Category: Trademark Law

SCOTUS Rules in Favor of THE SLANTS Trademark

In a landmark trademark law ruling, the Supreme Court of the United States held in Matal v. Tam that the Lanham Act’s disparagement clause is facially unconstitutional under the First Amendment’s Free Speech Clause. This case will have significant implications for other case, such as the series of cases addressing the registrability of the mark REDSKINS for an NFL football team. At issue in Matal v. Tam was application of 15 U. S. C. §1052(a) to Simon Tam’s application for registration of the mark THE SLANTS for “entertainment in the nature of live performances by a musical band.” Section 1052(a), also known as the disparagement clause, provides in relevant part that a trademark may not be registered if it:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. . .”

Simon Tam formed an Asian-American dance-rock band The Slants. The band’s name was allegedly chosen as a way to “reclaim” the term and drain its denigrating force as a derogatory term for Asian persons. However, when Tam filed an application with the United States Patent and Trademark Office to register THE SLANTS as a trademark, registration was refused on the alleged basis that the mark is disparaging. According to the examining trademark attorney, THE SLANTS is disparaging because the “likely meaning of “THE SLANTS” [is] a negative term regarding the shape of the eyes of certain persons of Asian descent.”

Tam argued in response that “[f]undamentally, Applicant’s response is that in contrast to all disparagement-based refusals to register cited by the Examining Attorney, the applied-for mark “THE SLANTS” has meanings other than the disparaging meaning that is the Examining Attorney deemed “likely,” the word “slant” being a common English word.”

In the end, the examining trademark attorney, obviously, did not agree. This case has a lengthy history, but there were several back-and-forth exchanges between the examining attorney and Tam’s counsel. After a final refusal was issued by the examining attorney, Tam appealed to the U.S. Trademark Trial and Appeal Board (TTAB). But the TTAB affirmed the examining attorney, and the TTAB decision was also appealed to the U.S. Court of Appeals for the Federal Circuit. However, in a surprising turn of events, an en banc Federal Circuit found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause.

On further appeal, the U.S. Supreme Court ruled 8-0 in favor of Tam’s right to register his mark THE SLANTS. Arguments in support of the disparagement clause suggested that it “encourage[es] racial tolerance and protect[s] the privacy and welfare of individuals.” Judge Alito responded that:

“But no matter how the point is phrased, its unmistakable thrust is this: The Government has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”

The holding in Matal v. Tam will have a significant impact on trademark prosecution practice before the USPTO. As noted above, it will also have a significant impact on the series of cases seeking to invalidate trademark registrations for the REDSKINS mark held by the well-known NFL professional football team. In view of the Supreme Court decision, one would expect that the REDSKINS NFL football team should prevail in preserving its registrations for the REDSKINS trademark.

Dell EMC’s Confidential Use of Brand Name Not Enough to Secure Trademark Rights

The intricacies of trademark law at the intersection of where trademark rights arise under common law and where trademark rights are secured through federal registration can lead to some interesting water cooler conversations – at least for trademark attorneys. Trademark rights under common law arise primarily through the use of a mark in commerce in connection with goods or services. Trademark rights and legal presumptions secured through trademark registration are generally given a priority date, once secured, as of the date the trademark registration application was filed. However, common law trademark rights arising prior to registration of a mark can prevail over the registration so long as they are also prior to common law rights of the mark secured by the registration. Starting to sound a little complicated?

This gets even more complicated when one considers issues relating to the geographic scope of common law rights and concurrent use. For example, if a trademark owner has senior rights in a trademark but has only established use in a certain geographic area, the trademark rights may be limited to that geographic area under common law. If the trademark owner secures a federal registration for the mark, then by virtue of the registration it will also receive a legal presumption that those rights extend throughout the entire geographic region of the United States. If no registration is secured, however, then a subsequent junior user of the mark who registers the same mark in the same class may be able to secure rights in all other geographic regions of the United States and restrict the senior user to the limited geographic region established by its common law rights. The extent of the prior user’s trademark rights can depend on the amount of actual use in commerce.

