Nominative Fair Use: The Second Circuit Joins Neither The Third Nor Ninth Circuits In Its Approach

Posted in IP Litigation, Trademarks

In an important decision delineating the boundaries of fair use of another person’s trademark, the Second Circuit announced a standard by which nominative fair use of a trademark will be evaluated in that Circuit in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC. Because the Court ruled that the district court made several legal errors in throwing the case out, the Court vacated the district court’s grant of summary judgment on the infringement, false designation of origin and false advertising, and unfair competition claims, and remanded the case for further proceedings. Continue Reading

Generic Churrascos at the Federal Circuit

Posted in Trademarks, TTAB, USPTO

The Federal Circuit recently provided additional guidance concerning whether an applied-for mark is generic in In re Cordua Restaurants, Inc., (May 13, 2016).  This case stemmed from the United States Patent and Trademark Office’s refusal to register the trademark CHURRASCOS (Stylized) in connection with “bar and restaurant services; catering.”  Applicant Cordua Restaurants, LP (“Cordua”) has long owned and operated a chain of restaurants branded as “CHURRASCOS.” Those restaurants serve a variety of South American dishes, including grilled meats.  Indeed, the CHURRASCOS menu describes chargrilled “Churrasco Steak” as “our signature.”  In or around 2008, Cordua obtained U.S. Trademark Registration No. 3,439,321 on the Principal Trademark Register for mark CHURRASCOS (in standard character format) for use of the word in connection with “restaurant and bar services; catering.” On January 10, 2011, the Applicant filed U.S. Trademark Application Serial No. 85/214,191 for a stylized version of the mark


for the nearly identical services “bar and restaurant services; catering.” Continue Reading

En Banc Reconsideration Sought in FLANAX Case

Posted in IP Litigation, Trademarks

Belmora LLC filed a petition for reconsideration en banc of the Fourth Circuit’s FLANAX decision in Belmora LLC v Bayer Consumer Care AG, Appeal No. 15-1335 (4th Cir. March 23, 2016). As we previously have blogged [here], the 4th Circuit reversed the Eastern District of Virginia’s dismissal for lack of standing, and found that use of the mark in the US is not a prerequisite to suit under § 43(a) for unfair competition or false advertising, or under § 14(3) for cancellation.

In its petition for reconsideration en banc [copy here], Belmora argues that the 4th Circuit panel decision warrants en banc review because “it (i) overlooked material facts and legal considerations; (ii) conflicts with decisions of the United States Supreme Court, this Court, and other U.S. circuit courts of appeal; and (iii) raises questions of exceptional importance regarding the scope of 15 U.S.C. §§1051 et. seq. (“the Lanham Act”). Continue Reading

USPTO Drops 11th Circuit Appeal of ND Alabama Order In Houndstooth Case

Posted in Trademarks, TTAB, USPTO

We previously blogged ([here]) on Judge Proctor’s (ND Ala.) order directing the United States Patent and Trademark Office (the “Board”) to comply with the Court’s prior order, approving a settlement agreement between the University of Alabama and trademark applicant Mafia Enterprises LLC, which included vacating a prior Board decision that had been appealed to the District Court.  Although the Board appealed Judge Proctor’s order to the 11th Circuit, on May 2, 2016, it dropped that appeal in an unopposed motion.  Despite dropping the appeal, the Board remained unbowed: it indicated its view of the order — directing it to vacate a precedential opinion based on a private settlement agreement among litigants — was improper.   The Board reiterated its view it is improper for private parties to obtain vacatur of a Board decision unless a reviewing court has reviewed the Board decision on the merits and found it to be in error such that vacatur is required.  Since negotiated vacaturs are common, we perhaps have not heard the last word on this type of dispute.

In re Tam Redux Redux: Redskins Petition for Certiorari, Trying to Skip 4th Cir.

