The TMCA

Legal decisions, like fine wine, should be balanced. The Federal Circuit recently corked a non-precedential TTAB decision that ECHO D’ANGÉLUS was not confusingly similar to ECHO DE LYNCH BAGES, where both were used for wine, because the TTAB relied on a concept that no party to the case had argued. In deciding the opposition, the TTAB’s analysis initially followed standard DuPont factors to find the goods were similar and sold through the same channels of trade, favoring Chateau Lynch-Bages (“Opposer”). The Board also found ECHO somewhat diluted based upon Chateau Angelus S.A.’s (“Applicant”) evidence of thirteen third-party registrations for ECHO-formative marks covering wine and other alcoholic beverages, which favored Applicant. The Board then made the pour decision to consider the non-ECHO portions of the marks as house marks, which neither party had argued. The Board based the house mark finding on Applicant owning four registrations that included ANGÉLUS and Opposer using LYNCH BAGES in its letterhead. A “house mark” serves a different function than a trademark. Rather than identifying the source of a particular good or service – the function of a trademark – a house mark identifies a company that provides a wide range of goods or services. House mark registrations list the goods or services as a “full line of _____,” thus conferring broader rights than a typical trademark registration. To obtain these broader rights, an applicant must provide evidence that the mark functions as an identifier for an entire line of goods in addition to evidence that the mark is used in commerce for the mark to register. The Board raised the house mark concept in its discussion of each mark’s meaning. It found that Opposer’s mark meant “echo of Lynch Bages,” conjuring the fact that Opposer used the mark for a second wine offered by the vintner. Applicant’s mark was found to mean “echo of Angélus,” evoking a reverberation of Applicant’s other wines. Had the Board bottled its decision there, relying on consumer confusion being unlikely given the disparate meanings of each mark, the Federal Circuit may have agreed. Instead, the Board proceeded to analyze the case in the context of infringement precedents involving house marks. The Board concluded that “ECHO” combined with each party’s house mark created a unitary expression with a significantly different commercial impression, making confusion unlikely. On appeal, the Federal Circuit found that while the Board may have had its Rieslings for such sua sponte reasoning, the result was not supported by substantial evidence. Not only had neither party argued that its mark included a house mark, but the Board’s independent investigation did not support such a finding. The Board had cited no precedence for finding that four registrations or use on letterhead were sufficient to evidence that a mark is a house mark. Notably, it is unlikely the USPTO would grant a house mark registration based on such sparse evidence. Moreover, the Federal Circuit indicated the house mark analysis was unnecessary and the Board probably could have found confusion unlikely based on traditional weighing of the DuPont factors. The Federal Circuit’s decision to remand the case is curious. The court could have relied on the Board’s finding that the marks were “visually and aurally different” to uphold the general finding of no likely confusion and admonished the Board for decanting the house mark concept as inappropriate. As is, the consequence is likely little more than a rewrite with the same outcome, particularly given the court’s clear indication that it does not believe confusion is likely. Nonetheless, the Board’s overall approach in this proceeding signals it is willing to find confusion unlikely where marks incorporate house marks, even if the house mark portions are not registered as such.  Where such arguments are appropriate, parties should take care to provide sufficient evidence to support finding that a mark serves as a house mark.

Photo by Sarah Robertson The Dorsey Trademark, Copyright + Advertising team is back from the 2025 International Trademark Association Meeting. It was one for the books. We mixed and mingled with old and new colleagues and as well as our friends from around the world. In between all the meetings and social events, we did manage to attend a few of the important panels and of course, our committee meetings. Here are the highlights: AI-Driven Advertising: Copyright Issues in the New Frontier – This was a lively and engaging panel that focused on managing the chaos that the burgeoning use of AI by companies and independent contractors has caused relating to ownership and authorship of AI-created content. The panel several times reiterated the mantra: Be Fair, Be Bold, Be Reasonable. They encouraged companies to ask whether they actually need to own the content that is created. They also discussed contract clauses “from the wild” and pointed out what works and what can be unreasonable. The most important takeaway was to make sure that whoever is using AI to create content is documenting the process carefully, regardless of whether it is a vendor or an employee. This is because the Copyright Office will require an explanation as to the use of AI to determine whether, and how much of, a work is registrable. USPTO Update: Fireside Chat with Acting Under Secretary of Commerce for Intellectual Property and USPTO Acting Director Coke Morgan Stewart – Acting Director Stewart answered questions about the PTO’s direction under the current administration. She indicated that the USPTO has explained to the administration that as a fee generating agency – rather than a taxpayer funded agency – the USPTO should not be subject to current cost-cutting measures. Despite this, Acting Director Stewart believes the agency can continue to reduce pendency and maintain quality without filing open positions. She also indicated the USPTO is looking into the use of AI to help with review of design marks and to detect fraud. Our neighbors to the North, the Canadian Intellectual Property Office (CIPO), also provided updates about the examination process and efficiency, indicating that they hoped to clear their backlog in just a few months. Greenwashing, Greenhushing and Sustainably: INTA’s Brands and Sustainability Committee met at this year’s conference to discuss the hot topics of greenwashing and greenhushing. If you are not familiar, greenwashing is essentially the false marketing of green/environmental or sustainable claims. Most recently, we’ve seen a lot greenwashing in the context of aspirational claims, namely brands striving to be carbon neutral or reduce their emissions by a certain year. Greenhushing, on the other hand, is when brands do good for the environment, but don’t publicize it. Greenhushing can occur for various reasons including, fear of accusations of greenwashing, consumer perception that “green” products are more expensive or inferior, or even for political reasons. While we didn’t make any promises or claims, the committee was proud to support a digital business card initiative and encourage the use of reusable water bottles to help make the conference more sustainable for all. Crafting Successful Agreements with Branding Agencies: A roundtable discussion took place between practitioners from Canada, the UK, and US on how brands can best partner with their creative agencies and areas of best drafting practices for agreements between the two. Discussion of the scope of services and consideration of AI-generated work product dominated the conversation, including how best to allocate risk created by the use of AI particularly where this work product is specifically contemplated or where influencers are involved. Discussion of the extent of preliminary clearance work members of the group were carrying out on behalf of agencies, or that agencies were otherwise expected to conduct, also took place. An overall downward trend in full, in-depth trademark search orders more generally, as shared by the one of the leading search companies present, was also covered. The unique risks attached to working with smaller agencies, including the absence of enterprise software licenses, was also discussed. Law and Policy | Rules of the Road in Engaging with Celebrities, Influencers, and Fans: This session brought a global perspective to how companies interact with and negotiate with celebrities and influencers in relation to the promotion of their brands. The panelists focused on how they prioritize and make use of time and resources depending upon the nature and length of a promotion, as well as the potential impact of the promotional activities on their brands. Interestingly, in Argentina, many companies create specific scripts that must be used by influencers to help minimize regulatory and legal risks. Aside from potential pitfalls in agreements, the panelists also discussed deepfakes and artificial intelligence and the impact on their promotional activities and on their brands, as well as issues with poor influencer behavior and even taxation issues. Truly, an ever-evolving area as technology becomes even more intwined in the influencer landscape. Successfully Mediating IP Disputes: Key Insights and Practical Tips – INTA’s ADR Committee hosted a panel discussion on trademark mediation, highlighting the growing value of mediation in resolving IP disputes. Panelists emphasized its advantages over litigation, including lower costs, reduced risk, and the opportunity for creative, business-focused solutions. They discussed the qualities of effective mediators, such as neutrality, communication skills, and business acumen, and considered whether mediators should propose solutions or simply facilitate dialogue. The consensus favored a balanced approach that maintains neutrality while offering constructive suggestions. The discussion also addressed the importance of preparation, confidentiality, and having decision-makers present. Challenges of virtual mediation were noted, including distractions and reduced engagement, as well as the supportive but limited role of AI. Real-world examples illustrated the need for mediators to guide the process while allowing parties to retain control over outcomes. Annual Review of Trademark Cases: Always an attendee favorite, this session featured an overview of trademark decisions over the last 12 months lead by Theodore Davis of Kilpatrick Townsend and John Welch of The TTABlog fame. Notable decisions include those upholding the validity of the Lanham Act’s “names clause” (requiring written consent to register a mark containing a person’s name) under the First Amendment (Vidal v. Elster, 602 U.S. 286 (2024)), confirming that inaccurate patent claims may provide grounds actionable false advertising claims (Crocs, Inc. v. Effervescent, Inc., No. 22-2160 (Fed. Cir. 2024)), holding mere use of a party’s name in a judicial proceeding is not actionable under Lanham Act (Dieujuste v. Sin, No. 24-1522-cv (2d Cir. 2025)), confirming that the TTAB’s “something more” doctrine applies only to the relatedness of goods to services and not to goods to goods (In re Samsung Display Co., Ltd., No. 90502617 (T.T.A.B. 2024)), and clarifying that product color resulting from practicing an expired patent cannot also have trademark significance because the color is functional under the expired patent (CeramTec GmbH v. Coorstek Bioceramics LLC, No. 2023-1502 (Fed. Cir. 2025)). John Welch also recounted his top losing TTAB arguments, with the number one slot belonging to arguments that attempt to impart in real-world limitations to goods/services in an application/registration (since the TTAB typically only considers the goods/services as listed), and listed some of his pet peeves, such as using the word “trademark” as a verb (ironically used as such by the Supreme Court in its Elster decision).

Identical trademarks can coexist, as the Trademark Trial and Appeal Board once again emphasized when it overturned the refusal of a COMPASSION IN ACTION mark. The Board’s decision is both a lesson in strategically narrowing an application’s services and a cautionary tale of how to build out the record for an appeal. Namchak Foundation filed an application for the mark COMPASSION IN ACTION in Class 45.[1] Namchak’s application originally covered “Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals.” However, Namchak narrowed its services further to “Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals interested in the teachings and practices of the Namchak Tibetan Buddhist Fellowship” (amendment in bold), after the trademark office initially refused its application. Despite Namchak’s efforts to narrow its application, the trademark office once again refused the application based on an alleged likelihood of confusion with The Salvation Army’s COMPASSION IN ACTION registration for “Religious and charitable services namely providing meals for indigent people, residential care for homeless men, gifts for elderly shut-ins, gifts for patients in hospitals, rest homes and infirmaries, gifts for imprisoned persons, and gift packages to members of the armed forces” in Class 42.[2] After several rounds of arguments and subsequent refusals, Namchak appealed the trademark office’s decision. The crux of the case, and the primary reason the Board disagreed with the trademark office, is the Board’s conclusion that there was no evidence suggesting Namchak’s and The Salvation Army’s services were related. The trademark office bears the burden of showing services are related. To meet this burden, the trademark office cited six websites allegedly showing other religious organizations providing both Namchak’s and The Salvation Army’s services. The Board, however, was not swayed by this evidence for two main reasons. First, the trademark office did not accurately interpret the parties’ services. Namchak deftly sidestepped potential unhelpful website evidence because it limited its description specifically to services for individuals interested in Namchak’s Buddhist fellowship. The trademark office incorrectly focused on the beginning of Namchak’s and The Salvation Army’s services description, without taking into account the descriptions as a whole. At best, the evidence showed Christian organizations holding gatherings and providing charitable services. But it did not show Buddhist religious gatherings, let alone those related to the Namchak Tibetan Buddhist Fellowship, and definitely not Buddhist organizations that also provide meals for indigent people, housing for homeless men, gifts for the elderly, or any of the other services provided by The Salvation Army. Second, the Board noted that pointing to only six websites is insufficient and does not meet the trademark office’s burden of proof. In other words, the trademark office should have cited more evidence in the various refusals issued prior to Namchak’s appeal. The Board acknowledged that a more developed record might have showed the parties’ services were related. The Board’s decision demonstrates that a strategically narrow description of goods/services can be enough to overcome a likelihood of confusion refusal. Namchak was particularly successful here because its narrow identification not only eliminated overlap between the parties’ services on their face, but also rendered the trademark office’s evidence moot. Ultimately, The Salvation Army and Namchak are both free to continue practicing COMPASSION IN ACTION without confusion on the trademark register. [1] The Board’s Final Decision, issued March 6, 2025 incorrectly indicated Namchak’s services were in Class 30. However, the Board issued a Notice of Correction on March 12, 2025, correcting this clerical error. [2] This was an ex parte proceeding. The Salvation Army did not oppose Namchak’s application or otherwise participate in the application’s examination or appeal.

