A Legal Blog by Aaron | Sanders, PLLC


Register whatever the F*&# you want: Victory for the Slants and the First Amendment

The Lanham Act had some language struck out of it by the Supreme Court today. In the trademark world, this qualifies as Big News.

A superbrief history: The Slants are a band out of California made up entirely of Asian Americans. Simon Tam, the lead singer, filed an application for registration*** of the trademark THE SLANTS, which was refused because Section 2(a) of the Lanham Act prohibited registration of marks that “disparage . . or bring into contempt or disrepute . . . any persons, living or dead.” He appealed to the Trademark Trial and Appeal Board and was refused, but the Federal Circuit, in an en banc decision, found the so-called “Disparagement Clause” unconsitutional on its face. The Supreme Court just affirmed.

***This is Very Terrible for the other members of The Slants.  Much has been written on what happens when a trademark is registered in the name of a single band member and the band breaks up.  If you are the guitar player or the drummer instead of the lead singer, NEVER EVER LET THIS HAPPEN.

The Court held that the Disparagement Clause is unconstitutional insofar as it requires viewpoint discrimination. Trademarks are not government speech, regardless of whether the…

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A Registered Weak Trademark Is Still a Weak Trademark: How to Build Up a Strong Trademark

Trademark Registrations Are Important, but Not the Way Many Markholders Think

In my high school “health and guidance” class, I was taught that you can’t sober up a drunk with coffee. All you get, I was told, was a wide-awake drunk. Although now stimulated, the guy’s motor skills were just as impaired as before. I don’t know if that’s still the received wisdom—this was the 1980’s, after all—but it’s a lesson I took to heart. Coffee doesn’t sober up a drunk, and lipstick doesn’t make a pig pretty.

And a registration doesn’t make a trademark strong. If you manage to register a weak trademark, all you get is a registered weak trademark. Trademark registrations don’t generate trademarks out of thin air. They make already-existing trademarks stronger. They are force multipliers. If your trademark is strong, then a registration will make it considerably stronger. But just as multiplying a tiny number still results in another (slightly larger) tiny number, a registration doesn’t add that much to weak trademarks.

The Brawny Poetry of Trademarks

What makes a trademark strong, if not registration? Trademark strength has two ingredients, and you (the trademark owner) control both of them: inherent distinctiveness and goodwill. Goodwill arises from consumers’ recognition…

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Gambling Away from the Track: Trademark Confusion and Horse Racing in the 6th Circuit

It’s Derby time!  I don’t live in Louisville, but I used to spend a lot of time there for work, and when I was in college at Vanderbilt University, the Kentucky Derby would always be the Saturday right after finals ended and was only a two hour drive up I-65.  As poor college kids we drank watered down Mint Juleps and got soaked and muddy in the infield and of course never saw a horse, but it was always a great time. Now, I mostly just watch it on TV and pick a horse based on whether Bob Baffert has trained it, since you can’t bet on the jockey Bill Shoemaker anymore, which is what my grandfather always said you should do.

The enormous business of horse-racing and all the merchandising that goes along with it causes horse tracks to occasionally get aggressive with their trademark ownership.  Courts in the Sixth Circuit sees their fair share of these cases, since Central Kentucky is Horse Country, and has been Horseracing Country since the late 19th Century (thanks to a crackdown on gambling in New York brought about by the women of the Progressive Movement.)

The latest case to reach the Sixth Circuit,…

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When Implied Licenses (Don’t) Attack: Copyright Licensor’s Scheme to Ambush His Licensee Goes Terribly Wrong

Today’s Lesson: Don’t Be a %$*!#

A little bit of legal knowledge can be a most troublesome thing.

Readers of The IP Breakdown know that implied copyright licenses are best avoided, particularly if you’re the licensee, though they’re usually considerably better than, well, no license. There are several problems with implied licenses. They’re (by definition) not exclusive, which means your competitors can use the work in question. The scope of the license is undefined. You don’t know what you’re allowed to do with the work in question until a court issues a ruling, by which point—well, things are already in a bad way.

Implied licenses aren’t great if you’re the licensor, either. The lack of definition makes it harder to enforce the license’s terms. You say to your licensee, “Stop doing that or else!” or “Pay up!”—and your licensee says, “Where does it say that?” or maybe even “Come at me.”

Still, before you get too deep into these messy, slippery weeds, you might want to consider a more fundamental legal principle: don’t be a %$*!#. Nobody likes a %$*!#.

The law tolerates a lot of not-nice behavior: sharp-elbowed competition, turning a tenant out of a space with little notice, burdensome contractual provisions that…

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One Week, Two Trademarks, Three Countries, Five Opinions, and a Big Ol’ Circuit Split

Last week, two different U.S. courts took action in cases involving the use of trademarks outside the borders of the United States, and if you aren’t confused you don’t understand territoriality.

 

The big news last Monday was the Supreme Court’s refusal to hear an appeal in the case of Belmora, LLC v. Bayer Consumer Care AG. You can read the Fourth Circuit opinion here. This is a case of the limits of standing to sue under the Lanham Act coming up against a really bad actor, to put it simply.

Bayer Consumer Care, a Swiss company, sells naproxen sodium pain relievers under the brand name FLANAX in Mexico. (The product is the same as ALEVE in the United States). They’ve been selling FLANAX in Mexico since 1976.  In 2004, Belmora LLC started selling its own naproxen sodium pain relievers under the name FLANAX. The packaging was virtually identical to Bayer’s packaging in Mexico. Belmora marketed its product to distributors with all kinds of claims about the “topselling brand among Latinos” and declaring that “Flanax is now made in the U.S.” Did I mention these are really skeezy guys?

