to pay have often escalated into violent, even criminal encounters. The activity in Times Square has also raised trademark issues. The First Amendment generally protects the costumed performers’ right to dress up like characters in public. The First Amendment also protects the costumed performers, so long as they ask for “donations” and “tips.” However, copyright and trademark owners, such as The Walt Disney Company (“Disney”) and Sesame Workshop, among others, have a legitimate interest in protecting their intellectual property. Such interests include their rights to terminate unlicensed use and to protect against consumer confusion and trademark dilution. Courts have not yet addressed whether or not the costumed performers have infringed on trademarked characters. This article explores related case law to determine whether or not the performers’ solicitations constitute trademark infringement, and the substance of the performers’ defenses to infringement if it exists.

VIEW PDF

 

November 25 / Blogs, Copyright, Other Intellectual Property, Patent, Trademark

Intersection of American Law and Technology: The Innovation Act’s Fight Against Patent Trolls

Abstract: Few issues have attracted more legal attention and spurred more public debate in recent years than the controversy over patent rights. The crossroads of American law
and innovation finds its origin in the U.S. Constitution. Article 1, section 8 states that “Congress shall have the power to…promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” The founding fathers recognized the social value of innovation, and the critical role government will inevitably play in protecting and encouraging technological advances.

Out of the foundations of the Constitution grew an elaborate system of patent laws, evolving over time to meet the needs of modern society. Nevertheless, in recent years, the frequency of extraneous patent lawsuits has become increasingly concerning. The economic and social burdens of frivolous litigation have led “academics, policymakers, and even judges to suggest that patent law[s] may have overleaped its proper bounds, or at least become too likely to frustrate, rather than to fulfill, its constitutional purpose of ‘promot[ing] the progress of science and useful arts’. The primary causes of this problem are the overly litigious entities pejoratively known as patent trolls, who are collectively responsible for the majority of today’s patent infringement cases. Although solutions to this complex problem are evasive, the need for reform is readily apparent. One of the most important and highly debated pieces of legislature surrounding the issue of patent trolls is the Innovation Act. This article introduces the Innovation Act, discusses proposed arguments for and against it, and opine on its merit.

VIEW PDF

April 6 / Trademark

B&B Hardware v. Hargis: Decision and Impact

By: Jonathan Hu

On March 24, 2015, the Supreme Court of the United States reversed the Eight Circuit’s decision and ruled that issue preclusion applies in B&B Hardware v. Hargis Industries, Inc.[1] Justice Alito delivered the majority opinion for the Court, in which he was careful to limit the holding to only certain trademark infringements. Justice Ginsburg filed a concurrence, while Justices Thomas and Scalia dissented.

Background:

The Petitioner, B&B Hardware, Inc. (“B&B”), manufactures and sells self-sealing fasteners in the aerospace industry. B&B registered the mark “SEALTIGHT” in 1993. The Respondent, Hargis Industries, Inc. (“Hargis”), also manufactures and sells fasteners, but in the construction industry. Hargis attempted to register the mark “SEALTITE” in 1996, but B&B opposed the application and sued Hargis for infringement. The Trademark Trial and Appeal Board (“TTAB”) determined that there was a likelihood of confusion between the two marks and thus denied Hargis’ application. In contrast, a jury trial in 2000 found B&B’s mark to be merely descriptive and that it had not acquired a secondary meaning. This finding was further upheld by the Eighth Circuit in 2001.[2] However, when the TTAB took up Hargis’ petition to cancel B&B’s mark in 2001, the TTAB dismissed the petition in 2003. The TTAB also denied a subsequent attempt by Hargis to register “SEALTTIE” in 2007.[3]

In 2003, B&B filed a second infringement suit against Hargis. The Eastern District Court of Arkansas dismissed this suit in 2007 on the grounds that the first infringement suit precluded the second one.[4] However, the Eighth Circuit reversed this decision in 2009 on the grounds that the prior case did not address the issue of likelihood of confusion.[5] On remand, a jury found no likelihood of confusion between “SEALTIGHT” and “SEALTITE”. In response, B&B sought a new trial because the district court refused to give preclusive effect, or even deference, to the TTAB’s likelihood of confusion finding. The district court denied the motion.[6] The Eighth Circuit affirmed and reasoned that the TTAB did not decide the same likelihood of confusion issue that was presented to the district court.[7]

The Supreme Court granted a writ of certiorari on July 1, 2014[8] and heard the case on December 2, 2014.

