Trademarks

Posts on trademark law

Game, Set, Match – Federer v. Nike and the RF Logo

Roger Federer is one of the most famous athletes of all time. He currently has won more majors than any male tennis player in the “Open Era,” and he is admired all over the world, not only for his excellence on the court but also for his humble attitude and family man persona off the court. Also, his initials are RF. Ordinarily this would be a banal detail if it weren’t for the fact that sportswear giant Nike currently owns the rights to a stylized version of Federer’s initials: the RF logo. In March 2018, Roger Federer and Nike’s 21-year relationship ended, and in June 2018, Federer entered into a $300 million deal with Uniqlo, a Japanese clothing company. Although Nike no longer has a clothing contract with Federer, Nike still owns the trademark registration in the iconic stylized RF logo in various registries across the world in classes of use covering clothing and footwear. (more…)

#Hashtag #Valuable Asset

As the explosion in popularity of various social media outlets continues, new norms are increasingly clear: once-descriptive social media hashtags and Twitter handles are now valuable assets that we associate with specific parties. Businesses, in particular, should have social media account usernames and hashtags cleared before using them in marketing and advertising their goods or services. (more…)

The Value of ZERO – Expanding the Doctrine of Generic Trademarks

A “generic” term for a general class of products or services cannot be used as a trademark or service mark for the goods or services in those class(es), because the function of a trademark (or service mark) is to identify and distinguish the goods or services of one seller from those sold by all others. Terms such as “apple” cannot serve as trademarks for goods comprising the edible fruits of the apple tree, but other terms that were once valid trademarks, capable of identifying a single purveyor of certain goods or services, have also fallen victim to “genericide” and lost their trademark significance. Some are now so commonly used that the consuming public may not even recognize that these terms were once considered exclusive trademarks of individual companies, such as escalator, linoleum, thermos, and trampoline. (more…)

Close your eyes and transport yourself to the cereal aisle of your grocery store: can you picture the design of a box of original Cheerios™, color and all? General Mills recently tried, and failed, to obtain a federal trademark registration for the yellow color of their Cheerios™ boxes that they hope you’re picturing right now, and their struggle illustrates the high burden faced by applicants for federal registration of color marks in the United States. (more…)

Yesterday, the Supreme Court of the United States handed down a landmark trademark decision that will pave the way for those with so-called “offensive” or disparaging trademarks to secure federal trademark registration for those marks. To date, the poster child for “disparaging” trademarks has been the Washington Redskins football team, whose name and logo have been the subject of increasingly vocal challenges by Native Americans and others as an offensive stereotype against Native Americans. (Ironically, even the members of the band The Slants, whose lawsuit eventually paved the way for the Redskins to maintain trademark registrations for the team name, were allegedly against the team’s use of the arguably offensive name.) (more…)

Trademark owners applying for “intent to use” applications risk loss of trademark rights if the identification of goods services in the intent to use application is broader than the actual intended use of the mark.

Brand owners generally want to protect a potential trademark as broadly as possible. Often, this leads to specifying as many goods or services in their intent-to-use trademark applications as might possibly be covered by the planned mark. If no proof of bona fide intent can be marshaled, the registration is vulnerable to attack.

A recent case demonstrates that dreaming big in trademark applications is not to be encouraged. While Kelly Services v. Creative Harbor did not result in a punitive cancelation of the mark’s resulting registration, it nonetheless made it clear that goods and services with only potential plans for use with a mark will be cut out of the registration when challenged. See Kelly Services, Inc. v. Creative Harbor, LLC, No. 16-1200 (6th Cir. 2017).

Section 1(b) of the Lanham Act does not define “bona fide intent,” but the Federal Circuit in Kelly Services required that “the applicant’s intent must be demonstrable and more than a mere subjective belief.” That is, the applicant must show more than a mere intention to reserve a right in the mark. Particularly suspicious circumstances that cast doubt on the bona fides of the application include: (1) excessive numbers of intent-to-use applications in relation to the number of products the applicant is likely to introduce; (2) unreasonably vague descriptions of the proposed goods; (3) excessive numbers of intended products; and (4) excessive numbers of desirable trademarks intended for use on a single new product.

To demonstrate the presence of their bona fide intent to use a mark, however, brand owners can do a number of things. For example, the owner can: (1) conduct a trademark availability search on the mark; (2) develop marketing materials for the brand; or (3) produce correspondence or documents mentioning the planned use of the mark, the licensing of the brand, the regulatory approval of the branded line or the business development of the brand.

Such evidence shifts the burden of proof back to the challenger, who must then produce a preponderance of evidence to the contrary – a much more difficult task in light of demonstrated bona fide intent.

PRO TIP: Before filing a statement of use, compare the identification of goods and services in the trademark application to the goods and services currently offered under the brand, then tailor the identification to the goods and services in use under the mark.

The cost of filing and maintaining federal trademark registrations with the USPTO just got lower.  On January 17, 2015, the PTO announced a $50 per class reduction in initial filing fees for trademark applications filed under the “TEAS Plus” program, while simultaneously introducing a new “TEAS Reduced Fee” (a.k.a. TEAS RF) program at the former TEAS Plus rate, but with less strict filing requirements. (more…)