FUCT Fashion Label Takes its ‘Scandalous’ Trademark Case to Supreme Court
On Monday, April 15, 2019, the Supreme Court considered the question of whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” trademarks is unconstitutional under the Free Speech Clause of the First Amendment.
Respondent Erik Brunetti, owner of the Los Angeles-based streetwear fashion brand FUCT, sought to register the brand’s name with the USPTO in 2011, but was denied registration by the USPTO, which cited the scandalous clause of the Lanham Act. Luckily for Brunetti, in 2017 the Supreme Court unanimously ruled in Matal v. Tam that a neighboring clause that applied to “disparaging” marks was unconstitutional, holding that the ban constituted viewpoint discrimination in violation of the First Amendment. In Matal v. Tam, an Asian-American rock band called The Slants attempted to register its name for trademark protection, but was denied because the USPTO believed the mark to be offensive to Asian-Americans.
Brunetti then appealed the USPTO’s decision and received a favorable ruling from the U.S. Court of Appeals for the Federal Circuit based on the Supreme Court’s unanimous ruling in Matal v. Tam. The government appealed, and the Supreme Court subsequently agreed to hear the case.
During the oral argument before the justices on April 15, U.S. Department of Justice Deputy Solicitor General Malcolm Stewart argued that it is the government’s responsibility to deny registration of trademarks that contain “scandalous” material. Stewart also stated that although the USPTO has previously defined scandalous marks as marks that are “shocking,” “disgraceful,” “offensive” and “disreputable,” going forward the USPTO would read the statute more narrowly and limit its application to terms that are shocking or offensive based on their “mode of expression,” rather than the “ideas that are expressed.”
Representing Brunetti was attorney John Sommer, who argued that offensiveness should not be the standard for turning down a trademark. The court grappled with the disparities in the USPTO’s application of the clause, as at one point a chart was brought out to demonstrate the USPTO’s inconsistencies in approving certain “scandalous” word marks over others.
A decision in the case is expected by summer.
TTAB Refused Trademark Registration for #MagicNumber108 Tagmark
Recently, the Chicago Cubs won the World Series for the first time in 108 years. One of the Chicago Cub’s biggest fan, Grant DePorter, filed a trademark application to register the mark #MagicNumber108 for goods in class 25.
The USPTO Examining Attorney refused the registration on the grounds that the sign #MagicNumber108 was an informational matter that failed to function as a trademark that indicates the source of DePorter’s goods. The Examining Attorney considered that people who include in social media posts the wording “#MagicNumber108” were expressing their support for the Chicago Cubs and their World Series Win instead of referring to any of DePorter’s goods.
The refusal to register #MagicNumber108 was affirmed by the Trademark Trial & Appeal Board (TTAB). The Board stated that the evidence provided by the Examining Attorney shows wide use of the proposed mark in a non-trademark manner, specifically as a hashtag. The Board further provided that although not every combination of a word and a hashtag would constitute an unregistrable hashtag, where such combination is used as part of an online social media search, it would not serve as a source that indicates function.
Finally, the Board concluded that the protectability of a combination of a word and a hashtag only depends on the perception of the relevant public and whether it will perceive the sign as a mark.
Federal Circuit Clarifies USPTO Requirement Regarding Adequacy of a Webpage as “Specimen Of Use”
On April 10, 2019, the Federal Circuit Court of Appeals issued a precedential opinion affirming a decision by the Trademark Trial & Appeal Board (TTAB) that a webpage specimen of use that does not demonstrate a “point of sale” is insufficient to establish a “use in commerce” as required for federal registration.
Trademark owners applying for federal registration with the U.S. Patent and Trademark Office (USPTO) must provide a “specimen of use” demonstrating the use of the mark in commerce to identify the source of the goods or services to which it applies. Most trademark applicants provide website snapshots as “specimen of use.”
Siny Corp., in applying for the registration of the mark “CASALANA,” provided a snapshot from its website consisting of a photo sample of the “CASALANA” fabric and word mark but without the ordering information. After the USPTO Examining Attorney rejected the specimen, Siny Corp. provided a substitute specimen consisting of the same webpage but including the wording “for sales information” followed by a phone number and an email address. The Examining Attorney rejected the substitute specimen considering that it was “insufficient for consumers to make a purchase.” The TTAB upheld the refusal.