Decision:

The Court found that issue preclusion applied because the same likelihood-of-confusion applied to both registration and infringement in this case.[9] While the TTAB may have focused on different factors in its analysis, compared to the district court, the case turned on whether the same standard to the usage was applied. Here, the Court determined the same standard was applied for three reasons. First, the operative language is essentially the same. Second, the likelihood-of-confusion language that Congress used these Lanham Act provisions has been central to trademark registration. Third, district courts can cancel registrations during infringement litigation, just as they can adjudicate infringement in suits seeking judicial review of registration decisions. The Court found no reason to think that the same district court judge should apply two separate standards for likelihood of confusion.

Dissent:

Justice Thomas’ dissent was focused on the broader issue of giving administrative agencies the power to preclude issues from Article III courts. The dissent examined the genesis of the majority opinion’s precedence and found the dicta both unpersuasive and troubling. Justice Thomas concluded that to presume administrative agencies have the power to preclude issues from Article III courts, and apply it to adjudication in a private-rights dispute, would raise serious constitutional questions.

Justice Alito’s opinion sidesteps Justice Thomas’ dissent. Justice Alito noted in footnote 2 that the Court was not specifically deciding the issue of administrative agencies having the power to preclude issues from Article III courts. This was because neither party challenged this foundation. In theory this leaves the topic open for future debate. However, the Court’s 7-2 opinion in this case noted that until Congress clarifies otherwise, administrative agencies will continue to have the opportunity to decide and thereby preclude certain issues from future re-litigation.

Impacts:

There are various ramifications from this case.

First, the decision does not cover every instance of the TTAB’s findings for a likelihood of confusion. Justice Ginsburg’s concurrence specifically highlighted that the Court’s opinion for issue preclusion does not apply to all instances because contested registrations are often decided upon a comparison of the marks in the abstract and apart from their marketplace usage. When the registration proceeding is of that character, there will be no preclusion of the likelihood-of-confusion issue in a later infringement suit.

Second, parties will take more care when litigating in front of the TTAB. “While the TTAB cannot award damages or find infringement, its decisions could now be used as grounds for finding infringement in District Court.”[10]  This may specifically impact how evidence is presented by parties to the TTAB because of the Court’s focus on how the comparison and evidence presented to the TTAB may determine when preclusion is appropriate.[11]

Lastly, “prior to this decision, if a case was simultaneously pending in the District Court and before the TTAB, the TTAB would readily stay its determination until the litigation in District Court was resolved.”[12] With the Court’s affirmation that issue preclusion may apply from the TTAB’s decisions, this may no longer be the case.

 


 

[1] B&B Hardware, Inc. v. Hargis Industries, Inc., 113 U.S.P.Q.2d 2045.

[2] B&B Hardware, Inc. v. Hargis Industries, Inc., 252 F.3d 1010 (8th Cir. 2001).

[3] B&B Hardware, Inc. v Sealtite Building Fasteners, 2007 WL 2696310, at *12-13 (2007).

[4] B&B Hardware, Inc. v. Hargis Industries, Inc., 2007 WL 2711647 (E.D. Arkansas 2007).

[5] B&B Hardware, Inc. v Hargis Industries, Inc., 569 F.3d 383, 390 (8th Cir. 2009).

[6] B&B Hardware, Inc. v. Hargis Industries, Inc., 736 F.Supp.2d 1212 (E.D. Arkansas 2010).

[7] B&B Hardware, Inc. v. Hargis Industries, Inc., 716 F.3d 1020, 1024 (8th Cir. 2013).

[8] B&B Hardware, Inc. v. Hargis Industries, Inc., 134 S.Ct. 2899 (2014).