Dell EMC was recently reminded that they type of use matters when it comes to trademark rights. Not only does the geographic scope matter, but how public and notorious your use of the mark is matters. In 2015, EMC, a data storage company later acquired by Dell, started describing its new product as “Unity” in over 80 presentations to up to 100 customers, partners, and potential customers. EMC began shipping beta versions of its Unity product as well. The kicker, though, is that all of this activity was done under confidentiality agreements.

However, despite the confidentiality agreements, a Nexsan employee inadvertently overheard discussions at a bar about EMC’s plans for a new “Unity” product. A few days later, Nexsan filed two trademark applications with the USPTO for the UNITY mark. These were “intent-to-use” applications – meaning Nexsan had not yet used the UNITY mark. Once Nexsan did start using the UNITY mark, EMC’s attorneys sent threatening letters claiming Nexsan needed to cease and desist its use of UNITY. So, Nexsan sued EMC.

Probably to the surprise of EMC, the court held that “EMC has not carried its burden to establish prior use, and thus Nexsan has priority to the “Unity” mark based on its intent-to-use applications.” So, even though EMC’s first use of the UNITY mark pre-dated Nexsan’s first use of the UNITY mark, and even though EMC’s first use of the UNITY mark predated Nexsan’s filing of its “intent-to-use” trademark applications, Nexsan prevailed.

Interestingly enough, had EMC simply filed a single intent-to-use trademark application for UNITY before doing all of its presentation on the new product, it could have quickly and easily secured its senior rights and would have avoided the legal action or at least would have more likely prevailed in the case. This is a good example of why early trademark filings can be advantageous and worth the relatively small investment. Trademark law can be tricky. If you have trademarks you haven’t registered, strongly consider retaining a good trademark attorney to secure registrations.

Havana Club Trademark

Florida Lawmakers Hoping Trump Will Help with Havana Club Trademark Dispute

As President Obama attempted to normalize relations with Cuba toward the end of his presidency, a byproduct was the renewal of a contested trademark registration on Havana Club by Cubaexport, an agency of the Cuban government. Florida lawmakers are now hoping that a more US-centric Trump administration can help them roll this back.

The Havana Club trademark has a long and complicated history. At its heart, Havana Club is a valuable rum brand. The trademark has been registered since the mid-1970s in the US by Cubaexport, which is run by the Cuban government. Control of the brand in the US has been disputed however, by the popular rum manufacturer, Bacardi. Bacardi claims that it acquired the Havana Club brand from the Archebala family in Cuba in 1997 and that any rights to the brand obtained by the Cuban government were obtained illegitimately through confiscation. Bacardi claims that the Cuban government illegally confiscated the Archebala rum business, and the Havana Club brand, after Fidel Castro took power in 1959. Bacardi wants the US government to strip Cubaexport of its trademark registration and grant the rights to Bacardi.

After the Obama administration pushed for Cuban normalization, Cubaexport was able to renew its trademark registration on Havana Club in January of 2016, much to the dismay of Bacardi. Now, Florida lawmakers are pushing to get the trademark rights for Bacardi. 25 Florida Congressional representatives issued a letter to the departments of State and Treasury regarding their 2016 decision asking them to revise it and reexamine the Omnibus Appropriation Acts of 1998, which stipulates that the Office for Foreign Assets Control should investigate whether the intellectual property was fraudulently obtained by confiscation. The State Department argues that its decision to grant Cubaexport a license to renew its trademark registration fell in line with the new Cuban foreign policy under President Obama.

It will be interesting to see how the Trump Administration will deal with this political trademark issue. The Trump message has been America and American businesses first. This Havana Club trademark issue will be a definitive measure to see where the Trump White House stands.