John Wick is a highly successful film franchise starring Keanu Reeves as a hitman who reluctantly emerges from retirement to avenge the killing of his pet beagle (among other offenses committed by a group of not-very-nice Russian gangsters). The first movie in the series came out in 2014 and was a surprise hit, grossing over $80 million at the box office. That initial success led to three sequels, a prequel TV series, and an upcoming spin-off film. John Wick is one of the rare franchises that has achieved greater success with each installment, and ticket sales for the series now exceed $1 billion. To capitalize on this remarkable success, the owner of the franchise, Summit Entertainment, LLC, registered the mark JOHN WICK with the U.S. trademark office for a host of goods and services, including movies, video games, accessories, and entertainment services. Summit has also licensed the right to use the JOHN WICK mark to others, including in connection with backpacks, T-shirts, mugs, and duffle bags. All appeared to be going well for the John Wick brand – until Jane Wick entered the scene. No, John did not get married; nor did an estranged older sister suddenly appear at John’s doorstep. Rather, in February 2024, a company called Jane Wick LLC filed a trademark application for the use of the mark JANE WICK in connection with ammunition bags, leather bags, and athletic apparel. Jane Wick aims to capture the women gun owner market – its vision is to “revolutionize women’s shooting by making it functional and beautiful.” It’s unclear if John Wick would think that a fancy leather bag can make shooting “functional and beautiful.” What we do know is that Summit, the franchise owner, is not at all happy about the use of the JANE WICK mark. In fact, last month Summit filed a Notice of Opposition with the Trademark Trial and Appeal Board, claiming that it would be damaged by issuance of a registration for the JANE WICK mark. The Opposition details the success of the JOHN WICK franchise, noting its total box offices revenues of over $1 billion, the list of awards the films have won, and Summit’s use, promotion, and licensing of the JOHN WICK mark. The Opposition also includes descriptions and photographs of JOHN WICK branded products, including backpacks, duffle bags, T-shirts, coffee cups, and figurines. The Opposition goes on to note that, in addition to common law rights in the JOHN WICK mark, Summit has three registered trademarks for the mark. Given there is no dispute about priority (the first John Wick movie came out ten years before Jane Wick filed her trademark application), the key issue here will be likelihood of confusion. The facts here would seem to be in Summit’s favor. JANE WICK uses the same last name as JOHN WICK, and it similarly uses the generic female name (i.e., Jane Doe). The fact that John Wick is a hitman – and there is a great deal of shooting in his movies – may also make confusion likely, as Jane Wick is not just selling bags – it’s selling ammunition bags. Hard to believe that the name Jane Wick was a completely random choice and not meant to relate in some way to John Wick, the renowned fictional gunman. Finally, while JOHN WICK is primarily a film franchise, the mark is also used with goods similar to Jane Wick’s products such as backpacks and clothing. All in all, Jane Wick may have an uphill battle. It’s too early to say how this will pan out. The parties presumably had communications prior to Summit’s filing of an Opposition but apparently weren’t able to resolve their differences. And if Summit succeeds in shooting down Jane Wick’s trademark application, would it be content or would it up the aggression and sue Jane Wick for trademark infringement? John Wick didn’t go out looking for a fight but he wasn’t one to back down either. It looks like the same can be said for the film franchise’s owner.

“Enjoy your reign while you may, Superman. For surely as night follows day, there comes a time when even gods must die.”      – Lex Luthor, Superman: Doomsday Last month, the creators of beloved characters like “Superman” and “Spider-Man” declined to come to their own rescue when their SUPER HERO and SUPER HEROES registrations were cancelled by a default judgment from the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (the “Board”). Marvel and DC have reigned as the titans of the comic book industry for decades. Although, it is possible that some of this success can be attributed to the rivals’ joint ownership of the SUPER HERO and SUPER HEROES registrations, the earliest of which registered in the United States in 1967. This saga began when Marvel and DC opposed an effort by a London-based artist and his company, Superbabies Limited (“The Super Babies”), to register the mark SUPER BABIES—the name for a comic book series featuring superpowered infants. But The Super Babies fought back by filing a cancellation petition that alleged Marvel and DC were using a strategy “ripped straight from their own supervillains’ playbook” by using their trademark rights to “stifle competition and exclude others from the marketplace,” rather than to “prevent confusion.” Ironically, the petition cites an old Spider-Man comic where the recurring villain Kingpin “registered Spider-Man as a trademark, and used threats of litigation and financial ruin to pressure Spider-Man into letting Kingpin operate without SUPER HERO interference.” In particular, the petition attacked Marvel and DC’s ownership of the SUPER HERO marks on genericness and abandonment grounds. A mark becomes “generic” when it no longer distinguishes one product or service from another, but rather, is commonly used to refer to an entire category of products or services. Because the term “SUPER HERO” is widely used to refer to an entire genre or character archetype, The Super Babies argued that the mark was no longer distinctive and should be cancelled under 15 U.S.C. § 1064(3). In addition to the mark becoming genericized, The Super Babies also alleged that the SUPER HERO mark had been abandoned by Marvel and DC in three ways: (1) by allowing each other—as fierce competitors—to use the SUPER HERO mark; (2) by allowing the general public to use the SUPER HERO mark as the name of an entire genre; and (3) by themselves using the SUPER HERO mark as a generic label instead of as a source identifier. The petition highlighted how unusual it is for industry competitors to jointly own a trademark and argued that this arrangement was “antithetical to the foundational purpose of trademarks.” The Super Babies argued that, as competitors, the Lanham Act prohibits Marvel and DC from jointly owning a single mark, since the mark cannot not identify a single source of goods and services in these circumstances. After Marvel and DC failed to file a response, the Board issued an order cancelling the registrations. While DC and Marvel have the option to file a motion seeking to set aside the default judgment for good cause, they would face an uphill battle. At the time of this post, no further motions have been filed, though the TMCA will continue to monitor the case. The epic fight between The Super Babies, Marvel, and DC demonstrates the delicate balance between protecting one’s intellectual property assets without overly restricting creation or innovation. With great power—i.e., the exclusive ownership of a trademark—comes great responsibility—including to stop generic use of your mark. However, in an attempt to shoulder this responsibility by opposing The Super Babies’ applications, Marvel and DC landed themselves in a greater web of trouble. The Super Babies’ victory also serves as a warning to owners of trademark registrations that may be vulnerable to cancellation. In general, registrants’ spidey senses should be tingling when they attempt to enforce rights in arguably abandoned and/or genericized marks. Indeed, even incontestable registrations are vulnerable to generic attacks, nor is there a time bar for attempting to cancel generic registrations. But now that the SUPER HERO mark has been unmasked and returned to the public domain, the saying that “anyone can be a [super] hero” may finally ring true. Well, at least anyone can be a super hero . . . without fear of a lawsuit.

In Snap, Inc. v. Vidal, the Central District of California found the Trademark Trial and Appeal Board (“TTAB”) was wrong in finding that SnapChat’s SPECTACLES mark is generic for smart glasses. The district court’s opinion highlights the advantages of seeking de novo review of TTAB decisions in a district court and delves into the complexities of determining whether a mark is generic. In 2016, Snap Inc., the owner of SnapChat, began selling smart glasses under the name SPECTACLES. Snap’s SPECTACLES glasses contain cameras allowing the user to capture images or videos and newer versions contain augmented reality displays powered by software to display images on the lenses of the smart glasses. Snap filed two applications to register the mark SPECTACLES in both plain text and stylized form for various hardware and software related goods including “wearable computer hardware” and “computer software for accessing and transmitting data and content among consumer electronic devices and displays.” The United States Patent and Trademark Office (“USPTO”) refused registration of the SPECTACLES marks and that refusal was affirmed by TTAB. In its decision, the TTAB found that “spectacles” is a generic product name for “smart glasses” and therefore is not registrable. Undeterred, Snap sought review of the TTAB’s decision in the U.S. District Court for the Central District of California. On September 27, 2024, nearly eight years after Snap filed its applications, the Court issued an Opinion and Order, in which it found that “spectacles” is not generic and that Snap is entitled to registration of the marks on the Supplemental Register. There are generally two steps to determining whether a mark is generic: (1) determining and defining the genus of goods sought to be registered; and (2) determining whether the relevant public primarily uses or understands the mark to refer to the genus. The TTAB and Central District came to different conclusions at each step. The TTAB found that the relevant genus was “hardware and peripherals that are wearable as glasses.” This determination was tied to the language in Snap’s applications. At the TTAB, the record consisted primarily of dictionary definitions for terms like “spectacles” and “eyeglasses,” examples of Snap’s use of the Spectacles mark, and examples of third-party use of the term spectacles from publicly available articles and technical publications. When examining this evidence, the TTAB noted that several articles and publications referred to augmented reality glasses marketed by Apple, Google, and other third parties as spectacles. It also noted that the media often refers to glasses and sunglasses as spectacles. Accordingly, it found the term “spectacles” is generic for hardware and peripherals that are wearable as glasses. The Central District’s analysis differed from the TTAB’s at both steps of the test. First, the parties stipulated that the relevant genus is “smart glasses.” The Court accepted this stipulation but clarified that it encompasses both the “smart computing elements and its glasses form factor.” Second, the Court analyzed several expert reports submitted by both parties that were not considered at the TTAB. Snap submitted opinions from a linguistics experts and a consumer survey expert, both of which opined that based on their expertise and research, spectacles is not generic for smart glasses. Ultimately, the Court found that the dictionary definition, media, and publications considered by the TTAB only showed that “spectacles” is descriptive of the glasses aspect of “smart glasses.” This is because nearly all of the references use another descriptor for the “smart” portion of the genus—such as “AR spectacles” or “smart spectacles”—rather than relying on “spectacles” alone to convey the products are smart glasses. The Court also relied on Snap’s linguistic expert who opined that English-language speakers understand “spectacles” to mean “eyewear,” which the Court found credible in part, because it is “unsurprisingly unremarkable.” This case highlights the importance of choosing the proper avenue for review of a TTAB decision. Parties have two options when dissatisfied by a TTAB decision: (1) an appeal to the Court of Appeals for the Federal Circuit; or (2) de novo review in a U.S. District Court. In an appeal to the Federal Circuit, the record is closed and the parties may not introduce any new evidence. At the district court, parties may supplement the record with additional evidence and the Court reviews the case anew in view of the new evidence. In this case, Snap correctly chose de novo review in the District Court. The opportunity to present new evidence allowed Snap to present its expert reports and stipulate that “smart glasses” is the proper genus. Snap may not have fared so well in an appeal to the Federal Circuit.

Cognac, which originates from a specific region of France and is named after the commune of Cognac, is far more popular outside its native country. Indeed, according to the industry group Bureau National Interprofessional du Cognac or BNIC, an astonishing 98% of cognac is exported. Cognac has a strong following in the African-American community, and is especially beloved by American rappers and hip-hop artists, many of whom serve as brand ambassadors or owners. As we previously covered, that connection includes a record label named “Cologne & Cognac Entertainment” and their U.S. trademark application for musical performances and services under this mark:     BNIC opposed the application on the grounds that COGNAC is a geographical indication and that Cognac producers own a common law certification mark for COGNAC. The Trademark Trial and Appeal Board, however, sided with applicants, holding that there was no likelihood of confusion because – at least according to the Board – the COGNAC certification mark was simply not famous enough. After BNIC appealed and the Federal Circuit held oral argument, we predicted that the Board’s decision appeared to be on shaky ground. That premonition turned out to be correct – on August 6, the Federal Circuit issued a decision vacating the Board’s dismissal of BNIC’s opposition and remanding to the Board for reconsideration. The Court began by explaining that unlike trademarks, “which indicate a single source of a product or service, certification marks are used by a person other than its owner with authorization from its owner.” Certification marks generally certify regional or other origin, material, quality, accuracy, and other characteristics. Notably, certification marks of regional origin are exempted from the Lanham Act’s general rule precluding “primarily geographically descriptive” marks. The Court then noted that although not registered with the PTO, it is undisputed that COGNAC is a common law certification mark. BNIC is an organization responsible for controlling and protecting the certification mark COGNAC for brandy manufactured in the Cognac region of France. The key issue on appeal was whether the use of the COGNAC mark for hip-hop music and production services was likely to cause confusion. The Board had held that confusion was not likely, in part because it concluded that the COGNAC mark was not strong or famous. It also dismissed BNIC’s dilution claim because, among other reasons, the Board did not think that BNIC had proven the fame element of dilution. The Federal Circuit first considered the issue of the COGNAC mark’s fame, the dominant factor in the In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) likelihood of confusion analysis. It held that the Board had erred in requiring that COGNAC be famous for its certification status. In the court’s view, a certification mark can be famous for many reasons, including geographic origin, and it does not need to be famous for its certification function. Thus, the Board’s failure to consider whether or not COGNAC was famous as an indicator of geographic origin was an error. The court also took issue with the Board’s holding that substantial sales and advertising of COGNAC certified products could not establish the mark’s fame because those products also bear brand names, such as HENNESSEY. Just because a certification mark is used with a brand name mark does not mean that the certification mark itself is not famous. As the court noted, certification marks are often present with a brand name mark because they can only be used on third-party products. The Board therefore should have determined whether a portion of the sales and advertising evidence could be attributed to the COGNAC mark (rather than just the brand name mark) such that the evidence was indicative of fame for the certification mark. The Federal Circuit also disagreed with the Board’s conclusion that the marks at issue are dissimilar. As the court explained, just because COGNAC informs consumers of the product’s geographic origin does not mean it cannot also “project an image of sophistication and elegance.” Indeed, the Cologne & Cognac Entertainment record label’s mark projects such an image precisely because of its use of the COGNAC mark. The Board also erred in its analysis of the similarity of both the goods and services and the trade channels. Instead of comparing BNIC’s services to those of the record label, the Board should have compared the goods, services, and trade channels of certified users of the COGNAC mark (e.g, HENNESSEY) to those of the record label. Finally, the court turned to BNIC’s dilution claim, which the Board had dismissed. Here, again, the court disagreed with the Board’s analysis. First, BNIC’s failure to explicitly plead that their certification mark was famous prior to Cologne & Cognac Entertainment’s constructive date of first use did not require dismissal of the dilution claim because the Notice of Opposition provided sufficient notice to meet the pleading standards (and the record label had failed to file a motion to dismiss). Second, as discussed above, the Board’s conclusions regarding the mark’s fame were erroneous and did not support a finding that COGNAC is not famous for purposes of dilution. It will be interesting to see how the Board responds to this slap-down from the Federal Circuit, and whether reconsideration changes its conclusion. But the Federal Circuit’s decision can only be helpful to owners of certification marks, particularly those indicative of geographic origin. We suspect there was much rejoicing among Cognac producers when this decision came out – and probably more than a few celebratory bottles of the fine French brandy consumed. Santé!