[9] B&B Hardware, Supra 1.

[10] Munro, John E., B&B Hardware, Inc. v. Hargis Industries, Inc.: Trademark Litigation Might Get Simpler, National Law Review, (March 27, 2015), http://www.natlawreview.com/article/bb-hardware-inc-v-hargis-industries-inc-trademark-litigation-might-get-simpler.

[11] See Little, Trevor, US Supreme Court decision means that TTAB proceedings just got more important, World Trademark Review, (March 25, 2015), http://www.worldtrademarkreview.com/blog/detail.aspx?g=6d2aef4b-31a5-4528-b712-b31a1d456973.

[12] Munro, John E., Supra 10.

March 30 / Trademark

Hana Financial, Inc. v. Hana Bank

By: Brianna Nassif 

The Supreme Court granted certiorari in 2014 in the Ninth Circuit case Hana Fin., Inc. v. Hana Bank.[1] The case involves two Korean-based financial institutions.[2] It addressed a circuit split on the question of whether trademark priority established by trademark tacking is a question for the jury.[3] This article will examine the court’s discussion of the appropriate legal standard to be applied in tacking cases, and the potential broader implications of this decision in other trademark matters.

Legal Background:

Questions of trademark rights and priority are generally settled by determining which party was the first to use the mark. This analysis can be complicated, though, by trademark tacking. Trademark tacking allows a mark owner to “tack” its use of a revised mark to its use of its original mark for purposes of establishing priority.[4] This narrow doctrine requires the court to determine whether the original and revised marks create a “continuing commercial impression” and are thus “legal equivalents.”[5] Neither party in this case disputes the tacking doctrine or its legal standard; rather, the issue is whether the judge or the jury should determine whether tacking applies.

Facts and Procedural History:

Hana Financial, the petitioner, was established in 1994 and registered its mark in 1996. Hana Bank, the respondent, was established in Korea in 1971 as the Korea Investment Finance Corporation. It changed its name to Hana Bank in 1991. The American branch of the company was established in 1994 and was named Hana Overseas Korean Club. US advertisements used the Hana Overseas Korean Club name in both Korean and English. They also used the words “Hana Bank” in Korean. In 2000, the name was changed to Hana World Center before being established as Hana Bank in 2002. In 2007, Hana Financial sued Hana Bank for trademark infringement. Hana Financial contended that the word “Hana” used by two financial entities was likely to cause confusion.[6]

Hana Bank’s defense in the infringement case was that it had established priority through trademark tacking. Under this theory, Hana Bank argued that it could “tack” the Hana Bank mark to its original Hana Overseas Korean Club mark established in 1994, thus establishing priority over the Hana Financial mark.[7] The District Court agreed and granted Hana Bank’s motion for summary judgment. On appeal, the Court of Appeals for the Ninth Circuit found that there were questions of fact in the case and reversed and remanded it. In a jury trial in the District Court, the jury determined that the tacking defense applied and decided for Hana Bank. The Ninth Circuit Court of Appeals affirmed and Hana Financial appealed to the Supreme Court of the United States.

Ninth Circuit Appeal:

The Ninth Circuit opinion provided an overview of the tacking defense and its applications. The court relied on its previous decision in Brookfield Commc’ns, Inc. v. W. Coast Entmt. Corp. to explain the tacking analysis.[8] The court reiterated that tacking is permitted so as to encourage mark owners to apply minor alterations to their marks to reflect changing consumer demands and preferences.[9] Without this doctrine, mark owners would be punished for even slightly changing their marks because the clock would reset and they could lose priority.

