Remembering Rep. John Lewis, Who For Years Stood With Native American Peoples in Opposing Washington’s “Redskins” Moniker

            The late Rep. John Lewis stands among a handful of Civil Rights juggernauts whose actions and sacrifices shaped the history of racial justice in this country.  Recognized as an aide and close associate of the Reverend Dr. Martin Luther King, Jr., Lewis is perhaps best known as an organizer of several peaceful protests in support of racial equality during the Jim Crow Era, including several “Freedom Rides” through the American South in 1961, the 1963 March on Washington and the 1965 Montgomery-to-Selma marches.

 Lewis’ fight for equality did not end with the abolition of Jim Crow laws in the U.S., however.  He continued to fight for justice and equality as a member of the United States House of Representatives, where he represented Georgia’s 5th Congressional District for more than 30 years.  As a member of Congress, Lewis championed civil rights through legislation, inter alia, sponsoring 20 bills supporting Native American causes and policy.  Among these, Lewis enthusiastically endorsed a 2013 House bill designed to cancel federal trademark protection for the “Redskins” name and prevent it from being registered in the future, joining with the National Congress of American Indians in their fight to end the use of the offensive name and logo in connection with an NFL sports team representing our nation’s capital.  The bill, H.R. 1278, called the Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act, never got a hearing in the House.  However, Lewis’ signature on the bill gave it the imprimatur of a civil rights icon and elevated a decades-long effort by Native Americans to end use of the pejorative term in sports.

Days before Lewis’ death on July 17, 2020, the owner of the Washington team announced his plans to retire the Redskins name and logo.  Likely succumbing to tremendous pressure from D.C. officials and large corporate sponsors—including FedEx, Nike and Pepsi, who themselves have had to reckon with a surge of anti-racist protests following the deaths of George Floyd, Breonna Taylor and others at the hands of the police—the team has decided to evaluate other possible team names to replace the current branding, which many deem a racial slur.  Often called  “conscience of Congress,” Lewis made it his life’s work to spread consciousness to others and did so until his dying day.

Booking.com Decision: What Does it Mean?

On June 30, 2020, the Supreme Court of the United States (SCOTUS) ruled that “generic.com” marks may be registered at the United States Patent and Trademark Office (USPTO) when consumers do not perceive them as generic.  Booking.com had sought to register its domain name as a service mark for hotel reservation services, but the USPTO had denied registration on the ground that combining a generic term with “.com” does not create a protectable mark.  Booking.com sought review of the USPTO’s decision in federal district court.  The district court found that a generic term, combined with “.com”, may be registered as a trademark if the mark has acquired secondary meaning; since Booking.com had survey evidence showing secondary meaning, Booking.com was thus eligible for protection.  The 4th Circuit affirmed, and so did SCOTUS.

The jury is still out on how the SCOTUS decision will be interpreted by the USPTO.  Consider the recent decision by the Federal Circuit, in In re: GJ & AM, LLC, for the mark COOKINGPELLETS.COM.  There, the USPTO refused to register the mark COOKINGPELLETS.COM for a company that sells cooking pellets online.  As in Booking.com, the USPTO refused registration on the basis that a “.com” cannot transform a generic mark into a registrable mark.  Applicant appealed to the Federal Circuit, and the case was pending there while SCOTUS decided Booking.com.  After the SCOTUS decision came down, the Federal Circuit sought supplemental briefing.  In its brief, the USPTO argued that Booking.com does not impact its decision to deny registration because Booking.com implicates only the genericness ground alone.  In other words, the USPTO argued that it properly denied registration because there was substantial evidence that the mark was merely descriptive and lacks acquired distinctiveness – without having to address genericness.  The issue in these briefs, however, is that the USPTO is apparently not taking into consideration the “.com” portion of the word – which is what Booking.com was all about.

Based on these briefs, the Federal Circuit remanded the case to the USPTO on the ground that the Board (i.e. USPTO) is in the best position to decide the case in the first instance.

