USPTO Extends Deadline to be Included in 2010 Trademark Expo

The US Patent and Trademark Office ("USPTO") has extended the deadline to file to have a trademark registration exhibited in the 2010 National Trademark Expo until August 16, 2010.

The Expo will include themed displays, exhibitors’ booths, costumed characters and much more. Exhibit themes may include, but are not limited to, celebrity trademarks, trademarks identifying products often subject to counterfeit, unusual trademarks (sound, scent, color, configurations, motion marks, etc.), certification trademarks, trademarks commonly misused as a generic term, the breadth of different types of trademarks used by one source, the evolution of certain trademarks, people behind the names of trademarks, 100-year-old trademarks, and interesting stories about trademarks and their creation.

All client trademark owners are encouraged to apply for the expo.  A link to the free application form is located here.http://www.uspto.gov/trademarks/notices/tm_expo_2010.jsp

Contact us if you would like any additional information about the expo at 1-877-445-5440 or on the web.

The North Face Sues the South Butt for Trademark Infringement

The North Face Apparel Company has sued the South Butt LLC for trademark infringement in Missouri.  This links to the complaint.  South Butt will argue that its mark is a parody of the North Face, while North Face is alleging multiple claims against South Butt including trademark infringement/likelihood of confusion, dilution, misrepresentation, inducement to infringe, passing off and related state law claims.

 versus 

At this point, based on the buzz around the complaint, South Butt is getting more web traffic than it ever has at www.thesouthbutt.com.  If The North Face loses the lawsuit and South Butt is allowed to continue the use of its mark, The North Face will have created increased business for South Butt that probably would not have existed had it not filed the complaint in the first place.

In Jorsache v. Hogg Wyld ltd, (LARDASHE jeans as a parody of JORDACHE jeans) the 10th Circuit held that LARDASHE did not dilute the JORDACHE mark and instead it tended to increase the public identification of plaintiff's mark with plaintiff and did not create an "unwholesome, unsavory or degrading association" context.  However, the LARDASHE case involved nearly identical marks, not nearly opposite marks.

Apple's New Mouse Will be no Mighty Mouse!

Last week rumors surfaced that Apple would release a new computer mouse.  The new mouse was to be named MIGHTY MOUSE but on Tuesday of this week, Men & Machine were awarded a Trademark Registration by the US Patent and Trademark Office for the mark MIGHTY MOUSE.

Previously, Apple had obtained a license from Walt Disney to use the mark MIGHTY MOUSE because it was using the mark on different goods than the famous Disney cartoon character.

The Men & Machine registration however is for computer peripherals and will block Apple's use.  It remains to be seen if Apple will conjure up a new trade mark to use with its new mouse or will purchase a license or assignment from Men & Machine.
  