In determining whether there is a commercial impression, the court explained that the perspective of the ordinary consumer of these kinds of goods and services should be used.[10] The main tools used to establish this standard are consumer surveys and the specific facts of the case.[11]

Before getting into the specific facts of this case, the court finally discussed the narrowness of the doctrine and its limited application. It pointed to the higher standard to be applied for legal equivalency compared to the standard used for likelihood of confusion and works through many examples where the doctrine did not apply.[12] Despite this narrow interpretation of the doctrine, the court concluded that “here, reasonable minds could disagree on whether the Bank’s marks were materially different.”[13] However, because the case was on appeal, Hana Financial, as the losing party in the lower court, would have to show that the evidence would only reasonably support their interpretation. Hana Financial did not reach this high standard.[14] The court properly instructed the jury, and the evidence was sufficient to support a verdict for Hana Bank on tacking.[15]

Supreme Court Appeal:

While the tacking doctrine is narrow, there is a circuit split on whether it is a question of law or fact, with the Federal and Sixth Circuits evaluating the doctrine as a question of law.[16] Justice Sotomayor’s opinion clearly stated that the commercial impression of the mark is a question of fact for the jury because it relates to the perspective of the ordinary consumer.[17]  She specified that a judge can still rule on tacking when cases are being decided for summary judgment or for judgment as a matter of law, but cannot be the decision-maker in a jury trial.[18]

Hana Financial raised four main arguments, each of which was rejected by the unanimous court. The first was that the “legal equivalents” test requires the application of a legal standard, which is usually reserved for the judge. The court recognized Hana Financial’s argument, but explained that mixed questions of law and fact, like this one, generally go to the jury for resolution.[19] The second argument was that tacking decisions “create new law,” which is also usually reserved for judges. Hana Financial did not offer support for this argument, and so the court dismissed it.[20] Its third contention was that allowing juries to answer the tacking question sacrifices predictability of the system. There was no evidence, however, to explain how the decreased level of predictability in tacking is any different from that in a tort, contract or criminal case, so the argument was rejected.[21] The final argument raised by Hana Financial was that judges traditionally were the ones to resolve tacking questions. However, it relied on precedent in which judges decided on summary judgment or judgment as a matter of law, which judges would still retain the authority to decide.[22] For these reasons, the Supreme Court affirmed the Ninth Circuit’s decision for Hana Bank and resolved the circuit split by defining trademark tacking as a question of fact for the jury to decide.

Implications:

Trademark tacking is a narrow doctrine with limited application. While the Supreme Court did not discuss the impact of its decision on other trademark questions, the ordinary consumer impression standard is frequently used in trademark law.[23] For instance, the court applies a similar analysis when determining the likelihood of confusion in infringement cases.[24] Because the Federal, Second, and Sixth Circuits do not treat likelihood of confusion as a pure question of fact, trademark owners in future cases in those courts may argue that the Hana standard should apply and that the question should go to the jury. The Hana Financial case may therefore have broader implications than the narrow tacking doctrine it decided on specifically.

 


 

[1] Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 907 (2015).

[2] Id.

[3] Id.

[4] See generally 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 17:26 (4th ed. 2013).

[5] Hana Fin., Inc., 135 S. Ct. at 908.

[6] Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158, 1162 (9th Cir. 2013) cert. granted, 134 S. Ct. 2842, 189 L. Ed. 2d 805 (2014) and aff’d, 135 S. Ct. 907 (2015).

[7] Hana Fin., 735 F.3d at 1163.

[8] See Hana Fin., 735 F.3d at 1164 (citing Brookfield Commc’ns, Inc. v. W. Coast Entmt. Corp., 174 F.3d 1036 (9th Cir. 1999)).

[9] See Hana Fin., 735 F.3d at 1164.

[10] See id.

[11] See id.

[12] See id. at 1165.

[13] Id. at 1166.

[14] Hana Fin., 735 F.3d at 1166.

[15] Id.

[16] Hana Fin., Inc., 135 S. Ct. at 907 (2015).

[17] See id. at 911.

[18] Id.

[19] Id.

[20] Id. at 912.

[21] Id. at 909.

[22] Id.

[23] See Carlo F. Van den Bosch, Supreme Court Update – Hana Financial v. Hana Bank, The National Law Review (Feb. 5, 2015), http://www.natlawreview.com/article/supreme-court-update-hana-financial-v-hana-bank.

