A Legal Blog by Aaron | Sanders, PLLC


WOO! What Bachelorette Parties in Nashville Can Teach You About Trademarks and Trademark Registrations

A PEDAL TAVERN by Any Other Name Would Still Be as Annoying

On my way back to Nashville (from Los Angeles) last week, I found myself in the back of the plane with not one, but two bachelorette parties. It wasn’t quite noon (Pacific time), but several of the members were already pretty drunk, and they all had a grand time. You might assume that I was just really unlucky, but when you consider how many bachelorette parties there are at any one time in Nashville, and that almost all have to fly into Nashville, you’d conclude that it was amazing I hadn’t encountered two on the same plane before.

Now, I don’t want to say anything bad or dismissive about bachelorette parties, even though we all find them a trifle annoying. They constitute 16.67% of the overall Nashville economy and give rise to about 20% of all civil lawsuits here, so it’s sort of important that we bite our tongues and tolerate them. Without them, the local AirBNB market would collapse, which would hurt the market for tearing down old homes and replacing them with two-towers-on-a-single-lot. Bars and honky-tonks would be hurt, and several of them would probably go out…

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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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