Belmora even had the gall to apply for registration of FLANAX at the USPTO, and…

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Swimming in the Shark Tank: Even Gladiators Need to Clear Trademarks

Swimming with the Shark Tank

If you’re a fan of Shark Tank, one of the more interesting pitches was by Rachel Zietz in 2016, a (then) fifteen-year old lacrosse player and entrepreneur. She said she was tired of the lousy lacrosse equipment she had been buying from the major manufacturers, who, she suspected, didn’t really understand the sport. She would design better equipment herself. Encouraged by her parents and The Young Entrepreneurs Academy of Boca Raton to form a business around something she loved, she started manufacturing and selling lacrosse equipment. She called her business “Gladiator Lacrosse.” She was only thirteen. It was 2013.

None of sharks invested in her company, though they were all impressed and a few were intrigued. They didn’t doubt her business model or her success. Her company already had revenues of $340,000, in just a matter of two years, so she was clearly tapping into something. They just didn’t see how their involvement and money would add anything to her company. Some also doubted that she could stay involved in her company at such a young age, when she would have so many other commitments. She responded that she has a strong brand: GLADIATOR.

Those about to…

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Honey Catches Flies and Hackers, But Not A Trademark Registration

In honor of Valentine’s Day, the Trademark Trial and Appeal Board has offered us honey. You know, that stuff with which you catch more flies.

The lines between descriptive and suggestive marks has never been easy to define.  Bitvoyant, a Virginia-based software company, found that out this week.  Bitvoyant applied to register the mark HONEYFILE in connection with the following:
Computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence in Class 9; and

Computer security consultancy; Computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Computer virus protection services; Design and development of electronic data security systems; Platform as a service (PAAS) featuring computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intellegence in Class 42.
The Examining Attorney found the mark descriptive, based on evidence that the cybersecurity industry used the term to denote files that would…

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Tinkering, Vision, Business and Patents: What the Tangled History of Windsurfing Can Tell Us About Innovation

A Meditation on Innovation on the Occasion of the Death of S. Newman Darby, Tinkerer, Hobbyist & Inventor

If you enjoy windsurfing, you might raise one to S. Newman Darby, who essentially invented it and who passed away last month. For a long time, not very many people knew this.

He grew up around Wilkes-Barre, Pennsylvania. Though he clearly had a mechanical gift, he was content to run the sign-painting business his father had started, and to tinker on the side. He particularly enjoyed boating on the Susquehanna and on nearby lakes. But he found sailing fussy, and steering by rudder unsatisfying. How much better it would be to steer by guiding the sails themselves and leaning into the wind. It was 1964.

He started by attaching a sail directly to a board. That worked, but it was clumsy and limited. You couldn’t turn very well, and you couldn’t go into the wind. He tried again, this time attaching the sale to the board with a short length of nylon rope, effectively creating a universal joint. This worked a treat, and in a short time, he taught himself how to “sailboard.” You stood on a rectangular board, about the size of an…

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A Business New Year’s Resolution – Don’t Violate the Trademark “Anti-Trafficking” Rule

You need a trademark lawyer. No, really.  Even if you have a corporate lawyer. No, especially if you have a corporate lawyer.  Do not let your corporate lawyer do your trademark lawyer’s work.  Would you let your dentist do your appendectomy?  The following is a story of trademark work gone wrong. (Arguably better than an appendectomy gone wrong, but still).

Perry Orlando files a trademark application for THE EMERALD CITY in 2008. He files on an “Intent to Use” basis. Everything goes fine, and the application is allowed, but Mr. Orlando still has to file is Statement of Use before the mark will register.

In 2009, and before he files the Statement of Use, Mr. Orlando assigns the trademark to Emerald Cities Collaborative, Inc. (The U.S. trademark lawyers, of course, can see the problem immediately). From the case, it looks like the assignment was probably drafted by a lawyer. The lawyer seems to have even maybe understood the problem and tried to get around it.  Mr. Orlando agreed to “assign unto ECC all right . . . in the Mark . . . . at such time as the Mark is registered at the PTO” (emphasis in original). Emerald Cities Collaborative…

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Has There Really Been Fallout from the Blurred Lines Case and What Can Be Done About It?

Giving Credit Where Credit Is Due (or Demanded)

Last week, the Associated Press reported, “More and more, artists are giving credit” to the writers of pre-existing songs “in the wake of the ‘Blurred Lines’ case.” The main point of the article was that songwriters are taking a more cautious approach when they know they have at least been influenced by a particular song and have been giving credit to the writers of the older songs to play it safe. As evidence, the article cited the addition of the Gap Band’s “Oops Upside Your Head” to “Uptown Funk,” the addition of the massively awesome Tom Petty and Jeff Lynne to the credits for Sam Smith’s “Stay With Me”—completely justified, in my view—and the addition the two songwriting dudes from The Fray to the credits for The Chainsmokers’ “Closer” (a song I have never listened to until just now).

That’s hardly overwhelming evidence, particularly since at least two of the additions were really settlements of legal claims before litigation. I don’t know how the Chainsmokers dispute was resolved, but I doubt it was purely voluntary.

Songwriting credit is a big deal because it’s how songwriters get paid. Royalties for a song are divided among…

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