[24] See Supreme Court’s Trademark Tacking Decision: Possible Impact on Likelihood of Confusion, Morgan, Lewis & Bockius (Jan. 22, 2015), http://www.morganlewis.com/pubs/supreme-court-s-trademark-tacking-decision-possible-impact-on-likelihood-of-confusion?p=1#_ftn8.

February 3 / Trademark

B&B Hardware, Inc. v. Hargis Industries, Inc.

B&B Hardware, Inc. v. Hargis Industries, Inc.

 By: Jonathan Hu

On December 2nd of 2014, the Supreme Court heard oral arguments for B&B Hardware v. Hargis Industries, Inc. The case represented the conclusion of a long legal battle between the two parties and was the Court’s first review of trademark law in more than a decade.[1]

Background:

The Petitioner, B&B Hardware, Inc. (“B&B”), manufactures and sells self-sealing fasteners in the aerospace industry. B&B registered the mark “SEALTIGHT” in 1993. The Respondent, Hargis Industries, Inc. (“Hargis”), also manufactures and sells fasteners, but in the construction industry. Hargis attempted to register the mark “SEALTITE” in 1996, but B&B opposed the application and sued Hargis for infringement. The Trademark Trial and Appeal Board (“TTAB”) determined that there was a likelihood of confusion between the two marks and thus denied Hargis’ application. In contrast, a jury trial in 2000 found B&B’s mark to be merely descriptive and that it had not acquired a secondary meaning. This finding was further upheld by the Eighth Circuit in 2001.[2] However, when the TTAB took up Hargis’ petition to cancel B&B’s mark in 2001, the TTAB dismissed the petition in 2003. The TTAB also denied a subsequent attempt by Hargis to register “SEALTTIE” in 2007.[3]

In 2003, B&B filed a second infringement suit against Hargis. The district court dismissed this suit in 2007 on the grounds that the first infringement suit precluded the second one.[4] However, the Eighth Circuit reversed this decision in 2009 on the grounds that the prior case did not address the issue of likelihood of confusion.[5] On remand, a jury found no likelihood of confusion between “SEALTIGHT” and “SEALTITE”. In response, B&B sought a new trial because the district court refused to give preclusive effect, or even deference, to the TTAB’s likelihood of confusion finding. The district court denied the motion.[6] The Eighth Circuit affirmed and reasoned that the TTAB did not decide the same likelihood of confusion issue that was presented to the district court.[7]

The Supreme Court granted a writ of certiorari on July 1st, 2014.[8]

Issues:

Two issues were granted and presented to the Court:

  • Whether the TTAB’s finding of a likelihood of confusion precludes respondent from re-litigating the issue in infringement litigation, in which a likelihood of confusion is an element; and
  • Whether if issue preclusion does not apply, the district court was obliged to defer to the Board’s finding of a likelihood of confusion absent strong evidence to rebut it.

Hearing:

The Supreme Court heard oral arguments on December 2­, 2014.  A few specific lines of questioning arose from the Court.

  • Differences between the TTAB and the US District Court
  • What is at stake?

Justice Ginsburg started the questioning by asking Petitioner whether the stakes are different between the two sessions and essentially if this was by design. She noted that the Second Restatement of Judgments allows for administrative judgments to be confined to specifically agreed issues and not be preclusive. The goal of this is to encourage expeditious trials and avoid having parties being bogged down by pretrial preparations. She highlighted this by noting that it was one thing to deny someone a trademark and another to disallow any use of it at all because of infringement.

Petitioner responded by arguing that the inquiry was ultimately the same in both, albeit different issues.  Petitioner then analogized the issue of confusion as a factual one, akin to priority that the TTAB may determine and could be thereafter precluded from being re-litigated. Ultimately, even if the stakes may be different between the TTAB and the district court, the issue being analyzed would be the same.

Respondent also forwarded the interesting argument that the issues at stake with the TTAB and the district court were different.  Respondent argued that the TTAB analyzed “confusing marks” while a district court infringement suit looked at “confusing use.” Justice Scalia, however, was not convinced and inquired the difference between having a trademark applied to a good and a good’s use. Respondent tried to use an example of shoes with a “SIKE” mark, but Justice Scalia remained uncertain, if not unconvinced, that the issue would be limited to confusing use, but not confusing resemblance.