In March 2019, Cologne & Cognac Entertainment of New Jersey filed a trademark application at the USPTO for recordings featuring music and artistic performances, music composition services, production of musical videos in the nature of live performances by musical artists, and providing related entertainment and information services, under the following mark: The Examining Attorney assigned to the application at the USPTO did not raise any issues with respect to the use of “COGNAC” as part of the mark, presumably due to the fact that the goods and services in the application do not cover wines and/or spirits. Nonetheless, the use of COGNAC in the application certainly caught the attention of the Bureau National Interprofessional du Cognac because COGNAC is a geographical indication for “appellations of controlled origin” (AOC) for alcoholic products that come from the Cognac region of France. BNIC opposed the application for the COLOGNE & COGNAC ENTERTAINMENT & Design mark to protect the interests of producers of COGNAC brandy in the Cognac region of France, enforcing its common law certification mark COGNAC for brandy. In a split decision (2-1) issued on August 25, 2022, the Trademark Trial and Appeal Board determined that: 1) BNIC has exclusive rights in COGNAC as a regional certification mark used by growers, producers, and merchants and has controlled its use by authorized users to represent to consumers that a distilled spirit bearing the COGNAC mark comes from a defined region of France (the Board has acknowledged this previously in Institut Nat’l des Appeallations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1891 (TTAB 1998)); 2) BNIC has priority rights in COGNAC having been first exported into the U.S. in 1794 and sold continuously in the U.S. ever since; 3) The COGNAC certification mark may be famous, but that use of COGNAC on products does not make a particularly “strong impression on consumers for purposes of showing strength or even raising awareness as to Opposers’ certification mark.” As such, when COGNAC appears with a brand, the brand makes the strongest consumer impression; and, 4) In viewing the similarity of the marks COGNAC and COLOGNE & COGNAC ENTERTAINMENT & Design, the Board found that COLOGNE & COGNAC was the dominant element of the mark, creating an image of “a person wearing cologne and drinking brandy, projecting a certain lifestyle, such as one of leisure and high-living,” that is distinct in its own manner. BNIC submitted compelling evidence that “COGNAC certified product has an intimate and legendary history with music, particularly rap and hip hop music, in the United States,” showcased by brand owners of Cognac products partnering with various musical artists in the US, such as Snoop Dogg and 50 Cent. The Board found it unlikely that a consumer coming upon the COLOGNE & COGNAC ENTERTAINMENT & Design mark for musical/entertainment good and services would be confused that there may be an affiliation with BNIC or the beverage producers it works to protect. As a results, a likelihood of confusion under Section 2(d) of the Trademark Act was dismissed (Note: a dilution claim was also dismissed because it was not properly pleaded). A lengthy and compelling dissent by Administrative Trademark Judge Wolfson followed with respect to the dismissal of the Section 2(d) claim, wherein he laid out clear relatedness of the goods and services, overlapping channels of trade, and overlapping consumers, and a strong affiliation between Cognac and music industry icons, particularly in the black community, namely, Quavo, Pharrell Williams, Jay-Z, Ludacris, 50 Cent, Dr Dre, Snoop Dogg, and Erykah Badu. BNIC appealed the decision of the Board to the U.S. Court of Appeals for the Federal Circuit on October 27, 2022, and the CAFC heard oral arguments on June 4, 2024. Based on the Oral Argument, the TTAB decision appears unlikely to hold up. The contested finding from the Board’s majority was that the COGNAC certification mark was not famous enough on its own to prevent a company in a distinct industry from making use of COGNAC as part of a trademark. Should it be expected that a consumer would understand the certification process and impact? Other geographically specific trade groups, such as the Scotch Whisky Association and the Napa Valley Vintners, co-signed an amicus brief, stressing “owners of certification marks have never been required to show that consumers are aware of the mark’s status.” The three judges sitting on the panel for the CAFC have signaled that the Board’s decision will not hold up: Judge Clevenger: “The Board, seems to me, has said ‘Well, when the two travel together, there’ll be a presumption that the name brand dominates, unless there’s a showing to the contrary.’ That seems to me to be wrong.” Judge Hughes: “The Board has to sort out whether the fame [of COGNAC] is due to the name brand marks or to the ‘cognac’ mark, or maybe it’s famous for both, without applying a presumption or putting a thumb on the scale. But they didn’t do that.” Judge Clevenger: “There is a clear overlap in the consumers, between the consumers and the users in the hip-hop community, with makers of cognac. Every person who listens to hip-hop and hears about cognac and the quality of cognac and the performers…having themselves gone to France and produced cognac and put their own brand on it, along with the “cognac” certification, so the inner mixture between the rap music industry and the cognac industry is undeniable.” We will keep you apprised of the CAFC’s decision.

The Ninth Circuit issued two opinions in BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc. finding judicial power over pending trademark applications and an exception shielding trademark registrations for marks used with cannabis products. BBK Tobacco & Foods LLC (“BBK”) markets a variety of smoking accessories, including rolling paper, rolling machines, lighters, shredders, and grinders under the RAW brand, largely marketed to cannabis users. Central Coast Agriculture, Inc. (“CCA”) on the other hand markets cannabis concentrates and pre-rolled cannabis products under the RAW GARDEN brand. While BBK sued CCA for trademark infringement, unfair competition, and related claims, the interesting development in this case relates to each party’s attempt to cancel the other party’s trademarks. CCA filed four trademark applications for RAW GARDEN relating to various smoking accessories and products. Each application was filed on an intent to use basis under Section 1(b) of the Lanham Act. BBK sought to void the RAW GARDEN applications, alleging that CCA lacked the requisite bona fide intent to use the marks in commerce. CCA, for its part, lodged a counterclaim seeking to cancel BBK’s RAW trademark registrations, alleging that they are based on “unlawful use” because BBK’s products are “drug paraphernalia” marketed for use with cannabis. On appeal, the Ninth Circuit addressed these claims in two separate opinions. For BBK’s attempt to void CCA’s applications, the Ninth Circuit, for the first time, addressed whether federal district courts have the power to alter or void pending trademark applications. In a published opinion, the split Ninth Circuit panel said “yes.” The majority examined 15 U.S.C. § 1119, which provides that “in any action involving a registered mark the court may determine the right to registration. . . and otherwise rectify the register with respect to the registrations of any party to the action.” It found that the plain language of the statute grants a district court jurisdiction to consider challenges to a pending application, so long as the action involves a registered trademark, here BBK’s RAW registrations. This is because a challenge to an application “necessarily affects the applicant’s ‘right to a registration.’” Further, the parties and the Court have an interest in resolving all registration disputes in one action. The dissent disagreed. It read Section 1119 as permitting federal courts to cancel registrations only, not “to prematurely cancel pending trademark registration applications.” According to the dissent, the language of Section 1119 requires a completed registration—a Court cannot “determine the right to registration” or “rectify the register” absent an issued registration. The dissent also notes that the Trademark Trial and Appeal Board (“TTAB”) agrees, having previously found that district court authority under Section 1119 “concerns registrations” and that courts are “without authority to direct the USPTO to grant or deny pending applications.” Still, the majority opinion rules. In its appeal, CCA did not contest the district court’s finding that it lacked a bona fide intent to use the RAW GARDEN mark on the applied-for goods. As a result of the Ninth Circuit’s opinion, those applications are ordered to be voided. While the panel did not agree on the Section 1119 issue, all of the judges agreed that CCA’s counterclaim seeking to cancel BBK’s registrations is dead in the water. In an unpublished memorandum opinion, the Ninth Circuit found BBK’s RAW marks are not subject to cancellation for unlawful use. Only lawful use of a mark can be a basis for a trademark registration. Generally speaking, this means a party cannot obtain or maintain a trademark registration if the mark is used for illegal conduct, including the sale of illegal products. The Controlled Substances Act (“CSA”) prohibits the sale of controlled substances and “drug paraphernalia” including products designed to aid in preparing or inhaling controlled substances. While the legal status of cannabis has been in flux for some time, cannabis is still considered a controlled substance under federal law and is subject to the CSA. Luckily for BBK, the CSA includes a “tobacco exception” which excludes products that are “traditionally intended for use with tobacco products, including any pipe, paper, or accessory” from the CSA’s definition of “drug paraphernalia.” The court found that RAW rolling papers, rolling machines, shredders, grinders, and other smoking accessories are traditionally used with tobacco and shielded by the tobacco exception. The fact that BBK advertises its RAW products for use with cannabis was not sufficient to make BBK’s trademark use unlawful. Indeed, according to the Ninth Circuit, BBK’s subjective intent is wholly irrelevant to whether the tobacco exception applies. Finding RAW products fall within the exception, CCA’s counterclaim went up in smoke and the RAW trademarks remain valid. The unpublished memorandum gives some hope and guidance to cannabis companies seeking to protect their brands. But, they still face hurdles obtaining trademark registrations in the first place. The Trademark Manual of Examining Procedure (TMEP) is clear that “evidence indicating that the identified goods or services involve the sale or transport of a controlled substance or drug paraphernalia in violation of the [CSA]” is a basis for refusal of a trademark application. TMEP § 907. It even directly addresses cannabis stating: “regardless of state law, marijuana and marijuana extracts remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions.” Id. As we reported previously, when applying these rules, the UPSTO has considered a party’s advertising and denied registration of marks that relate to cannabis. For example, in In Re Brown, the applicant sought to register HERBAL ACCESS for “retail store services featuring herbs.” As with the RAW marks, the claimed services encompass legal activity—the sale of legal herbs. Nonetheless, the USPTO examined the applicant’s website and determined that the mark also, perhaps primarily, encompasses unlawful activity—the sale of cannabis. The TTAB, reviewing this advertising, affirmed the refusal to register the HERBAL ACCESS mark. Still, if cannabis companies are able to obtain registrations for products traditionally used with tobacco, the Ninth Circuit’s opinion suggests those registrations will not be disturbed, regardless of how the products are marketed.

Supreme Court Building in Washington, DC, United States The Supreme Court heard oral arguments in Vidal v. Elster this week, which asks whether refusing to register a trademark that criticizes President Trump violates the Free Speech Clause of the First Amendment. It seems the Supreme Court is poised to say it does not. This dispute dates back 2018, when Elster applied to register the TRUMP TOO SMALL mark for use on T-shirts and other apparel. The Trademark Office refused to register TRUMP TOO SMALL under Section 2(c) of the Lanham Act, which prohibits registration of any mark that “consists of or comprises a name, portrait or signature identifying a particular living individual except by his written consent” under certain circumstances. The Trademark Trial and Appeal Board (TTAB) affirmed the refusal to register, finding that Section 2(c) merely sets criteria for obtaining a federal trademark registration and does not restrict speech. However, as we previously reported, the Federal Circuit Court of Appeals reversed the TTAB, finding that Section 2(c) does impermissibly “chill speech” in this circumstance and may be impermissibly overbroad. In short, the Federal Circuit found that Elster’s intended use of the mark—to sell TRUMP TOO SMALL clothing that suggests President Trump’s policies and features are diminutive—was speech protected by the First Amendment and the government does not have a valid interest restricting speech critical of government officials or public figures. Questions from the Supreme Court Justices during the oral argument on Wednesday may suggest the Federal Circuit got this one wrong. The Justice Department, arguing on behalf of the United States Patent and Trademark Office, argued that Section 2(c) does not run afoul of the First Amendment because denying registration of the TRUMP TOO SMALL mark does not prohibit Elster from selling T-shirts with the slogan. Elster could still use the mark, he just would not have exclusive rights to the mark or any other benefits afforded by federal trademark registrations. It seems the majority of the Justices agree. At one point, Justice Alito even joked to the Justice Department “You don’t need my vote to win your case.” Justice Sotomayor indicated that this comes down to “first principles” the question being “is this an infringement of speech? And the answer is no.” She later told Elster’s counsel that “[y]ou’re not talking about stopping speech” rather: “You’re talking about not receiving government protection for activity that you would like to heighten protection for. It doesn’t stop you from selling.” Justice Kagan then pointed out that there is a long line of analogous cases indicating that the government can give or withhold benefits without restricting speech, suggesting this is such a case. Justice Gorsuch went on to note the “long and robust history about restricting names” from trademark protection and the several other limitations on registration such as marks that incorporate geographic names and descriptive terms. Chief Justice Roberts suggested that allowing Elster to register TRUMP TOO SMALL could actually suppress speech—Elster could prevent others from using the phrase to criticize President Trump by enforcing his trademark against them. The Chief Justice expressed concern that this suppression could be heightened if it causes a “race for people to trademark…Trump Too This, Trump Too That, whatever, and then particularly in an area of political expression, that really cuts off a lot of expression.” It appears that the Supreme Court is likely to find that Section 2(c), at least in this context, is not unconstitutional. Stay tuned to the TMCA for an update when the Supreme Court issues their opinion.

