Slogans As Marks: When Does a Slogan Function as a Mark

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, USPTO

Slogans can, but do not always, function as trademarks. To be sure, the United States Patent and Trademark Office (“USPTO”) frequently allows slogans such as JUST DO IT! or QUALITY THROUGH CRAFTSMANSHIP, among many others, to be registered as trademarks. However, the USPTO’s recent trend has been to deny registration to slogans on the ground they fail to function as a mark, because they are informational. On October 29, 2020, the USPTO Trademark Trial and Appeal Board (the “Board” or “TTAB”) issued a precedential decision on this issue, denying registration of a term it deemed to be “a widely used concept or sentiment.” In re Texas With Love, LLC,  Serial No. 87/793,802 (October 29, 2020).

Applicant Texas With Love, LLC applied to register the trademark TEXAS LOVE for hats and shirts. The application included the requisite specimens of trademark use, in this case, the applicant’s online store displaying the trademark TEXAS LOVE in close association with the goods. Continue Reading

Lehman Brothers is Gone but Not Abandoned

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB

On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant services, finding that the LEHMAN BROTHERS mark had not been abandoned.  Barclays Capital, Inc. v. Tiger Lily Ventures, Ltd. (TTAB, September 30, 2020, non-precedential).

Background

In 2008, Lehman Brothers was the fourth largest investment bank in the United States, with hundreds of billions of dollars of assets under management and over 25,000 employees in offices worldwide when it filed for protection under the U.S. bankruptcy laws, the largest bankruptcy in U.S. history.  As part of the bankruptcy, Lehman Brothers sold its trademarks, including its LEHMAN BROTHERS trademark, to Barclays Capital. Barclays licensed the LEHMAN BROTHERS trademark back to what remained of Lehman Brothers for a term of two years. That entity used the licensed trademark in the general winding down of its business.  Continue Reading

Genericness is in the Eye of the Beholder, i.e., the Public: BOOKING.COM is a Protectable Trademark

By Ira S. Sacks and Evelina Gentry on Posted in Supreme Court, Trademarks, USPTO

On June 30, 2020, the U.S. Supreme Court (the “Court”), in an 8-1 decision, affirmed the Fourth Circuit’s holding that “BOOKING.COM” is a protectable trademark, thereby rejecting a sweeping rule that a protectable trademark cannot be created by adding “.com” to an otherwise generic term.

Continue Reading

After Almost 20 Years of Litigation, “Lucky” Finally Gets Lucky

By Ira S. Sacks and Evelina Gentry on Posted in Supreme Court, Trademarks

On May 14, 2020, the United States Supreme Court held in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., that a party is not precluded from raising new defenses, when a subsequent lawsuit between the same parties challenges different conduct and raises different claims.

As explained in our previous posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) and Marcel Fashion Group Inc. (“Marcel”) both use the word “Lucky” as part of their marks on jeans and other apparel. Marcel received a trademark registration for the phrase “GET LUCKY,” and Lucky uses the registered trademark “LUCKY BRAND” and other “Lucky” formative marks. This has led to almost 20 years of litigation, proceeding in three rounds. The first round resulted in a 2003 settlement agreement (“2003 Settlement Agreement”) in which Lucky agreed to stop using the phrase “GET LUCKY,” and Marcel agreed to release “any and all claims arising out of” Lucky’s right to the trademark “LUCKY BRAND” as of the date of the agreement in exchange for $650,000. Continue Reading

The Parameters of Generic Marks: Booking.com before the Supreme Court

By Ira S. Sacks and Evelina Gentry on Posted in Supreme Court, Trademarks, USPTO

The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise generic term? The Supreme Court will answer this question in USPTO v. Booking.com, No. 19-46.

The legal battle between Booking.com and the U.S. Patent and Trademark Office (“USPTO”) began almost a decade ago. In 2011 and 2012, Booking.com, a leading hotel accommodations company, filed four trademark applications for BOOKING.COM. Booking.com sought to register both the word mark and stylized versions of the mark. The USPTO examiner rejected these applications, finding the marks generic. Alternatively, the examiner concluded that the marks were descriptive and Booking.com had not shown that the marks had acquired secondary meaning, and the marks were merely descriptive. Continue Reading

2(b) Prohibition On “Flag Marks” Bars Use of Flag as Part of a Mark

By Ira S. Sacks and Rachel B. Rudensky on Posted in Advertising, Trademarks, TTAB, USPTO