  • What evidence is permitted?

The Court asked all parties about the differences in the proceeding process between the TTAB and the district court. While Petitioner and the Government tried to paint the processes as nearly identical, with insignificant differences, the Court pushed the point home that there were evidentiary limitations with the TTAB. For example, Justice Kagan brought up the fact that an average proceeding cost at the TTAB is only about 10% of that at a district court, and that the TTAB does not allow live witnesses to testify. As for the latter point, Respondent drew from the case at hand, in which the TTAB proceeding only had four depositions and no discovery. In comparison, the district court proceeding had fourteen live witnesses and approximately four-thousand pages of discovery.

The limitations on evidence dovetailed with Justice Sotomayor’s reference to the Court’s holding in Kappos v. Hyatt. The Court held in 2012 that if new evidence was presented on a disputed question of fact, a district court would have to make a de novo factual finding that took account of the new evidence and the administrative record before the Patent and Trademark Office.[9]  As Respondent argued, the evidence that was most crucial for resolution of infringement litigation – the sophistication of consumers – was legally inadmissible before the TTAB.

  • Is there a middle ground of deference?

Lastly, the Court inquired both parties about the possibility of only deference being given in place of preclusion. However, neither party was interested. Petitioner first explicitly made known its preferred position, before concluding that any possible deference should be strong. Respondent likewise argued that any deference would only exist when inquiries were identical between the TTAB and the district court. However, Respondent noted such scenario would never actually happen.

Conclusion

A decision is expected to be delivered around April or May 2015.[10] From initial impressions, it seems that the case is close with the Court leaning in no specific direction.[11] It remains to be seen if the Court is too uncomfortable with deciding any kind of impactful or sweeping decision and will instead produce a limited decision. Indeed, some outside parties are concerned that the decision in this case may affect other legal precedence like Coakwell v. United States and its subsequent progeny.[12]

 


 

[1] Mann, Ronald, Argument preview: Justices will use rare look at trademark law to consider broad and narrow conceptions of trademark, SCOTUSblog, (January 4, 2015), http://www.scotusblog.com/2014/12/argument-preview-justices-will-use-rare-look-at-trademark-law-to-consider-broad-and-narrow-conceptions-of-trademarks/.

[2] B&B Hardware, Inc. v. Hargis Industries, Inc., 252 F.3d 1010 (8th Cir. 2001).

[3] B&B Hardware, Inc. v Sealtite Building Fasteners, 2007 WL 2696310, at *12-13 (2007).

[4] B&B Hardware, Inc. v. Hargis Industries, Inc., 2007 WL 2711647 (E.D. Arkansas 2007).

[5] B&B Hardware, Inc. v Hargies Industries, Inc., 569 F.3d 383, 390 (8th Cir. 2009).

[6] B&B Hardware, Inc. v. Hargis Industries, Inc., 736 F.Supp.2d 1212 (E.D. Arkansas 2010).

[7] B&B Hardware, Inc. v. Hargis Industries, Inc., 716 F.3d 1020, 1024 (8th Cir. 2013).

[8] B&B Hardware, Inc. v. Hargis Industries, Inc., 134 S.Ct. 2899 (2014).

[9] Kappos v. Hyatt, 132 S.Ct. 1690, 1700 (2012).

[10] Israelsen, R. Gregory, Supreme Court hears oral arguments in B&B Hardware, Inc. v. Hargis Industries, Inc., Lexology (January 5, 2015), http://www.lexology.com/library/detail.aspx?g=756f5468-6b16-42df-a8a8-8c9aeaac2edd.

[11] Mann, Ronald, Supra 1.

[12] Englehard, Alexander B. and Charles L. Gholz, Will B&B Hardware v. Hargis Industries Affect Coakwell v. United States?, Intellectual Property Today (January 4, 2015), http://www.iptoday.com/issues/2014/05/will-ub&b-hardware-u-v-uhargis-industries-u-affect-ucoakwell-u-v-uunited-states-u.asp.

