Articles Posted in Trademark

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The rock group “The Slants,” chose that name to dilute the term’s denigrating force as a derogatory term for Asians. The Patent and Trademark Office (PTO) denied an application for registration of the name under 15 U.S.C. 1052(a), which prohibits the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” The Supreme Court affirmed the Federal Circuit in finding the clause unconstitutional. The Court first rejected an argument that the clause applies only to natural or juristic persons. The Court then held that the clause is subject to the Free Speech Clause, which does not regulate government speech. Trademarks are private, not government speech. "If trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.” The disparagement clause denies registration to any mark that is offensive to a substantial percentage of the members of any group. That is viewpoint discrimination. The “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” The disparagement clause cannot withstand even “relaxed” review. It does not serve a “substantial interest,” nor is it “narrowly drawn.” View "Matal v. Tam" on Justia Law

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Hargis tried to register its trademark for SEALTITE with the U.S. Patent and Trademark Office. B&B opposed registration, claiming that SEALTITE is too similar to B&B’s SEALTIGHT trademark. The Trademark Trial and Appeal Board (TTAB) concluded that SEALTITE should not be registered because of the likelihood of confusion. Hargis did not seek judicial review. Later, in an infringement suit, B&B argued that Hargis was precluded from contesting likelihood of confusion because of the TTAB’s decision. The district court disagreed. The Eighth Circuit affirmed. The Supreme Court reversed. If the other elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before a court, issue preclusion should apply. When Congress authorizes agencies to resolve disputes, issue preclusion applies except when a contrary statutory purpose is evident. Neither the Lanham Act’s (15 U.S.C. 1051) text nor its structure rebuts a presumption in favor of preclusive effect. There is no categorical reason why registration decisions can never meet the ordinary elements of issue preclusion. That many registrations will not satisfy those elements does not mean that none will. The same likelihood-of-confusion standard applies to both registration and infringement. The factors that the TTAB and the courts use to assess likelihood of confusion are not fundamentally different; the operative statutory language is essentially the same. Congress’ creation of an elaborate registration scheme confirms that registration decisions can be weighty enough to ground issue preclusion. View "B&B Hardware, Inc. v. Hargis Indus., Inc." on Justia Law

Posted in: Trademark

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Hana Financial and Hana Bank both provide financial services to individuals in the U.S. When Hana Financial sued Hana Bank for trademark infringement, Hana Bank invoked the tacking doctrine, under which lower courts have provided that a trademark user may make certain modifications to its mark over time while, in limited circumstances, retaining its priority position. The district court adopted in substantial part the jury instruction on tacking proposed by Hana Bank. The jury returned a verdict in Hana Bank’s favor. Affirming, the Ninth Circuit explained that the tacking inquiry was an exceptionally limited and highly fact-sensitive matter reserved for juries, not judges. A unanimous Supreme Court affirmed. Whether two trademarks may be tacked for purposes of determining priority is a jury question. Lower courts have held that two marks may be tacked when they are considered to be “legal equivalents,” i.e., they “create the same, continuing commercial impression,” which “must be viewed through the eyes of a consumer.” When the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decision-maker that ought to provide the fact-intensive answer. The “legal equivalents” test may involve a legal standard, but such mixed questions of law and fact have typically been resolved by juries. Any concern that a jury may improperly apply the relevant legal standard can be remedied by crafting careful jury instructions. View "Hana Financial, Inc. v. Hana Bank" on Justia Law

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Nike alleged that Already’s athletic shoes violated Nike’s Air Force 1 trademark; Already challenged the trademark. While the suit was pending, Nike agreed not to raise any trademark or unfair competition claims against Already or any affiliated entity based on Already’s existing footwear designs, or any future designs that constituted a “colorable imitation” of Already’s current products. Nike moved to dismiss its claims with prejudice and to dismiss Already’s counterclaim without prejudice. Already opposed dismissal of its counterclaim, indicating that Already planned to introduce new versions of its lines, that potential investors would not consider investing until Nike’s trademark was invalidated, and that Nike had intimidated retailers into refusing to carry Already’s shoes. The district court dismissed. The Second Circuit affirmed. The Supreme Court affirmed, finding the case moot. The breadth of the covenant suffices to meet the burden imposed by the “voluntary cessation doctrine.” The covenant is unconditional and irrevocable. Already did not establish that it engages in or has concrete plans to engage in activities that would arguably infringe Nike’s trademark yet not be covered by the covenant. The fact that some individuals may base decisions on hypothetical speculation does not give rise to the sort of injury necessary to establish standing. The Court rejected the “sweeping argument” that, as one of Nike’s competitors, Already inherently has standing because no covenant can eradicate the effects of a registered but invalid trademark. View "Already, LLC v. Nike, Inc." on Justia Law