REDSKINS Trademark Dispute May Go to US Supreme Court

Attorneys for the petitioners who filed a complaint against the use of the term REDSKINS for the Washington pro football team filed a Petition for Writ of Certiorari with the US Supreme Court on Monday of this week.
In 1992, Suzan Harjo led seven Native Americans in petitioning the Trademark Trial and Appeal Board (“TTAB”) to cancel six trademark registrations used by the Washington Redskins and owned by Pro-Football, Inc. The TTAB granted the petition, and the owner appealed to the United States District Court for the District of Columbia, which overturned the cancellation on two grounds. The District Court found that the TTAB lacked substantial evidence to find disparagement, and that the petition was barred by laches – an equitable legal theory which prohibits a party from waiting so long to file a claim that it becomes unfair to the other party. The Redskins had registered their marks as early as 1967 – when the youngest of the complainants was one year old. The complainants then appealed this decision to the DC Court of Appeals.
The Court of Appeals upheld the District Court’s holding that laches was a valid defense in a disparagement case. It vacated the District Court’s application of laches to one of the complainants, however, and remanded the case for further consideration on that issue only. It retained jurisdiction over the rest of the case (including the question of whether the TTAB’s decision had been supported by substantial evidence), pending the District Court’s resolution of the laches issue.
The Native Americans claimed that laches should not apply to a disparagement claim at all, because the law specifies that such a claim can be brought “at any time”. The Court rejected this, noting that other language in the same statute specifically permits equitable defenses, and laches is such a defense. The Court then considered the applicability of laches to the case at hand. Because the defense depends on the laxity of the plaintiff in pursuing his rights – which can not effectively be pursued until the plaintiff has reached the age of majority – the Court found that the defense could not be applied against the one plaintiff who had been a minor until recently, and therefore that the plaintiff had not slept on his rights.
The Court acknowledged the assertion by the owner that this finding would leave trademarks disparaging a group with a constantly expanding population “perpetually at risk”: The fact that Pro-Football may never have security in its trademark registrations stems from Congress’s decision not to set a statute of limitations and instead to authorize petitions for cancellation based on disparagement “at any time”.
The case was remanded to the United States District Court for the District of Columbia for further proceedings. In July 2008, that court found that the doctrine of laches was still applicable to the particular plaintiffs in this case, because the youngest plaintiff had turned 18 eight years before the case was filed.
The Writ of Certiorari will concern the question of whether a disparagement claim is barred by laches or if it may be brought at any time. A response to the Writ is due by October 16, 2009. Of the approximately five thousand cases a year for which review by the US Supreme Court is sought, fewer than 5 % are granted Certiorari. If the case is denied Cert, the decision below will stand, and the REDSKINS trademark will not be impacted.

US Court of Appeals for the Federal Circuit Rules the Trademark Board Erroneously Lowered the Fraud Standard in Trademark Cases to Simple Negligence

On August 31, 2009 the US Court of Appeals for the Federal Circuit (“CAFC”) ruled in In Re Bose Corporation, 2008-1448 (CAFC) that “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO [US Patent and Trademark Office].”

During the opposition that was tried by the Trademark Trial and Appeal Board (“TTAB”), which was filed by Bose, for its mark WAVE (TM Reg. No. 1,633,789) against the mark HEXAWAVE, the owner of HEXAWAVE counterclaimed that Bose had committed fraud in the renewal registration Under Sections 8 & 9 because the mark had not been used on all of the goods in the WAVE registration. The general counsel for Bose included the goods audio tape recorders and players, even though those goods were not being sold in commerce. However, the goods were being repaired and the general counsel believed that transporting repaired goods having the WAVE trademark constituted use in commerce. The TTAB held that the general counsel’s belief was not reasonable, and that the use statement in Section 8/9 renewal was material. Therefore, the TTAB concluded that the general counsel had committed fraud on the US Patent and Trademark Office (“PTO”) and cancelled the entire WAVE trademark.

The CAFC found that the TTAB had “consistently and correctly acknowledged that there is ‘a material legal distinction between a ‘false’ representation and a ‘fraudulent’ one, the latter involving an intent to deceive, whereas the former may be occasioned by a misunderstanding, an inadvertence, a mere negligent omission, or the like.” Kemin Indus., Inc. v. Watkins Prods., Inc., 192 USPQ 327, 329 (T.T.A.B. 1976). In other words, deception must be willful to constitute fraud. Smith Int’l, 209 USPQ at 1043.
Ultimately, the CAFC concluded that by equating “should have known” of the falsity with a subjective intent, the TTAB erroneously lowered the fraud standard to a simple negligence standard. In re Bose Corporation, 2008-1448 at 6.

Sound Trademark Dispute: Ride the Ducks v. Bay Quackers

In a recent sound trademark dispute, Bay Quackers, a San Francisco tour company featuring an amphibious truck in which tourists “quack” with a kazoo, violates the registered trademark of competitor Ride the Ducks. Based in Norcross, Ga., Ride the Ducks operates amphibious sightseeing tours around the country See the full article at http://www.abajournal.com/magazine/quackers Any indication of source or origen can be protected with a trademark including not only sounds, but scents.  Harley Davidson has attempted to obtain a sound trademark for its exhaust sound and the application was approved by the Trademark Examiner in April of 1995.  The mark was opposed by the major motorcycle manufacturers and was later abandoned.