June 10 / All Articles, Trademark

Geographical Indications: Which Way Should ASEAN Go?

‘Geographical Indications’ (GIs) under the Trade-Related Aspects of Intellectual Property Rights (hereafter TRIPS) has been the subject of vigorous scholarly debate across the world in the last decade. The TRIPS is the first multilateral text providing for a comprehensive protection of GIs. It provides for (a) a base-level protection for geographic indications related to all products; (b) an additional protection for wines and spirits; and (c) an extra-additional protection only for wines. The ‘extra-additional’ protection accorded to wines has generated significant controversy and discussion. The TRIPS mandates the need to accord protection for each GI for wines in the case of homonymous indications and the establishment of a multilateral system of notification and registration of GIs for wines eligible for protection in the jurisdictions of those WTO members participating in the system. However, this mandate has not been brought into effect even though it has been a decade since the first discussions on this issue at the Fourth WTO Ministerial Meeting in Doha in November 2001. The lack of consensus of WTO members on this issue in 2001, and at the subsequent meetings in 2003 and 2005 are for once not attributable to the tussle between the so-called ‘old world countries’ and the ‘new world countries’ headed by the European Union and the United States respectively. While the old world/new world tussle was responsible nonetheless for the creation of a hierarchical system of GI protection in the first instance, the reason for the current deadlock is that on the one hand, some Asian, European and African countries are seeking to extend the extra-additional protection to include other products which can help to promote the export of valuable products and prevent misappropriation. On the other hand, countries like United States, Australia, Philippines, Japan and New Zealand are of the view that according higher protection to all GI products will lead to increased administrative costs as well as potentially hinder imports.

 

It is in this context that this paper attempts to understand the legal framework of GIs under the TRIPS from the lens of the Association of South East Asian Nations (ASEAN) and review the divergent positions leading to the deadlock.  The purpose of this discussion is to ascertain whether or not it is possible for ASEAN countries, to take a position with either camp.

 

* Malobika Banerji

September 23 / All Articles, Copyright, Trademark

A Constitutional Right To Deceive?: The First Amendment Implications of Regulating Pay Per Click

Mainstream search engines derive their principal source of revenue from advertising. [1] Pay Per Click Advertising (hereinafter “Paid Placement”) is one of the most widely utilized advertising practices, offering content providers the opportunity to create short textual advertisements hyperlinked to their website. [2] Providers bid on keywords associated with their advertisement, [3] and when a user incorporates these keywords into his or her query, the provider’s textual advertisement will appear along with the engine’s organic results. [4] Generally speaking, mainstream search engines segregate these results, and refer to them as “Sponsored Links,” “Sponsored Matches,” or “Sponsored Results” [5] (hereinafter collectively referred to as “Sponsored Results”). These results most often appear in a separate column or are arranged directly above the search engine’s organic results. [6]

Despite Paid Placement’s utility from a marketing perspective, the practice has been sharply criticized. [7] Some authors argue that a search engine’s failure to clearly segregate Sponsored Results leads many users to believe they are delivered based on relevancy alone. [8] These authors argue that this misconception can only be corrected by incorporating uniform regulations for presenting Sponsored Results. [9]

Although these regulations are well-intentioned, requiring a normative framework for arranging Sponsored Results may come at a price. The right to freedom of speech necessarily includes the right not to speak. [10] Imposing a regulatory framework for presenting Sponsored Results would be akin to forcing a search engine to speak. [11] Whether this amounts to a First Amendment violation raises two questions: First, does the act of providing search results constitute a protected form of expression? Second, if so, what level of protection should this expression be accorded? [12]

This Note examines the constitutionality of regulating Paid Placement under the First Amendment’s freedom of speech guarantee. Part I of this Note provides an overview of how mainstream search engines operate and describes the controversy surrounding Paid Placement. Part II argues that the act of providing search results constitutes an expressive activity that falls within the ambit of the First Amendment. Part III examines whether regulating Paid Placement warrants exacting review; or, in the alternative, the commercial speech doctrine’s more deferential brand of scrutiny. Part IV argues that even if Paid Placement constitutes commercial speech, imposing a uniform set of regulations in this context does not materially advance the governmental interest in promoting informed online decision-making. Finally, Part V provides suggestions on structuring regulations in the event governmental intervention becomes a reality….