When Taco Bell announced its intention to eliminate all exclusive trademark rights in the phrase TACO TUESDAY, it invoked the Declaration of Independence, claiming that any restriction on the right to use it “violates an American ideal: ‘the pursuit of happiness.’” Though the fast-food giant’s most recent victories are perhaps smaller in scale than winning the Revolutionary War, it certainly had reason to celebrate after successfully cancelling another trademark registration for the popular phrase. In May 2013, Yum! Brands’ subsidiary Taco Bell filed a number of petitions before the Trademark Trial and Appeal Board (“T.T.A.B.”) to cancel third-party registrations for TACO TUESDAY in connection with restaurant services. Trademark registrations are not absolute, but provide a presumptively exclusive right to use a trademark in connection with the registered good and services. In its petitions, Taco Bell overtly stated it did not seek monetary damages (which the T.T.A.B. does not have the authority to award anyway), but rather that no one party should have an exclusive right to use TACO TUESDAY: “[a] win for Taco Bell [] is a win for all.” In addition to these legal filings, the company began an extensive PR campaign, issuing press releases and releasing a commercial starring LeBron James where each of his attempts to say TACO TUESDAY is “bleeped.” The fast-food company hinged its petitions on the principle that no party is entitled to a trademark registration for words or phrases that are generic for specific goods or services. In other words, because consumers understand the phrase TACO TUESDAY to refer to “promotions, deals, coupons, and other incentives for purchasing tacos and related products on Tuesdays,” no single restaurant or food provider should own the exclusive right to use it. Even before Taco Bell began its taco crusade, the T.T.A.B. took a similar position in ruling that the phrase cannot serve as a trademark for beer because it is so widely used—see our January 2023 article Taco Tuesday: It’s a Tasty Cultural Phenomenon Not a Trademark. Unlike the prior decision by the T.T.A.B., however, Taco Bell’s petitions never reached the ruling stage. The company’s primary targets were Wyoming-based Spicy Seasonings, LLC (owner of the Mexican food chain Taco John’s) and New Jersey-based Gregory’s Restaurant & Bar. Each owned registrations for TACO TUESDAY in connection with restaurant services, with the latter owning the right to use the mark in New Jersey, and the former in the other 49 states. Rather than engage in a costly fight with Taco Bell before the T.T.A.B., and potentially the court of public opinion, Spicy Seasonings voluntarily surrendered its registration on July 18, 2023. On October 20, 2023, Gregory’s followed suit and surrendered its registration for TACO TUESDAY. As a result, Taco Bell has presumably ended its fight to abolish exclusive rights in the phrase, which according to the company would have been the equivalent of “depriving the world of sunshine itself.” Such a victory illustrates not only the vulnerability of common phrases as trademarks, but also the importance of the non-legal side of trademark challenges—Taco Bell appears to have spared no expense in its PR campaign, which may have played an important role in inducing Spicy Seasoning and Gregory’s to surrender their registrations.

For 48 years, the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office has held that if a trademark registrant files a fraudulent declaration under Section 15 of the Lanham Act to make its registration incontestable, the registration is cancelled in its entirety, full stop. But on October 18, the U.S. Court of Appeals for the Federal Circuit put an end to that, holding that the TTAB lacks the statutory authority to cancel a registration in its entirety due to a fraudulent incontestability filing. As to what the penalty for such a fraudulent filing is or could be, well, the Federal Circuit threw out a few ideas, but it seems it will be for TTAB to figure that out. How did we get to this point? Picture it: West Hollywood, 1964. A young Serbian immigrant, Dobrivoje Tanasijević, who adopted the name Dan Tana not long after arriving in the United States, opens his eponymous Italian eatery. By the 1970s, Dan Tana’s has become a legendary showbiz hotspot, celebrated on The Tonight Show and frequented by all the boldface names of the day, from John Wayne to Linda Ronstadt. The restaurant becomes so popular that the lead character in the hit ABC television show Vega$, played by Robert Urich, is given the name “Dan Tanna” by the show’s producer and restaurant habitué, Aaron Spelling. The restaurant continues to flourish today on Santa Monica Boulevard, under new ownership following Mr. Tana’s sale of the place in 2009. Prior to the sale, in 2005, Mr. Tana tried to register his DAN TANA’S trademark with the PTO, but registration was refused because an Atlanta-area restaurant operated by Great Concepts LLC, had registered DANTANNA’S for restaurant services in 2003. An aggrieved Mr. Tana sought to cancel this registration, and he also sued Great Concepts for trademark infringement in 2008 in the U.S. District Court for the Northern District of Georgia; the cancellation proceeding was suspended during the pendency of the federal court action. Unfortunately for Mr. Tana, he lost the federal case before the district court in 2009, and then on appeal to the U.S. Court of Appeals for the 11th Circuit in July 2010. The cancellation proceeding was dismissed in December 2010. End of story, right? Wrong. On March 8, 2010, Great Concepts’ counsel filed with the PTO a combined declaration of use and incontestability under Sections 8 and 15 of the Lanham Act to maintain the DANTANNA’S registration (under Section 8) and to make the registration incontestable (under Section 15). In that declaration, the attorney swore, under penalty of perjury, as required for the registration to achieve incontestable status under Section 15, that “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” The problem: this statement was obviously false, because both Mr. Tana’s appeal and his cancellation proceeding were pending when the declaration was filed. Notwithstanding this glaring untruth, nothing happened until 2015, when Mr. Tana’s successor, Chutter, Inc., petitioned to cancel Great Concepts’ registration based on the untrue 2010 incontestability filing. The TTAB did just that, holding that, under Crown Wallcovering Corp. v. Wall Paper Mfrs. Ltd., 188 USPQ 141, 144 (TTAB 1975), when an incontestability filing is made fraudulently, the proper remedy is cancellation of the registration in its entirety. The TTAB had little trouble concluding that fraud had indeed occurred, given the concededly false statement contained in the Great Concepts declaration. The Board also noted that: (i) the attorney who filed the declaration was Great Concepts’ counsel in both the then-pending federal litigation and cancellation proceeding, so he clearly knew the declaration was false; (ii) the attorney’s claim that he was not aware of the legal requirements for a Section 15 declaration was no excuse; (iii) nor was his claim that a paralegal prepared the declaration, which he failed to read carefully; and (iv) Great Concepts and its counsel were aware of the false filing no later than February 2014 but failed to correct it with the PTO. Great Concepts appealed the TTAB decision to the Federal Circuit, and that appeal succeeded last week, in a 2-1 precedential decision. Why? The majority opinion offered a variety of reasons, starting with the text of the Lanham Act. Section 14 of the Lanham Act allows for cancellation “at any time” if the “registration was obtained fraudulently” (emphasis in majority opinion). According to the Great Concepts majority, the plain meaning of the statute covers fraud occurring in the context of initial filings made in support of an application to register a mark, and Section 8 filings to maintain the protections afforded by a registration. But, per the majority, a Section 15 incontestability filing is only optional and not made to “obtain” or even to “maintain” a registration, but to enhance the rights afforded to a registrant. In addition, Lanham Act Section 33(b) provides that an accused infringer can defend against claims brought by the owner of an incontestable registration by asserting that the owner’s incontestability filings were made fraudulently, but that Section says nothing about cancellation, just loss of incontestable status. Thus, the majority concluded that the Board has no statutory authority to cancel a registration when a fraudulent incontestability filing is made. In light of this holding, the Court did not reach the issue of whether Great Concepts had actually engaged in any fraud, and it remanded to the Board the question of what consequences, if any, should result from the false incontestability filing. In its decision, the majority rejected a series of arguments advanced by Chutter, and the dissent, as to why its holding was erroneous. First, the majority held that, notwithstanding 47 years of Board precedent to the contrary, the Lanham Act says what it says and if Congress wants to make cancellation of a registration in its entirety a remedy for a false incontestability filing, it can do so. The majority also noted that McCarthy on Trademarks and Unfair Competition has long agreed with the majority’s statutory reading, so it’s not like their holding was some sort of outlier, although the majority acknowledged that Gilson disagrees with McCarthy on this point. The majority also distinguished prior Federal Circuit cases suggesting agreement with the Board’s now overturned holdings, stating that these cases never directly presented the question decided in Great Concepts. Second, the majority held that the PTO’s administrative decision to allow registrants to make Section 8 (maintenance) and Section15 (incontestability) filings together, in the same document, did not cause Great Concepts’ Section 8 filing to be fraudulent. The majority held that the PTO in practice treats these combined filings separately, with separate filing fees, such that the PTO’s efforts to make post-registration filings more efficient and simpler for registrants did not and could not trump the Lanham Act’s text. Third, the majority rejected the policy-based arguments on which the dissent focused, rejecting the characterization of its holding as one making fraudulent incontestability filings a “costless offense.” After all, the majority said, the Board could take away a registration’s incontestable status as a penalty for a false Section 15 filing. Or, it could sanction the attorney who signed the declaration, even referring them to the PTO’s Office of Enrollment and Discipline, and maybe even for criminal prosecution (!) The majority defended its holding by stating that: Our ruling that a Section 14 cancellation of a registration is not an available remedy for a fraudulent Section 15 declaration – a conclusion we reach because Congress chose not to empower the Board with the ability to impose that specific consequence – is a ruling that this one remedy is unavailable, leaving the Board, we expect, with sufficient mechanisms to adequately deter fraud. To the dissent, all of this was just words, and it argued the majority was “excus[ing] fraud” and violating the “pact” with the general public when it comes to the grant and protection of intellectual property rights. It also scoffed at the majority’s seemingly preferred remedy – the loss of incontestable status – as a “no harm, no foul” solution that was wholly inadequate to deter fraud, particularly in this case, where there was “substantial evidence” showing that Great Concepts and its counsel had perpetrated a fraud on the PTO. Indeed, the dissent claimed that the majority had constructed “a milepost in the trademark administrative continuum, at which point (Section 15) fraudulent wrongdoing is greenlighted. The majority does not provide a principled rationale for such a milepost.” Apart from the adverse policy consequences weighing against the majority’s holding, the dissent’s view was that a Section 15 filing is part of a broader array of trademark maintenance filings that include Section 8 filings to maintain a registration and Section 9 filings to renew a registration. As a result, whenever a registrant fraudulently “obtains” any of the rights afforded to a registrant by virtue of owning a registration, cancellation of the registration is an available remedy. The fact that the PTO allows combined Section 8 and 15 filings to be made together, in one document, which states explicitly that willful false statements “may jeopardize the validity of this document” (emphasis added by dissent), confirms the interrelated aspects of these various filings, according to the dissent. So too does the fact that a Section 15 filing “may also be used as the affidavit or declaration required by section 8” (emphasis added by dissent, citing 37 CFR § 2.168). In closing, the dissent criticized the majority for suggesting alternative penalties the Board might consider on remand, and instead invited the Board to clarify whether it considers Section 15 filings to be part of the trademark registration maintenance process. As to what happens next in this case, your guess is as good as mine. An en banc review is a possibility, but given the remand to the TTAB for additional proceedings, the case may not be ripe for Supreme Court review. If there are no further, immediate appellate proceedings, the TTAB will have to decide whether to accept the dissent’s invitation to address whether a Section 15 filing qualifies as one that maintains a trademark registration. The Board will also have to consider what sort of sanctions, if any, are available when a fraudulent incontestability filing is made. Loss of incontestability? If so, forever, or could a new, fraud-free Section 15 filing be made? Sanctions on the offending attorney? If so, of what kind? What if the Section 15 declaration was filed by a non-attorney or the registrant itself? And does the Great Concepts decision make it more likely that registrants will run the risk of making false incontestability filings, because there is no clear penalty for such an act? Or not? Stay tuned for future updates on this esoteric, but important, issue.