Posted in Due Process, Trademarks, TTAB, USPTO

In response to the United States Patent and Trademark Office’s (“USPTO”) petition for writ of certiorari in to the U.S. Supreme Court In re Tam (“THE SLANTS” case), the owners of the Washington Redskins filed their own petition for certiorari, asking the justices to hear their trademark case before the Fourth Circuit Court of Appeals weighs in. Pro-Football Inc. v. Blackhorse et al., Case No. 15-1311 (“the REDSKINS cert. petition”).  As discussed previously in this blog (here) and (here), THE SLANTS case involves the constitutionality of § 2(a) of the Lanham Act, which prohibits registration of a trademark that “disparages” groups, ethnicities, races, etc. The REDSKINS case also challenges § 2(a), although since the case was brought as an inter partes trademark cancellation proceeding that sought to invalidate Pro-Football Inc.’s (“Pro-Football”) long-registered trademarks, it also implicates issues of procedural due process and vagueness under the Fifth Amendment. Continue Reading

In re Tam Redux: The PTO seeks Certiorari

Posted in Trademarks, TTAB, USPTO

On April 20, 2016, the United States Patent and Trademark Office (“PTO”) filed a petition for a writ of certiorari to the Federal Circuit seeking Supreme Court review of that Court’s decision in In re Tam, 117 USPQ2d 1001 (Fed. Cir. 2016), holding the disparagement provision of Section 2(a) of the Lanham Act, 15 USC §1052(a), to be facially unconstitutional as a violation of the Free Speech Clause of the First Amendment.  Continue Reading

FLANAX: Protecting Foreign Marks from US Unfair Competition Under Section 43(a)

Posted in False Advertising, Trademarks, TTAB

In today’s increasingly global economy, trademark owners are more frequently butting up against the territorial limitations of trademark law. It has long been a matter of black letter law that trademark rights are territorial, subsisting only within the borders of the country where they are obtained.  This general rule can present serious obstacles to foreign brand owners who seek to enforce their trademark rights in the United States, typically when they try to enter the United States market and run into putative “senior users” of their marks.

However, there has been a slow but steady trend in United States courts to try to mitigate these seemingly unjust results. Recently, the Fourth Circuit expanded the reach of a foreign registered trademark to the United States in the case Belmora LLC v. Bayer Consumer Care AG and Bayer Healthcare LLC, Appeal No. 15-2335 (2016 BL 89180) (March 23, 2016), vacating the decision of the Eastern District of Virginia, and remanding the case to the district court for further proceedings. Continue Reading

Carrying on business in the UK? Your UK Modern Slavery Act 2015 obligations

Posted in Uncategorized

This blog posting was contributed by Laura Mackenzie-Mitchell, solicitor with the UK-based law firm Browne Jacobson LLP, which is solely responsible for its content.

Section 54 of the recently-enacted UK Modern Slavery Act 2015 may apply to your organisation, whether incorporated within the UK or not, if it falls within a certain turnover threshold and carries on business in the UK via the supply of goods/services. If caught by the legislation, your organisation is required to publish an annual ‘slavery and human trafficking statement’ stating the steps it has taken during the preceding financial year to ensure that slavery and human trafficking is not taking place in any part of your organisation’s business or any of your organisation’s supply chains. The risks of non-compliance are predominantly reputational, although the UK government does have the power to compel an organisation to issue a statement via an injunction.

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TTAB Finds That Coexistence Agreement Does Not Support Coexistence

Posted in Trademarks, TTAB

In a decision bound to impact trademark prosecution practice in the future, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently found that a consent agreement between a trademark applicant and the registrant of a similar prior-registered mark – that is, a coexistence agreement – was insufficient evidence that the parties’ respective use of their trademarks would not cause consumer confusion. In re Bay State Brewing Company, Inc., Serial No. 85826258 (February 25, 2016) [precedential]. Continue Reading

The Hound’s-Tooth Bites Back: The Ghost of Paul “Bear” Bryant

Posted in IP Litigation, Trademarks, TTAB, Uncategorized

Recently, a District Court judge issued a scathing rebuke to the United States Patent and Trademark Office in Board of Trustees of the University of Alabama et al. v. Houndstooth Mafia Enterprises LLC, (N.D. Alabama February 23, 2016).  Judge Proctor’s memorandum opinion upbraided the USPTO’s Trademark Trial and Appeal Board (“Board”) for ignoring his earlier-issued order to vacate the Board’s self-declared “precedential decision,” and also denied as untimely the USPTO’s motion to intervene.  The memorandum opinion exposed a rare clash between the Board and a reviewing court.


In December 2007, William Pitts Jr. and Christopher Blackburn – two fans of the University of Alabama and its beloved Coach Paul “Bear” Bryant – filed an application with the USPTO to register the trademark HOUNDSTOOTH MAFIA & Design for clothing:


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