On appeal, the Federal Circuit panel affirmed the TTAB decision and ruled that for a website to meet the criteria of “use in commerce,” it should contain all information essential to a purchasing decision (such as price, method of payment, shipping information), otherwise it would constitute mere advertising.
Federal Court Finds That Wedding Venue Likely Infringed on Trade Dress of Barn
On April 10, U.S. District Judge for the Eastern District of Texas, Amos L. Mazzant, granted a motion to temporarily enjoin Ruth Farm Inc. from offering its wedding venue services because it likely infringed the trade dress of its rival, Sparrow Barns & Events LLC. Sparrow Barns claims that Ruth Farm’s wedding venue, The Nest, infringed on the unregistered trade dress of its wedding space, White Sparrow – a white, wooden barn that contains “vaulted ceiling beams and wrapped vertical columns,” “ornate, tiered candelabra chandeliers,” and a “selective back wall window design.” The owners of Ruth Farm admitted that they visited White Sparrow and were “inspired” by its design. The Court found that the design elements of the two barns were similar enough to show that Sparrow Barns was likely to succeed on its claims for trade dress infringement. The Court noted that the venues were more than traditional barns, and cited their similar “internal and external shape, decorative columns, vaulted and beamed ceilings, candelabra chandeliers, picturesque haylofts, window arrangements, wooden flooring, large entrance doors, and rustic whitewash paint.”
Nike Seeks to Register the Mark “Footware”
On March 21, 2019, Nike filed an intent-to-use application to register the mark “footware” for use in connection with data-sharing computer hardware and software, including sneaker-specific “computer hardware modules for receiving, processing, and transmitting data in Internet of Things (“IoT”) electronic devices and electronic devices and computer software that allows users to remotely interact with other smart devices for monitoring and controlling automated systems.” The application also covers cloud computing and related software.
Nike’s application marks another major foray into the wearable technology space. Nike previously developed a battery-powered, self-lacing sneaker called the Adapt BB, which retails for $350.00. If successful in obtaining a registration for its “footware” mark, Nike could end up with exclusive rights to use the term in connection with smart sneakers and other tech-supported footwear. Nike’s application is currently pending before the USPTO.
Legal Battle Over “Inter” Trademark Between Inter Miami and Inter Milan
Major League Soccer (MLS) argues that Inter Milan, a David Beckham owned soccer team competing in the MLS, will be damaged by Inter Milan’s registration of the mark “INTER.” Inter Milan, a world class Italian soccer team, filed an application with the USPTO in 2014 to acquire “INTER” as an exclusive brand. MLS recently filed an opposition to the “INTER” application on behalf of Inter Miami.
In its opposition, the MLS cites to a USPTO office action that noted that the word “Inter” is a descriptive term for Inter Milan’s goods and services. According to the trademark examiner assigned to the mark, “the term ‘INTER’ in applicant’s mark is short for ‘internacional’ (which translates to ‘international’) and ‘INTER’ is commonly used to describe soccer teams.” MLS also referenced another office action that asserted that the term “Inter” is frequently used in soccer.
MLS further cites to various examples of the term “Inter” being used for soccer team names in the US and in other countries such as Finland, Brazil, Croatia, Germany, Andorra, Angola, Haiti and Surinam. MLS argues that soccer teams cannot claim exclusive rights to the term “Inter” and that MLS’s use of INTER MIAMI CF can co-exist peacefully with other “Inter” team names.
MLS’s opposition is based upon Sections 2(d) and 2(e) of the Lanham Act, 15 U.S.C. § 1052. A response from the USPTO is expected around May 4.
Dunnington Bartholow & Miller Trademark Bulletin Committee: Olivera Medenica, Donna Frosco (Partners); Sixtine Bousquet, Betsy Dale, Kamanta Kettle, Tomas Mizrahi (Associates); Carolina Pineda (Special Counsel) & Valerie Oyakhilome (Paralegal).