The Supreme Court granted certiorari and will review the Federal Circuit’s opinion that Section 2(c) of the Lanham Act is unconstitutional as applied to a trademark for the term TRUMP TOO SMALL. The TRUMP TOO SMALL trademark is a callback to an exchange between Senator Marco Rubio and then presidential candidate Donald Trump during the 2016 presidential primaries. As we previously reported, the Trademark Trial and Appeal Board initially rejected the trademark application under Section 2(c) of the Lanham Act because it comprises the name of a living individual—President Trump—without that individual’s consent. The Court of Appeals for the Federal Circuit reversed the TTAB’s decision. The applicant for the trademark plans to sell t-shirts with the phrase TRUMP TOO SMALL to criticize President Trump; specifically, to convey “that some features of President Trump and his policies are diminutive.” The Federal Circuit viewed this criticism as speech protected by the First Amendment and found that Section 2(c) is unconstitutional as applied to the TRUMP TOO SMALL trademark because the government does not have an interest “in restricting speech critical of government officials or public figures.” The Federal Circuit did not address whether Section 2(c) is unconstitutional in all cases, but did suggest that it may be “impermissibly overbroad” because it does not leave the trademark office any discretion to permit registration for trademarks that advance First Amendment interests. The Supreme Court previously found that portions of Section 2(a) of the Lanham Act, which prohibits registration of “immoral, deceptive, or scandalous” trademarks and trademarks that “may disparage . . . any persons, living or dead,” are unconstitutional in all cases. It remains to be seen whether Section 2(c) is destined for the same outcome. The Supreme Court will likely hear oral arguments in the fall. Stay tuned to the TMCA Blog for an update when the Supreme Court issues its opinion.

What qualifies as the United States’ current favorite sport may be a subject for heated debate, but “America’s Pastime” and its biggest stars still have significant power over the public—and, apparently, the Trademark Trial and Appeal Board (“TTAB”). By 2017, New York Yankees right-fielder Aaron Judge had become a fan favorite, reaching such popularity that the team officially designated a section of its home stadium “The Judge’s Chambers.” Attendees wholeheartedly embraced the theme, with some showing up in judge’s robes, white wigs, and holding large signs bearing phrases such as “ALL RISE” and “HERE COMES THE JUDGE.” Not one to waste a good merchandising opportunity, Judge’s union, the Major League Baseball Players Association (“MLBPA”), licensed the use of these phrases, with Judge’s permission, to various third parties in exchange for royalties. Also in 2017, Long Island resident Michael P. Chisena filed applications to register the trademarks “ALL RISE,” “HERE COMES THE JUDGE,” and a design of a baseball diamond incorporating a gavel and scales of justice. Judge and the MLBPA filed oppositions of the applications before the TTAB. Purportedly unaware of throngs of screaming baseball fans wearing merchandise in reference to Judge just a few miles away, Chisena asserted that his applied-for marks did not refer to the right-fielder, and that the MLBPA simply uses “ALL RISE” and “HERE COMES THE JUDGE” as part of merely informational expressions to celebrate Aaron Judge’s baseball prowess. Traditionally, slogans or phrases that are common expressions or that simply convey information are not registerable as trademarks (e.g. “AMERICA’S FRESHEST ICE CREAM” for ice cream). Just a few months ago, the TTAB addressed similar arguments in its review of Lizzo LLC’s attempt to register “100% THAT BITCH.” In a precedential decision, the TTAB considered the possibility that the phrase was a merely informational expression that conveyed female self-confidence and independence. The singer Lizzo even admitted that the phrase originally came from an Internet meme. However, because Lizzo had popularized the phrase, the public had come to predominantly associate it with the singer, rendering it a valid trademark that identified her. And so, the TTAB allowed the mark to register. As with Lizzo, the TTAB sided with Judge and the MLBPA in a precedential decision, shutting down Chisena’s arguments and pointing out consumer recognition of “ALL RISE,” “HERE COMES THE JUDGE,” and the judicial baseball design logo as unmistakably referring to the Yankees player. Reliance on public perception therefore appears to be on the rise, spurring the TTAB to look outside of the application at issue and, at least in the case of celebrity singers and athletes, to rely on public perception as a measure of validity for trademarks.

When you hear the word “gruyere,” what comes to mind? A bucolic region in the mountains of Switzerland? Perhaps the Gruyère region of neighboring France? Or, more likely, you think of a type of cheese. Not just any old cheese though – according to the Oxford Companion to Cheese, gruyere cheese is “widely considered among the greatest of all cheeses.” In a delightfully cheese-pun stuffed decision, the Fourth Circuit Court of Appeals recently held that U.S. cheese consumers primarily think of “gruyere” as a type of cheese, rather than a product specific to the Gruyère regions of Switzerland and France. As such, the Court found that the term “gruyere” was too generic to warrant a certification mark of geographic origin. As the Fourth Circuit explained, gruyere cheese originated in the district of La Gruyère in the Canton of Fribourg, Switzerland, in 1115 AD. The original area of production expanded to include other areas of Switzerland and certain neighboring areas of France. According to sources the court quoted, Swiss and French gruyere “producers make cheese from the unpasteurized milk of cows that graze on alpine grasses.” As is common in Europe, Switzerland and France have approved “Gruyère” as a protected designation of origin and a protected geographical indication, respectively. Those designations set forth detailed requirements for the gruyere production process, including that the cheese only be produced in specified areas of Switzerland and France. The U.S., however, does not extend similar protections to gruyere cheese. While the FDA has a general standard of identity of “Gruyere cheese,” that standard does not impose any geographic restrictions on where gruyere-labeled cheese can be produced. It’s no surprise that, as a result, cheese from all over the world – as well as from U.S. states such as Wisconsin and Idaho – has been labeled and sold as gruyere in the U.S. for decades. Of course, it’s also not a huge surprise that Swiss and French gruyere producers aren’t terribly keen on (maybe even cheesed off about) what the court termed “the indiscriminate labeling of cheese as gruyere in the United States.” In 2015, a Swiss and a French gruyere consortium (appellants in the Fourth Circuit case) teamed up to file an application with the USPTO to register the word “GRUYERE” as a certification mark. The intended mark would certify that the cheese originates in the Gruyère region of Switzerland and France, and would preclude any cheese produced outside that region from using the “GRUYERE” label. However, a group of U.S. dairy producers/importers (appellees in the Fourth Circuit) opposed the certification mark, arguing that the term “gruyere” was generic as to cheese and therefore not eligible for the certification. The TTAB agreed with the Opposers that “GRUYERE” is generic and could not be registered as a certification mark. After the Consortiums challenged that decision in a Virginia district court, the district court reached a similar conclusion and granted summary judgment for Opposers. The Consortiums then appealed to the Fourth Circuit, which noted that “[l]ike a fine cheese, this case has matured and is ripe for our review.” (Given the number of cheese puns in the decision, one wonders if the judges and their clerks nibbled on some gruyere while drafting the opinion.) The court began with a brief but helpful refresher course on certification marks, including indications of regional origin. The federal Lanham Act, 15 U.S.C. § 1127, defines a certification mark as “any word, name, symbol, or device, or any combination thereof” that is used “to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.” The court explained that, unlike a typical trademark, a “geographic certification mark is not used by the owner of the mark; rather, the owner of the certification mark controls how others use the mark.” Certification marks are, however, registrable “in the same manner and with the same effect as are trademarks.” 15 U.S.C. § 1054. Of course, this means that the same standards apply – including that a generic name (i.e., the name of a class of products or services) is ineligible for registration as a certification mark. The Fourth Circuit noted that the “critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” In this case, the issue was whether the cheese-consuming public primarily understand the term “GRUYERE” as referring to a type of cheese (i.e., generic), rather than indicating that the cheese was produced in the Gruyère region of Switzerland and France (i.e., non-generic). The district court had granted summary judgment to Opposers on the basis of three categories of evidence. First, the FDA standard of identity for “Gruyere cheese” indicates the mark is generic. Second, the district court held that USDA import data (which showed the prevalence of imported gruyere from countries other than Switzerland and France), as well as evidence of domestically produced gruyere-labeled cheese, favors a finding of genericness. Third, the district court found that “common usage” of the term gruyere shows that it is generic. On appeal, the Fourth Circuit agreed with the district court that the FDA standard of identity for “Gruyere cheese,” which does not contain any geographic restrictions on where the cheese can be produced, supports a finding that the term “GRUYERE” is generic. The court noted that, while the FDA standard of identity for “Gruyere cheese” does not preclude registration of the “GRUYERE” certification mark, that standard of identity “presents strong evidence that GRUYERE is a generic term.” Moving on to the second category of evidence (non-Swiss/French imports and domestically produced gruyere), the Fourth Circuit agreed with the Consortiums that the district court made an improper inference from the USDA import data. Specifically, the district court erroneously concluded that that data showed that the majority of gruyere-labeled cheese imported into the U.S. was from countries other than Switzerland and France, when that was unclear at best. Unfortunately for the Consortiums, despite this improper inference, the Fourth Circuit nonetheless held that “a substantial quantity of cheese has been imported to the United States from countries other than Switzerland and France and sold to consumers as gruyere.” Similarly, while conceding that some of the Consortiums’ criticisms of the domestically-produced gruyere cheese evidence had merit, the appellate court still concluded from the evidence that millions of pounds of domestic-produced cheese are sold as gruyere in the U.S. Next, the Fourth Circuit discussed the evidence of common usage of the term gruyere. Yet again, the court found that even though the district court had made mistakes, they didn’t impact the conclusion. The district court had first looked at various dictionary definitions of the term gruyere and concluded that most of those definitions did not limit the meaning of gruyere to cheese produced in Switzerland and France. But, as the Consortiums pointed out, some definitions do define “Gruyere cheese” as being produced or originating in Switzerland or France. Thus, the Fourth Circuit held that the district court erred in concluding from dictionary definitions of gruyere that the term was generic. But the district court had also considered references to gruyere in the media, and the Fourth Circuit agreed that those references – many of which described gruyere as originating in places other than Switzerland and France – supports a finding of genericness. Finally, the Fourth Circuit addressed the Consortiums’ argument that summary judgment was improper because Opposers failed to provide consumer survey evidence. In the court’s words, that “argument slices the cheese too thinly.” While survey evidence is common in genericness cases, it is not mandatory and evidence of consumer understanding of a mark may be obtained from any competent source. In sum, the court held that because the evidence made clear that cheese consumers in the U.S. understand “GRUYERE” to refer to a type of cheese (and not cheese from a particular region), the term is generic and the district court properly granted summary judgment to Opposers.

How would you pronounce #law? Is it “hashtag law,” as the PTO examiner suggested would be the most common understanding, or “pound law,” as alleged by the unsuccessful registrant of #law as a service mark. And to what does it refer: a hashtag for a social media topic, or a number that can be dialed from a mobile phone to reach an attorney referral service? Law firm Pound Law, LLC filed a lawsuit against the PTO and its director, arguing that its application for #law was improperly denied. According to Plaintiff, “the #LAW mark has become widely recognized by the relevant public as a distinctive brand and as a mnemonic/vanity telephone number mark uniquely associated with the services of Morgan & Morgan,” because Plaintiff spent “hundreds of millions” of dollars advertising it since 2006. Notably, this #law apparently only applies to telephone calls made on a mobile phone; it does not work on landlines, and the firm uses the website “www.forthepeople.com” and not either Pound Law or Morgan & Morgan. The examiner, and TTAB, decided that “consumers would not perceive [Plaintiff’s] use of #LAW as a source indicator but rather only as a means to contact [Plaintiff], based on the manner of use.” The history of this mark illustrates how quickly technology has unfolded over the past 15 years. Morgan & Morgan allegedly began using #law as a mnemonic and vanity phone number in 2006—the same year Twitter was founded. A few years later, Twitter took off: it had 300,000 tweets per day by the end of 2008, which ballooned to over 50 million tweets per day by early 2010. In 2022, there were over 500 million tweets per day, a non-negligible number of them using #law to identify the subject. A Twitter search renders countless tweets from law firms to law schools, legal consultants, protestors, and coaches using #law. Is Morgan & Morgan’s use really as “unique” and “distinctive” in 2023 as it may have been in 2007? The treatment of this mark calls to mind the Booking.com saga, covered extensively in this blog. The TTAB determined that the mark “Booking.com” was not registrable on the basis that it was generic, described here. The TTAB decision was overturned by Judge Brinkema in the Eastern District of Virginia, which held that Booking.com had acquired distinctiveness, described here, but awarded fees to the PTO because the case had been brought in district court instead of appealed directly to the Federal Circuit, as described here. The Fourth Circuit affirmed the District Court’s decision that the mark is registrable, but ordered the plaintiff to pay the PTO’s fees on appeal, described here. The PTO petitioned for certiorari to the U.S. Supreme Court, which was granted as described here, and the Supreme Court ultimately ruled that Booking.com is registrable, rejecting the premise that a generic.com term is ineligible for trademark protection, described here. This also calls to mind a different source of trademark obsolescence: trademarks that have been lost due to genericide. Among these are the yoyo, the flip phone and the escalator – all of which were marks associated with one brand until they became so widely used that they no longer identify a specific brand. Will #law go the way of the yoyo, or will it follow the winding path of the Booking.com decisions? Only time will tell.