In a recent precedential decision concerning the rarely litigated or cited Section 2(b) of the Lanham Act, the Trademark Trial and Appeal Board affirmed a refusal to register the service mark:

for tourism services on the ground that the mark includes a simulation of the American flag. In re Alabama Tourism Department, Serial No. 87599292 (TTAB, May 6, 2020). Continue Reading

States Cannot Copyright Annotated Versions of Legal Codes

By Ira S. Sacks and Evelina Gentry on Posted in Copyrights, Supreme Court

On April 27, 2020, the United States Supreme Court held, in Georgia et al. v. Public.Resource.Org., Inc., in a 5-4 decision, that copyright law does not protect annotations contained in the official annotated compilation of Georgia statutes.

As explained in our prior blog, Georgia, like many states, offers a free version of its official statute, but charges a fee for the annotated version, Official Code of Georgia Annotated (“OCGA”). Annotated codes, in addition to the text of the statute, include summaries of judicial opinions, regulations, and attorney general opinions related to the statute. The annotations in the current OCGA were produced by Matthew Bender & Co., Inc., a division of the LexisNexis Group (“Lexis”), pursuant to a work-for-hire agreement with the Georgia Revision Commission (“Commission”), a state entity composed mostly of legislators. Under the agreement, Lexis drafts the annotations under the supervision of the Commission. The agreement also states that any copyright in the OCGA vests in the State of Georgia, acting through the Commission. Continue Reading

Willfulness Is Not Required for Awarding Profits in Trademark Cases

By Ira S. Sacks and Evelina Gentry on Posted in Supreme Court, Trademarks

On April 23, 2020, the United States Supreme Court held in Romag Fasteners, Inc. v. Fossil Group, Inc., FKA Fossil, Inc., et al., that under the Lanham Act, a plaintiff is not required to show that a defendant willfully violated plaintiff’s trademark rights as a precondition to a profits award.

As explained in our previous blog, Romag Fasteners Inc. (“Romag”) sells magnetic clips for purses and wallets under its registered trademark, ROMAG. Romag’s clips are also covered by the claims of a patent owned by Romag. Fossil Inc. (“Fossil”) is a fashion accessory company that designs, markets, and sells, among other things, small leather goods. In 2010, Romag sued Fossil (along with certain retailers of Fossil products) for patent and trademark infringement in the District of Connecticut. Romag alleged that Fossil was selling handbags using counterfeit ROMAG clips. In 2014, a jury found Fossil liable for both patent and trademark infringement. The jury awarded Fossil’s $6.7 million in profits to Romag to deter infringement. However, because the jury found that Fossil’s infringement was not willful, the Federal Circuit concluded that Romag was not entitled to an award of Fossil’s profits. The Supreme Court, in a unanimous decision, disagreed. In the majority opinion, written by Justice Gorsuch, the Court confirmed that the plain language of the Lanham Act has never required a showing of willful infringement to obtain a profits award in a suit for trademark infringement under §1125(a). Continue Reading

Will the COVID-19 Pandemic Impact Your Ability to Secure an “Incontestable” Trademark?

By Mark S. Lafayette and Evelina Gentry on Posted in Trademarks, USPTO

Section 15 of the Lanham Act, subject to certain specified exceptions, provides that the right of an owner “to use [a] registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable.” See 15 U.S.C. § 1065 (emphasis added). This affords the owner of a registered mark valuable benefits, including, subject to certain express exceptions, a bar on others challenging:

  1. The validity of the mark, including any challenge that the mark is defective on the grounds of mere descriptiveness. See Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 105 S. Ct. 658, 661 (1985).
  2. The registration of the mark.
  3. The ownership of the mark.
  4. The owner’s exclusive right to use the mark in connection with the registered goods and services.

See 15 U.S.C. § 1115(b). Continue Reading

Federal Circuit Colors Outside the Lines with a New Shade of Multi-Color Trademarks Protectability

By Ira S. Sacks and Evelina Gentry on Posted in Trademarks, TTAB, USPTO

On April 8, 2020, the Federal Circuit Court of Appeals (the “Federal Circuit”), in In Re Forney Industries Inc reversed the Trademark Trial and Appeal Board (the “Board”) and held that multicolor designs may be inherently distinctive when used on product packaging. The court further held that multicolor designs need not be used within a well-defined shape or border to be eligible for protection. As a result, such designs may be registered without proof of acquired distinctiveness. Continue Reading

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