 

Peter T. Tschanz*

March 26 / All Articles, Trademark

Is Genericide a Matter of Fact or of Merit?

In Bayer Co. v. United Drug Co., one of the most well-known genericide cases, Learned Hand famously pronounced:

 

The single question, as I view it, in all these cases, is merely one of fact: What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, then, I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more. He has failed …. [1]

Judge Hand’s statement is the classic and oft-quoted definition of genericide: when a formerly fanciful term becomes associated in the public mind with a specific good rather than a specific brand, the term enters the public domain and loses its trademark status. This is a factual distinction, based solely on the public’s understanding of the term’s meaning. Consequently, there can be no benefit to the mark holder for having acted to defend its mark, nor any sort of presumption of waiver or estoppel for failure to act. All that should matter is how buyers now understand the mark, as evidenced by factual indicia like their actions, statements, or survey responses.

 

However, courts’ analyses of genericness are rarely this straightforward. While most courts agree with Judge Hand that a trademark owner’s defense of its mark does not prove that the mark retains protection, many of them are willing to use the trademark owner’s actions as evidence that the mark has become generic. J. Thomas McCarthy, in his treatise on trademarks and unfair competition, notes:

 

There is a great deal of imprecise talk in the case law as to the impact, if any, of plaintiff’s failure to sue third-party infringers. While many defendants, and some courts, talk about such a failure to sue in terms of “abandonment,” other courts state with vigor that the failure to sue others is totally irrelevant. The truth lies somewhere in between. [2]

The situation is even more confusing than Professor McCarthy indicates. Some courts discuss abandonment and genericide-through-inaction separately, as if they were independent categories. [3] Some of the courts who “state with vigor that the failure to sue others is totally irrelevant” [4] subsequently weigh that failure to sue as evidence in the course of the same opinion. Learned Hand himself, in the same Bayer opinion in which he holds that the entire analysis ought to turn upon the buyer’s understanding, concludes that Bayer had allowed the term ‘aspirin’ to become generic by failing to take affirmative steps to show that it was not, and that, “Having made that bed, they must be content to lie in it.” [5] Clearly the “single question” of buyer understanding is neither as simple nor as absolute as courts’ pronouncements would lead one to believe.

 

Because few courts either say what they are doing or do what they say on this count, it can be difficult to determine what is actually going on. Through analysis of a number of historic cases and a few contemporary ones, this paper will explore the ways in which genericide has been treated. It will also investigate the extent to which courts’ vagueness in defining what a trademark owner must do to protect its mark has compelled mark owners to be excessively zealous in prosecuting infringers, out of fear that inaction may be used against them in the future….

 

Shoshana Stern

January 10 / All Articles, Trademark

“Fair Use” Trumps Likelihood Of Confusion In Trademark Law The Supreme Court Rules In KP Permanent v. Lasting Impression

In KP Permanent Make-Up, Inc., v. Lasting Impression I, Inc., the U.S. Supreme Court held that a defendant asserting the affirmative defense of fair use in response to a claim of trademark infringement does not have to shoulder the burden of proving there was no likelihood of confusion as a result of their fair use. [1] The Supreme Court granted KP Permanent’s petition for certiorari in this matter to resolve a split among six of the federal courts of appeal. [2]

 

This article will first consider both the common law and statutory history underlying the fair use doctrine of trademark law. The article will then consider the KP Permanent case and its procedural history, taking into account the shortcomings of the Supreme Court’s holding, not only with respect to the decision, but also to the possible ripple effects of that decision. Finally, a test will be suggested that would offer some protection for business owners of incontestable descriptive marks whose rights have been somewhat diminished after KP Permanent.

 

Michael Fuller *