Image from Evan El-Amin / Shutterstock.com During the 2016 presidential primaries, then presidential candidates Donald Trump and Senator Marco Rubio exchanged insults, with Trump calling Rubio “Little Marco” and Rubio commenting on the size of Trumps hands. Recently, this exchange was the basis for a Federal Circuit decision reversing a refusal to register the trademark TRUMP TOO SMALL as an unconstitutional restriction of speech under the First Amendment. In 2018, Steve Elster applied to register the mark for use on T-shirts and related apparel. As the Federal Circuit recounts, “According to Elster’s registration request, the phrase he sought to trademark invokes a memorable exchange between President Trump and Senator Marco Rubio . . . and ‘aims to ‘convey[] that some features of President Trump and his policies are diminutive.’” The Examining Attorney at the United States Patent and Trademark Office denied Mr. Elster’s application under Sections 2(a) and 2(c) of the Lanham Act. On appeal to the Trademark Trial and Appeal Board (“TTAB”), the TTAB affirmed the refusal of the application, relying solely on Section 2(c) of the Lanham Act. Section 2(c) of the Lanham Act prohibits registration of a trademark that: “Consists of or comprises a name, portrait or signature identifying a particular living individual except by his written consent.” 15 U.S.C. § 1052(c). Section 2(c) does not prohibit all uses of an individual’s name in a trademark. Rather, it applies only when: (1) the public would reasonably assume that the goods associated with the mark are connected with the particular individual due to the individual’s fame or recognition; or (2) the individual is publicly connected with the business in which the mark is, or will be, used. There was no dispute that President Trump is sufficiently famous to fall within the protection of Section 2(c) “not only because of his political office but also because of his prior celebrity.” Elster argued that refusing to register the TRUMP TOO SMALL trademark violated his right to free speech under the First Amendment. The TTAB noted that as an administrative tribunal, it does not have the authority to strike down any statute as unconstitutional, but noted that a constitutional challenge may involve “many threshold questions . . . to which the [agency] can apply its expertise”, and went on to find that the refusal to register TRUMP TOO SMALL was not unconstitutional. The TTAB first opined that Section 2(c), like all of Section 2 of the Lanham Act, merely sets forth criteria for obtaining a federal trademark registration. It does not control the use of the trademark. Indeed, one can use a trademark in commerce without obtaining a registration and Elster could do so here even if the registration is denied. Second, the TTAB found that Section 2(c) does not restrict any particular type of speech, but applies in “an objective, straightforward way to any proposed mark that consists of or comprises the name of a particular living individual, regardless of the viewpoint conveyed by the proposed mark.” Accordingly, the TTAB affirmed the Examiner’s refusal to register TRUMP TOO SMALL. On appeal, the Federal Circuit reversed the TTAB, finding that Section 2(c) is unconstitutional as applied to the TRUMP TOO SMALL trademark, while deferring any decision on whether it is unconstitutional in all cases. The Court noted that trademarks can be protected speech and that denying registration, while not prohibiting use of the trademark, “chills speech” by stripping the mark of the many advantages associated with federal registration. Accordingly, there must be a substantial government interest to justify restricting speech by denying a registration. The purpose of the Section 2(c) is to protect state law rights of privacy and publicity that individuals have in their names, appearance, and likeness. The Court quickly found that a right of privacy cannot shield a public official from comment or criticism. The Court also questioned whether a political figure maintains a right of publicity at all. At the very least, the political figure’s right of publicity would not permit a prohibition on the distribution of posters, buttons, apparel, or other materials that express support for or disagreement with the political figure. In short, “[a]s a result of the President’s status as a public official and because Elster’s mark communicates his disagreement with and criticism of the then-President’s approach to governance, the government has no interest in disadvantaging Elster’s speech.” As we reported previously, the Supreme Court has found that portions of Section 2(a) of the Lanham Act, which prohibit the registration of “immoral, deceptive, or scandalous” trademarks and trademarks “which may disparage . . . any persons, living or dead” are unconstitutional. While this opinion expands the Supreme Court’s reasoning to Section 2(c), whether its reasoning applies to trademarks that do not involve political figures or that do not criticize famous individuals remains to be seen. The Federal Circuit noted that it was only asked to analyze Section 2(c) as applied to Elster’s mark. But it did go on to note that Section 2(c) may be “impermissibly overbroad” because it does not leave the USPTO discretion to permit registration for marks that advance First Amendment interests.

Attention trademark practitioners: the finalized rules implementing the 2020 Trademark Modernization Act (“TMA”) go into effect this weekend, on December 18, 2021. Significantly, this marks the availability of three new mechanisms for eliminating “deadwood” registrations: petitions for reexamination, petitions for expungement, and a new nonuse (expungement) cancellation ground. We previously wrote in detail about these three changes here. The PTO will begin accepting petitions for reexamination and expungement starting December 27, 2021, but the new nonuse cancellation ground will presumably be available as of the 18th. The chart below compares these new procedures. Starting in about a year (on December 1, 2022), the office action response period for most trademark applications will shrink to three months from the current six-month response period. But a three-month extension may be requested for a fee of $125, and the response period for Madrid Protocol applications will remain six months. The TMCA will continue to monitor and provide updates on the impacts of the TMA.  

Twelve years after the Federal Circuit’s landmark In re Bose decision on fraud, the U.S. Trademark Trial and Appeal Board (“TTAB”) has answered one of the questions not reached by Bose: whether reckless disregard of the truth or falsity of a material statement in a PTO filing satisfies the intent to deceive standard for fraud. In the precedential decision Chutter v. Great Management Group, LLC/Chutter v. Great Concepts, LLC, the TTAB answered “yes” to this question and cancelled the challenged registration based on fraud. Chutter involved a consolidated TTAB proceeding involving oppositions to two applications (DANTANNA’S for “spices and spice rubs” and DATANNA’S TAVERN for “restaurant and bar services” owned by defendant Great Management Group) and a cancellation against one registration (DANTANNA’S mark for “steak and seafood restaurant” by defendant Great Concepts, LLC). The defendants shared the same owner, who treated both entities interchangeably, filing the combined declaration for the DANTANNA’S mark owned by Great Concepts LLC in the name of Great Management Group. Because plaintiff’s common law use of its DAN TANA’S mark for a restaurant and marinara sauce long predated any use by defendants and the TTAB separately found a likelihood of confusion between the parties’ marks, the only way defendants could save their registration was to rely on its incontestable status. The material false statement at issue in Chutter was the statement from the declaration of incontestability for the DANTANNA’S registration that there were no pending proceedings against the registration. The statement was material because without it the registration would not have been entitled to the protection of incontestability. The statement was false because when the declaration was made the registration was the subject of both an earlier cancellation proceeding and federal court litigation. The Board found the signatory’s statement was made with reckless disregard of the truth or falsity based on these facts: At the time the declaration of incontestability was signed, the signatory knew that the registration was subject to challenge in the cancellation proceeding and court litigation At the time of his signature, the signatory did not know the requirements for a declaration of incontestability and did not read the language of the declaration that explained the requirements Upon learning the declaration was false, the defendants did not correct it The details behind these facts only worsened the defendants’ position. The signatory was not a business person, but defendants’ outside counsel. The outside counsel not only knew about the earlier cancellation proceeding, but was handling it. Once the declaration of incontestability had been filed, an employee from the signatory’s office called the PTO the day after the declaration was filed to check on the status of the cancelation proceeding. That same day the signatory’s paralegal sent the signatory a memo explaining what statements had been made in the filing and describing how to remedy any errors in the filing. While these facts demonstrated an awareness of the falsity, later facts showed that defendants had clear knowledge of the falsity. Plaintiff’s counsel described the falsity to defendants’ counsel during a phone call and then again when petitioning to cancel the registration. While their answer to the cancellation petition admitted the statement was false, Defendants still did not correct the false declaration of incontestability. The TTAB found the totality of these facts showed “willful blindness” amounting to “reckless disregard” of the truth or falsity of the statement. Having found reckless disregard, the TTAB next looked to case law to see if reckless disregard qualifies as willful intent and satisfies the intent to deceive standard for fraud required by In re Bose. The TTAB cited multiple cases from non-trademark contexts when the Supreme Court or federal appellate courts held that acting with reckless disregard for the consequences of an action satisfies the requirement for an intentional or willful act. The TTAB then concluded that “reckless disregard [was] . . . the legal equivalent of finding that [defendant] had the specific intent to deceive the [PTO]” and cancelled the DANTANNA’S registration on the ground of fraud. Chutter shows that the TTAB will not tolerate the combination of a false declaration of incontestability and reckless disregard of the truth or falsity of a material statement. The conduct described above can serve as guidance on what future plaintiffs should do and what future defendants should avoid. Certainly, correction of a prior false statement in a PTO filing should be undertaken promptly once the falsity becomes known to a signatory, even if such “correction” amounts to a withdrawal because it eliminates the registrant’s basis for the declaration of incontestability. Left unresolved, however, are issues such as whether Chutter’s precedential holding will be applied to non-attorney signatories who may have a lesser understanding of legal language and the potential consequences of a false statement, whether there can be a false declaration of incontestability without a corresponding finding of reckless disregard and what behavior constitutes reckless disregard in connection with declaration of use filings. Watch this space for discussions of future TTAB fraud cases to find out!

As we wrote in Parts I and II in this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, containing several significant amendments to the Lanham Act. This post will cover two of the legislative changes: (1) the formalization of procedures for Letters of Protest; and (2) the discretionary shortened timeframe to file a response to Office Actions. The formalization of procedures for Letters of Protest is not anticipated to require new regulations for implementation, and the newly-formalized procedures and fee for submissions went into effect on January 2, 2021. The new changes for shortened response times to Office Actions will take effect on December 27, 2021, though the implementing regulations and procedures, as well as the fees for these procedures, have not yet been set. Procedures for Letters of Protest Letters of Protest can be a useful tool for interested third parties to bring to the attention of an examining attorney the existence of prior pending applications or registrations alleged to be confusing similar, or other issues, such as the descriptive significance of the applied-for mark, that a third party believes create a bar to registration. A third party must follow the procedures set forth below. (For additional details, we suggest reviewing the procedures on the USPTO’s website.) These newly-formalized procedures may not be very different from what has been informal practice up until now, but it is helpful to have confirmation of what the USPTO requires: Letters of Protest must include a valid legal ground for a USPTO examining attorney to refuse registration. Evidence must be submitted by the party filing the Letter of Protest. Timing for filing a Letter of Protest and Evidentiary Requirements: If filed before the trademark application is published, the evidence must be relevant to the stated reason(s) for why registration should be refused. If filed after the trademark application has published, the evidence must establish a prima facie case for refusing registration. Letters of Protest must be filed electronically at the USPTO and a fee of $50 is required. The TMA adds the following changes to the procedures: A third party may submit for consideration for inclusion in the record of an application evidence relevant to a ground for refusal of registration. The submission shall identify the ground for refusal and include a concise description of each piece of evidence submitted in support of each identified ground for refusal. Not later than 2 months after the date on which the submission is filed, the Director shall determine whether the evidence shall be included in the record of the application. If the Director determines that the third party evidence should be included in the record of the application, only the evidence and the ground for refusal to which the evidence relates may be included. Any determination by the Director whether or not to include evidence in the record of an application shall be final and non-reviewable, and a determination to include or to not include evidence in the record shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding. The key takeaway here is that the USPTO now will have a set deadline to review evidence submitted in Letters of Protest and make a determination about whether the evidence will be included in the record of the application. Provision for Discretionary Shortened Response Deadline to Respond to Office Actions Under current USPTO procedures, an application will be reviewed by an examining attorney, who will either approve an application for publication for opposition, or issue an Office Action raising particular issues that must be addressed before the application can move forward. If an Office Action issues, an applicant has 6 months to respond. The TMA changes the current process by authorizing the issuance of Office Actions that require a response as early as 60 days after issuance, or within 6 months from issuance. The discretionary shortened response deadline is intended to be a tool for eliminating applications that will ultimately be abandoned and thus unclutter the register. If an applicant fails to reply, amend, or appeal within the relevant time period, including any extension available, the application shall be deemed abandoned, unless it can be shown to the satisfaction of the Director that the delay was unintentional, in which case the application may be revived and time may be extended. The Director may prescribe a fee to accompany any request to revive. The Director shall provide by regulation for extensions of time to respond to the examiner for any time period that is less than 6 months. The Director shall allow the applicant to obtain extensions of time to reply or amend for a period of time not exceeding 6 months from the date of notification of the issuance of the Office Action. However, the Director may set by regulation the time for individual periods of extension, and prescribe a fee, by regulation, for any extension request. Any request for extension shall be filed on or before the date on which a reply or amendment is due. It remains to be seen how it will be determined which issues might fall into the shortened “60-day deadline” or less than 6 months categories. While the USPTO suggests that the goal behind the implementation of the shortened deadline to respond to an Office Action is to cut dead wood from the register, it could have the effect of making the application process more expensive for applicants who may need additional time beyond a 60-day Response deadline to address what may seem to an examining attorney to be relatively minor issues. We will, of course, provide updates on the implementation of the TMA as updates become available over the course of 2021.