Beyoncé Prevails with Blue Ivy Carter

The Trademark Trial and Appeal Board has ruled in favor of Beyoncé in a legal battle to secure intellectual property rights  to  her first daughter’s name, Blue Ivy Carter.

Beyoncé filed an “intent-to-use” trademark application for the BLUE IVY CARTER mark through her company, BGK Trademark Holdings, LLC, for a wide range of goods and services that includes baby and hair products, fragrances, entertainment services and more.  However, in a notice of opposition filed in 2017, Massachusetts wedding planner, Veronica Morales, challenged the singer’s application – stating that she has used the mark BLUE IVY EVENTS since  before Beyoncé’s daughter was even born.  Morales also secured a trademark registration from the U.S. Patent and Trademark Office (USPTO) for the mark BLUE IVY in 2012 for event planning services.

Beyoncé’s legal team argued that it was unlikely that consumers would confuse “a boutique wedding event planning business and Blue Ivy Carter, the daughter of two of the most famous performers in the world.”

On June 30, 2020, the Trademark Trial and Appeal Board (TTAB) officially sided with the legendary singer, characterizing Morales’ opposition as “unnecessary and a waste of time,” finding that there was “no evidence suggesting they are related in a manner that would give rise to the mistaken belief that they emanate from the same source.”

Serbs 1 – Elon Musk 0

It seems Elon Musk will not be selling TESLAQUILA alcoholic beverages anytime soon, as Serbs beat him to it with SPIRIT TESLA for plum brandy.  The Tesla saga started as an April Fool’s joke back in 2018.  Well-known Tesla CEO, Elon Musk, facetiously tweeted that Tesla had gone bankrupt and that he had passed out surrounded by “Teslaquila” bottles.  The mention of “Teslaquila” was received with great excitement by Elon Musk’s followers, who called on him to make the product a reality.  Although Musk reportedly promised that Tesla would be developing an alcoholic beverage, it seems unlikely that the company will do so under the brand name TESLAQUILA.

Musk filed a trademark application for TESLAQUILA but it was refused based upon prior senior user SPIRIT TESLA, owned by a Serbian company selling plum brandy.  SPIRIT TESLA is named after the famous Serbian scientist, Nikola Tesla – and not the electric vehicle company.  To overcome the refusal, Tesla unconvincingly argued that the term “Tesla” has become synonymous with their electric vehicles, and given the difference between SPIRIT TESLA’s plum brandy and TESLAQUILA agave liquor, there would be no risk of confusion between the marks.

The USPTO issued a second refusal finding that the marks were confusingly similar because of the identical term “Tesla,” the fact that they were both applied for in international class 33 (alcoholic beverage) and that the type of alcohol has no relevance to the likelihood of confusion standard.

Tesla chose not to respond to this second refusal, and thus abandoned the TESLAQUILA application on March 17, 2020.

Country Band Lady A[ntebellum] Sues Singer Anita “Lady A” White for Rights to TM

On July 8, 2020, newly renamed country music group, Lady A (which dropped the word “Antebellum” from its name because of the word’s ties to slavery) filed a lawsuit in Tennessee federal court against Black blues singer, Anita “Lady A” White, who has been performing under the name Lady A for years.  After negotiations between the parties regarding the use of the name broke down, the band — which holds a registered trademark in the name — filed a declaratory judgment action asking the court to rule that its use of the name does not infringe on White’s use of the name.  The band does not seek to prevent White from using the name, and it is not seeking monetary damages.  Rather, according to the complaint, the band “…wish[es] that the parties continue to coexist, and that [the band] be permitted to continue using the Lady A mark, for which [it] holds the incontestable Lady A registrations and for which the musical group’s goods and services have been identified for over a decade around the world.”  This case is pending in the United States District Court for the Middle District of Tennessee.

Dunnington Bartholow & Miller Trademark Bulletin Committee: Olivera Medenica, Donna Frosco (Partners); Sixtine Bousquet, Betsy Dale, Kamanta Kettle (Associates); & Valerie Oyakhilome (Paralegal).