As we wrote in Part 1 of this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, and contained several significant amendments to the Lanham Act. This post will cover three of the legislative changes, all pertaining to the elimination of “deadwood” marks that clutter the register and create needless impediments to registration of new marks: (1) ex parte expungement; (2) ex parte reexamination; and (3) non-use cancellation. These new vehicles for challenging unused marks will not take effect until December 27, 2021, and implementing regulations and procedures, as well as the fees for these procedures, have not yet been established. Ex Parte Expungement – For Marks That Have Never Been Used What for – As a well-known New Yorker cartoon asked – “How about never – is never good for you?” If the answer is a mark has never been used, then ex parte expungement is the procedure for you to consider. Section 16A is added to the Lanham Act to allow any person—including the Director of the USPTO on the Director’s own initiative—to file a petition to expunge a trademark registration on the ground that the mark has never been used in commerce on or in connection with some or all of the goods or services covered by the registration. Who can petition – The TMA provides that “any person” can file an expungement petition. So unless the implementing regulations specify a standing requirement or one is adapted from analogous opposition and cancellation proceedings through case law, it appears that anyone (plus the Director) can take advantage of this procedure. How to petition – A petition for expungement must identify the specific goods or services alleged never to have been used in commerce in association with the mark. Further, the petitioner must include a verified statement that sets forth the details of its reasonable investigation into whether the goods or services have been offered and additional facts that support the allegations. The TMA indicates that the Director is to promulgate regulations regarding what constitutes a reasonable investigation and the type of evidence that could support a prima facie case that a mark has never been used in commerce. How to respond – The TMA indicates that a registrant’s evidence of use in defense of an ex parte expungement proceeding is the type of evidence that is consistent with when a mark is deemed to be in use in commerce under Section 45 of the Lanham Act. The Director is also charged with establishing the procedures for ex parte expungement proceedings, including setting response times. What about U.S. Marks Registered Based on a Foreign Registration? – For a mark registered solely on foreign registration basis (Section 44(e)) or as an extension of protection via the Madrid Protocol (Section 66), a registrant can offer evidence of special circumstances that provide a basis for excusable nonuse. No duplicate proceedings – The TMA prohibits co-pending ex parte expungement proceedings against the same goods or services in a registration. Further, once ex parte expungement proceedings have been brought against a registration and the registration is upheld for the goods or services at issue, there is an estoppel provision in the Act providing that no later petitions with respect to those same goods or services can be filed, regardless of the identity of the petitioner. When you can petition – Until December 27, 2023, ex parte expungement petitions can be filed against any registration at any time after the third anniversary of the registration. Beginning December 28, 2023, petitions can only be filed between the third and tenth anniversary of a registration. Appeal Procedure – The TMA allows for appeal of decisions in ex parte expungement proceedings to the Trademark Trial and Appeal Board or to the Federal Circuit. Ex Parte Reexamination – For Marks Not in Use When Use Was Alleged What for – The TMA adds a new Section 16B to the Lanham Act to allow any party to petition for reexamination of a registration on the ground that the mark was not in use in commerce in connection with some or all of the goods covered by the registration on or before the “relevant date.” As used in the statute, “relevant date” means: (1) for use-based applications that did not have any change in basis after filing, the date the application was initially filed; or (2) for intent-to-use applications, the date on which an amendment to allege use was filed. What about U.S. Marks Registered Based on a Foreign Registration? – The ex parte reexamination procedure under Section 16B cannot be initiated against foreign-based registrations issued under Sections 44(e) or 66 of the Lanham Act. Who can petition – As with expungement petitions under Section 16A, there is no standing requirement – a reexamination petition can be filed by any person. How to petition and respond – Ex parte reexamination proceedings will share the following similarities with ex parte expungement proceedings: the Director can request ex parte reexamination on the Director’s own initiative; the petitioner must identify the challenged goods or services and include a verified statement that details the reasonable investigation into use the petitioner has conducted; the Director will establish the procedures for ex parte reexamination proceedings; the Director will identify the type of evidence that could support a prima facie case that a mark has never been used in commerce; a registrant’s evidence of use is the type of evidence that is consistent with when a mark is deemed to be in use in commerce under Section 45 of the Lanham Act; co-pending proceedings involving the same goods or services are not allowed; if a registration is upheld for certain goods or services, no further ex parte reexamination proceedings may be initiated against the registration for those goods or services; and decisions can be appealed to the Trademark Trial and Appeal Board or the Federal Circuit. When you can petition – Petitions for ex parte reexamination may be commenced at any time before the fifth anniversary of a registration, except for registrations on the Supplemental Register, which are vulnerable to petition for reexamination at any time. New Non-Use Cancellation Proceeding What for – Section 14 of the Lanham Act is amended to allow a petition for cancellation on the ground that the registered mark has never been used in commerce on or in connection with some or all of the goods covered by the registration. Who can petition – A party who believes it may be damaged by a trademark registration; thus, there is a standing requirement, as with other types of cancellation proceedings. When you can petition – This new non-use cancellation petition can only be filed after the third anniversary of the registration. How does this ground of cancellation for non-use differ from abandonment claims? This new ground for cancellation based on non-use appears to differ from a claim for abandonment because it applies to marks that have never been used, as opposed to marks that were in use for some time but then discontinued. It also does not involve any requirement for a petitioner to establish a lack of intent to resume use by the registrant, a factor that comes into play when a mark has been used for a period of time and then discontinued. *          *          * Look for Part 3 of our series on the TMA soon, which will discuss new Letter of Protest procedures and the discretion given to examining attorneys to set discretionary response deadlines.

After a fair amount of end-of-year legislative drama, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020 as part of the Consolidated Appropriations Act for 2021, which also included needed funding for COVID-19 relief and support. The text of the Act from the House Report can be seen here. The TMA amends the Lanham Act in several different unrelated ways, all of which are important for trademark practitioners, whether litigating in federal court, prosecuting trademark applications in the USPTO or engaging in proceedings before the Trademark Trial and Appeal Board. Some parts of the TMA, such as the provisions for ex parte reexamination, become effective a year from signing, on December 27, 2021. Other provisions, such as the statutory amendment concerning the presumption of irreparable harm and the clarification of status of TTAB judges do not specify an effective date and may be left to the courts to decide. Our first post on The TMCA will cover the presumption of irreparable harm for obtaining injunctive relief under the Lanham Act and amendments to ensure that the independence of Trademark Trial and Appeal Board (“TTAB”) judges cannot be challenged under the Appointments Clause of the Constitution. In subsequent posts, we will address changes to Letter of Protest and office action response procedures during the application examination process and new procedural mechanisms for challenging the validity of registrations based on lack of commercial use of the registered mark. Clarification on Presumption of Irreparable Harm for Obtaining Injunctive Relief The TMA clarifies that when seeking injunctive relief on a claim for trademark infringement, a rebuttable presumption of irreparable harm is created upon a finding of trademark infringement at trial, or upon a showing of likelihood of success on the merits for preliminary injunctive relief or a temporary restraining order. The rebuttable presumption also applies to claims of unfair competition, false advertising, dilution or cyberpiracy under Section 43 of the Lanham Act. An amendment to the Lanham Act was needed due to a Circuit split regarding the standard for injunctive relief in trademark infringement cases following the U.S. Supreme Court’s ruling in eBay Inc. v. MercExchange, which eliminated a similar presumption of irreparable harm in patent cases. In trademark cases decided since eBay, Circuit courts have ruled inconsistently on whether the four equitable factors for obtaining an injunction should be weighed in each case, or whether irreparable harm should be presumed once there is a finding of infringement or a likelihood of success is shown for purposes of obtaining expedited relief. This split encouraged forum shopping and undermined the consumer protection purposes of the Lanham Act. The TMA now codifies in the Lanham Act a nationwide uniform standard that the presumption should be applied in trademark cases. Thus, the Act reduces the evidentiary burden on trademark owners for obtaining injunctive relief to protect their trademark rights and prevent consumer confusion. Protection of Administrative Law Judges Serving on the Trademark Trial and Appeal Board The TMA also contains a provision giving the Director of the U.S. Patent and Trademark Office considerably more power over the administrative law judges of the TTAB. The amendment to Section 18 of the TMA clarifies that “the authority of the Director under this section includes the authority to reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board.” This provision should avoid the problem highlighted in the 2019 Arthrex v. Smith & Nephew decision of the Federal Circuit. The court in that case held that Patent Trial and Appeal Board judges were not subject to sufficient oversight and supervision by the USPTO Director to be considered inferior officers under the Appointments Clause, and thus were unconstitutionally appointed since they had not been nominated by the President and confirmed by the Senate. The TMA amendments confirm that TTAB judges are inferior officers, which should immunize them from any application of the Arthrex holding. Stay tuned for further TMCA posts on other important changes to the Lanham Act coming your way under the TMA.

In a precedential decision earlier this year, the Trademark Trial and Appeal Board thinned some of the haze surrounding the registrability of trademarks for hemp-derived CBD products. In line with the U.S. Patent and Trademark Office guidelines issued last year, the Board confirmed that marks covering food and dietary supplements containing hemp-derived CBD are not currently registrable. The decision involved an application for the mark CW covering “hemp oil extracts sold as an integral component of dietary and nutritional supplements” owned by the company behind the “Charlotte’s Web” strain of cannabis, which some may recognize due to national news coverage of its efficacy in treating seizure disorders. The record contained evidence that the applicant sold versions of the goods containing both CBD derived from marijuana (defined as cannabis containing more than 0.3% THC and which is illegal under the Controlled Substance Act (“CSA”)) and from hemp (defined as cannabis containing less than 0.3% THC and which is no longer illegal under the CSA). This dual use prompted the examining attorney to refuse the application on the ground the goods cannot be used lawfully in interstate commerce because they constitute foods that are per se illegal under the federal Food Drug and Cosmetics Act (“FDCA”) and on the ground that the goods are illegal under the CSA. Eschewing the CSA, the Board focused its review on the legality of the goods under the FDCA. Consistent with FDA guidelines, the Board concluded that the CBD oil sold by the applicant qualifies as a food that is subject to the FDCA. The Board further concluded that the CBD oil cannot be a lawful food or dietary supplement under the FDCA because CBD is an active ingredient in the drug Epidiolex, and the FDA’s general rule is that a biologic (such as CBD) cannot be marketed as food or a dietary supplement if the biologic is part of a clinical investigation. In response, the applicant attempted to invoke an exception to the FDCA by arguing that CBD was marketed as a food/dietary supplement before these clinical investigations were underway. The Board rejected this argument on the ground the evidence submitted, which consisted of conclusory statements from the Hemp Industries Association supporting the position, were self-serving and not probative. The decision is also notable for what it does not say. Specifically, the Board did not outright reject the legality of the mark on the ground it is used with goods deemed unlawful under the CSA, which would have been a much easier needle to thread given the applicant’s use of the mark with marijuana byproducts. This tends to confirm that unlawful use of a mark with one type of product does not necessarily prohibit registration of a mark with another lawful product. Additionally, the Board did not completely foreclose the possibility of registering marks for hemp-derived CBD in connection with foods or dietary supplements. To the extent there exists evidence that supports invoking the FDCA’s exception based on marketing of CBD prior to clinical trials, registration may be achievable. And the FDA could always change course in how it treats CBD products. Indeed, organizations such as the National Industrial Hemp Council have submitted comments urging the FDA to consider CBD as “generally recognized as safe” for consumption. If the FDA were to take this approach, it would almost certainly clear the path for federal registration of marks for food and dietary supplements containing CBD. We’ll continue to monitor the FDA’s treatment of CBD products and any impact it might have on the registrability of marks in this space.

On April 8, 2020, the Court of Appeals for the Federal Circuit issued a decision on an appeal from the refusal of registration of a color trademark by the Trademark Trial and Appeal Board. In this case, the applicant, Forney Industries, Inc., a maker of welding and machining tools and accessories, filed a trademark application in the U.S. Patent and Trademark Office based on use in commerce of the color mark shown above, which Forney features on its product packaging. The Examining Attorney rejected the application on the ground that the mark was not inherently distinctive – and so not immediately eligible for registration - and only registrable on the Supplemental Register (the secondary register of the USPTO for marks potentially capable of acquiring distinctiveness), or on the Principal Register with adequate evidence of acquired distinctiveness. On appeal of the Examiner’s decision by Forney, the TTAB affirmed the refusal of registration, rejecting Forney’s argument that its proposed mark was inherently distinctive product packaging trade dress that was registrable without further proof. Forney subsequently appealed the Board’s decision to the CAFC. The CAFC vacated the TTAB’s determination that the color trademark as applied for was not inherently distinctive, and remanded the case to the TTAB for further consideration. The question the TTAB must now answer is whether, as used on product packaging, a mark consisting of a combination of colors, and the design those colors create, is sufficiently indicative of the source of the goods contained in that packaging, and thus inherently distinctive. The CAFC looked to three Supreme Court decisions that are seminal to the analysis of trademark protection for trade dress, color trademarks, product design, and product packaging, and reflect the long and complicated history in this area of U.S. trademark law: Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) -- Holding that product packaging, i.e., trade dress, is inherently distinctive under the Lanham Act, although the case is silent on how to assess whether such inherent distinctiveness exists. Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995) -- Holding that color trademarks used as part of product design can meet the legal requirements for trademark registration provided that the color marks have acquired secondary meaning in the minds of consumers. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) -- Holding that product design can never be inherently distinctive because consumers do not typically associate a product design with its source, and confirming its prior ruling in Qualitex that a color trademark, whether applied to a product or its packaging, cannot be inherently distinctive. The CAFC concluded that the TTAB had erred in two ways: 1) by concluding that color-based product packaging marks (as opposed to color-based product design marks) can never be inherently distinctive marks; and 2) by suggesting that a multi-color mark must be associated with a well-defined peripheral shape or color in order to be inherently distinctive. Using these cases as guideposts, the CAFC found that the Supreme Court had not gone so far as the TTAB had with respect to the treatment of a color mark on product packaging (as distinct from use on product design). Rather, the CAFC held that color marks (and particularly multi-color product packaging marks) can in fact be inherently distinctive when used on product packaging, depending upon the character of the color design. To support its holding, the CAFC pointed to a 2016 decision of the 10th Circuit, which also involved Forney, for its finding that “the use of color in product packaging can be inherently distinctive in appropriate circumstances.” The TTAB’s job now is to assess whether Forney’s product packaging can be viewed as inherently distinctive, and thus source identifying, applying certain factors laid out in a 1977 federal case holding, Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977). These factors are: 1) whether the trade dress is a “common” basic shape or design; 2) whether it is unique or unusual in the particular field; 3) whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; and, 4) whether it is capable of creating a commercial impression distinct from the accompanying words (note: this factor is not applicable in this case). Other cases also support the proposition that the overall combination of elements will determine whether product packaging identifies the products as originating with a known source, and that a color combination used in conjunction with a particular geometric pattern can be a valid trademark. Will Forney’s color trademark on it product packaging ultimately be found to be inherently distinctive? We will keep you informed of the TTAB’s final holding.

    In 2005, Christian Faith Fellowship Church, a Chicago-based church group, filed two trademark applications for the mark ADD A ZERO for use on clothing, including shirts and caps that they later sold to raise money for charity. One application was for a standard character word mark and the other application was a stylized version of the phrase shown below. Both applications reported a first use date in the summer of 2005 and matured to registration in 2006. In 2009, adidas AG filed a trademark application for the mark ADIZERO for use on footwear, shirts, jackets, and other apparel. Adidas uses the ADIZERO mark on a collection of lightweight athletic shoes and related products and reported a first use date in December of 2005. The application was refused due to a likelihood of confusion with the Church’s ADD A ZERO marks. Determined to secure the rights in the mark, Adidas moved to cancel the Church’s registrations on the grounds that (1) the Church failed to show sufficient “use in commerce” required for a use-based application for registration; (2) the Church had abandoned the marks by failing to use them in commerce after obtaining the registrations; and (3) the phrase ADD A ZERO was an informative phrase rather than an indicator of source and therefore fails to function as a trademark. In the first go-round at the TTAB in 2015, the Board agreed with Adidas’ first argument and cancelled both of the Church’s registrations. According to the Board, federal trademark rights stem from Congress’ power to regulate interstate commerce, and the “use in commerce” required to obtain a federal trademark registration must be interstate commerce. The Church primarily used the ADD A ZERO phrase as “a prophetic word spoken to the congregation” to encourage charitable giving. However, t-shirts and other apparel bearing the ADD A ZERO phrase and stylized mark were available for purchase at the Church’s bookstore, and the Church was able to show that one resident of Wisconsin purchased two hats for $38. The TTAB found that this single sale was not sufficient to establish an interstate “use in commerce” and cancelled both of the Church’s applications under Adidas’ first theory. The Church appealed the TTAB’s decision to the Court of Appeals for the Federal Circuit. The Federal Circuit applied Supreme Court precedent, finding that the Church’s single sale of two hats is “quintessentially economic” that if “taken in the aggregate would cause a substantial effect on interstate commerce.” The Federal Circuit went even further, holding that the Church need not show actual proof that its conduct affected interstate commerce, just that the conduct is in a class that affects interstate commerce. The appellate court thus reversed as to Adidas’ first theory and remanded to the TTAB to address the remaining issues of abandonment and failure to function as a trademark. Considering abandonment on remand, the TTAB reasoned that if the single sale transaction of two shirts for $38 is sufficient use in commerce to register a trademark, the same minimal or de minimis sale must be sufficient to overcome an inference of abandonment. The TTAB found no three-year period where the Church made zero sales of products bearing the ADD A ZERO phrase or stylized mark without intent to resume use. There was a four year period where no sales of products bearing the mark were made, but the Church was able to show that the non-use was excusable due to remodeling and that sales had resumed afterwards in the Church’s online store. As such, neither the ADD A ZERO word mark nor the ADD A ZERO stylized mark had been abandoned. The standard articulated in this case appears to set a very low bar of use required to avoid abandonment of a registered trademark rights, so long as the sale of products bearing the mark – however limited – are bona fide economic transactions in commerce. The TTAB’s decision here is non-precedential, but the Federal Circuit’s decision relating to initial registration is binding on the TTAB. It will be interesting to see whether subsequent TTAB decisions apply the same standard articulated in this case. The TTAB then considered each mark independently to adjudicate the failure to function issue. A mark fails to function as a trademark if the public would perceive it as merely conveying information about goods or services rather than as an indication of a single source of goods or services. Adidas presented evidence of several charitable organizations using some version of ADD A ZERO to encourage donors to give more money. As an example, charities often use some form of the sentiment: “determine how much you can afford to donate, and then add a zero to that amount.” The TTAB held that the ADD A ZERO slogan is a general fundraising term used to convey enthusiasm and support for fundraising causes and consumers would not view it as being uniquely associated with the Church. Therefore, the ADD A ZERO word mark does not function as a trademark and the TTAB cancelled the registration. The ADD A ZERO stylized mark, however, was held to be a “specific combination, placement and shading of the wording and design elements” that create a unitary, distinct mark. Despite the informational nature of the slogan, the three-dimensional unitary design creates a distinct commercial impression in the minds of consumers. The TTAB therefore held that it does function as a trademark and denied the claim for cancellation of this registration. Because the parties are in this for the long run, it will be interesting to see if the ADD A ZERO case makes a return trip to the Court of Appeals for the Federal Circuit. The TMCA previously reported on LeBron James’ IT’S TACO TUESDAY application and Cardi B’s OKURR application, both of which were denied for failure to function as a trademark. Like those cases, the ADD A ZERO case demonstrates the obstacles to obtaining trademark registration protection for trademarks that are likely to be perceived as common phrases or informational matter.

Two recent decisions from the Western District of North Carolina in Winestore Holdings LLC v. Justin Vineyards & Winery LLC provide a tasting of the requirements for bringing a declaratory judgment action for non-infringement of a trademark in federal court. The Court in Winestore held that sending an alleged trademark infringer a communication that is less than a firm demand to cease and desist did not create a justiciable case or controversy, even when followed by the filing of an opposition proceeding against an application to register the mark at issue. Justin Vineyards & Winery LLC is a California-based retailer of wine that distributes wine throughout the United States and owns a federal registration for the mark “OVERLOOK” for wine. Winestore Holdings LLC operates a chain of wine retail stores in North Carolina and distributes wine nationally through its website. Winestore filed a trademark application for the term “OVERBROOK” in 2015, also for use on wine, and began using the mark in April 2016, including on a full-bodied, astringent Overbrook Cabernet. https://winestore-online.com/wines/detail/509454 In April 2017, Justin sent Winestore an email stating that the OVERBROOK mark sought to be registered “is too similar to [Justin’s] OVERLOOK trademark and its use could be interpreted as intending to trade off of the goodwill” associated with Justin’s wines. The email further indicated that using OVERBROOK “may constitute trademark infringement, false designation of origin and unfair competition” and “may also dilute” the OVERLOOK mark. Finally, the email urged Winestore to contact Justin’s counsel, stating that “Justin prefers to settle matters amicably where possible.” (emphases added). Winestore sued Justin on June 14, 2017, seeking a declaratory judgment that its use of OVERBROOK does not violate any federal or state trademark rights. Winestore relied solely on the email from Justin as the basis for the lawsuit, arguing that the email showed a justiciable controversy between the parties that was both immediate and real. The Court found this argument to be corked. Unlike a cease and desist letter that definitively demands a cessation of use of the mark in dispute, the email did not show that Justin was willing or prepared to sue Winestore and therefore did not create a justiciable controversy. While this first case was pending, Justin filed a Notice of Opposition against Winestore’s OVERBROOK application. Because there must be a justiciable controversy before the filing date of the complaint, the Court held that the Opposition did nothing to change its analysis. Under these circumstances, the email, by itself, did not create a justiciable controversy and the Court granted Justin’s motion to dismiss without prejudice. Three weeks later, Winestore filed a second action in federal court, again seeking a declaration that its use of OVERBROOK does not infringe or dilute Justin’s OVERLOOK trademark. The Court again dismissed the case, holding that the filing of a Notice of Opposition that objects to the use and registration of a mark “is insufficient, without more, to establish an actual controversy between the parties.” The email that was the focus of the Court’s prior decision did nothing to change the analysis “for the reasons stated in the Court’s earlier decision.” In a prior TMCA post on this topic involving a New York federal court decision in Classic Liquor Importers, Ltd v. Spirits International, B.V., we reported that a single cease and desist letter did create a justiciable controversy. And as the second decision in Winestore noted, there are a number of precedents in which the filing of an opposition proceeding was sufficient to find a case or controversy for purposes of exercising declaratory judgment jurisdiction. How can these cases be reconciled? A lot depends on the “totality of the circumstances” and in particular, the exact language used in a cease and desist letter and in a Notice of Opposition or Petition for Cancellation, if one is filed. The email in the Winestore case was couched in conditional language, like “may constitute” and “could be,” and urged Winestore to negotiate with Justin. While the Court stated that a communication need not include “explicit threats or demands” to be considered a justiciable controversy, the Court characterized the language as “modal verbs” that did not indicate an immediate or real controversy. To create a justiciable controversy, according to this Court, a communication to an alleged infringer must include language that is more absolute or should identify specific activities of the alleged infringer and show the trademark holder’s “preparedness and willingness” to enforce its rights. The precise language used in a Notice of Opposition matters as well. The Notice of Opposition in Winestore alleged that consumers are “likely to be led to believe that wine or related goods bearing the OVERBROOK Mark emanate from or are . . . affiliated with [Justin]” but did not use infringement language or assert the existence of actual confusion. Thus, the Court in Winestore was able to distinguish a California district court case, in which the filing of a notice of opposition supported the exercise of declaratory judgment jurisdiction because “by invoking the language of trademark infringement, the opposition created a reasonable apprehension of litigation in plaintiff, and thus, was sufficient to establish an actual controversy.” Alternatively, even if a notice of opposition does not use language that conveys an accusation of infringement, it may create a justiciable controversy if accompanied by a clear demand to cease using a mark or a threat to commence litigation. In Winestore, neither the content of the email nor the language used in the Notice of Opposition was sufficient to create a justiciable controversy. As the Court concluded, “a single TTAB opposition that objects to use of a mark, in addition to registration, is insufficient, without more, to establish an actual controversy between the parties. A single TTAB opposition simply does not present a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” For now, Winestore will have to barrel this case, aging it into full-bodied controversy. The Court didn’t like the mouth-feel of the first case or the end-note of the second case; perhaps the Court will have the palate for a third. Trademark owners should take note. If you want to avoid a declaratory judgment action, communications with an adverse party should avoid accusations of infringement, definitive demands to cease use of a mark, and threats of legal action. Instead, a communication should rely on hypothetical or conditional language, and should make it clear that the trademark owner is open to and would prefer to negotiate an amicable resolution.