The Havana Club trademark dispute is another example of the intricacies of securing trademark rights in a global economy. If you need assistance securing your trademark rights or have questions about the trademark process, please contact the trademark attorneys at Trademark Access. Let our experience protect you.

coke zero trademark

Coke Wins Partial Victory Against Dr. Pepper in “Zero” Trademark Dispute

Coca-Cola is a giant in the beverage industry. If you said everyone in the world knows what Coke is, it may actually be true and not just an exaggeration. With such recognition and substantial marketing resources behind its zero calorie drinks like “Coke Zero”, “Sprite Zero” and “Powerade Zero”. Coke has finally convinced the United States Patent and Trademark Office (USPTO) to allow its trademark registration on the term “zero” in conjunction with its beverages. This grant comes in spite of Dr. Pepper’s protests that the term is a generic reference to zero-calorie drinks. The decision is limited however, and leaves the door open for Dr. Pepper to also register its “zero” products and pushes any future disputes into federal court.

Continue reading “Coke Wins Partial Victory Against Dr. Pepper in “Zero” Trademark Dispute”

Amazon Wins in Federal Court

Federal Appeals Court Sides With Amazon in Trademark Case

A panel of three federal appeals judges had second thoughts recently, changing its mind on whether Amazon would have to face trial over a trademark dispute with a watchmaker. The change in course was most likely spurred by a desire to avoid re-opening the debate over the internet “initial interest confusion” doctrine. While this decision provides relief to Amazon, watchmaker Multi Time Machine (Multi Time) probably feels a little gypped.

This flip-flopping by the panel relates to the issue of “initial interest confusion” which arises from the trademark claim brought against Amazon. Multi Time claims go something like this: Amazon returns suggestions for competitors’ watches when a customer searches for a particular model of watch made by Multi Time that Amazon does not carry. By suggesting competitors’ watches, it may lead to consumers falsely assuming these other products are from or associated with Multi Time. In doing so, Amazon allegedly uses Multi Time’s own brand equity to steer customers away from Multi Time and toward competitors, thus capitalizing on the good will of Multi Time.

Initial Interest Confusion type of trademark infringement does not require a likelihood of confusion at the time goods are purchase, only that consumers are initially confused in order to get their attention leading to a sale. There is a well-known analogy to explain Initial Interest Confusion that was proffered in Brookfield v West Coast Entertainment. In that case, the court proposed a hypothetical regarding competing video stores. Blockbuster Video puts a billboard on the highway advertising a West Coast Video (its competitor) at an exit. However, there is no West Coast Video at this exit, but there is a Blockbuster Video. A consumer exits the freeway in hopes of finding a West Coast Video store, but instead finds the Blockbuster Video store. The consumer obviously sees that there is no West Coast Video store and that there is only a Blockbuster Video. The consumer decides to purchase from Blockbuster Video as a suitable replacement. Even though the there is no confusion at the time of purchase, Blockbuster is still capitalizing on West Coast Video’s trademark and misappropriating West Coast Video’s goodwill.

Multi Time challenges Amazon’s redirect of customers to competitors based off of a search for genuine Multi Time watches. Multi Time believes that Amazon should return a search indicating there are no matches instead of suggesting competitors’ products. In response, Amazon contends that there is no likelihood of consumer confusion, the keystone of trademark law, because its search results are labeled with the name and manufacturer of each item and include a picture. Allegedly, reasonable consumers who are familiar with online shopping would realize that there is no connection between the other suggested products and Multi Time’s MTM watches.

It’s interesting that the panel was so quick to reverse itself. With this flip-flopping of decisions, it’s easy to see that there is still some confusion about the correct trademark outcome here. The internet has created some new and unique trademark issues and sometimes it is a struggle to identify exactly how they should be handled. Ultimately, utilizing the likelihood of confusion standard gives good guidance to whether there really is a trademark issue or not. Would a reasonably prudent consumer be confused as to the source of the goods offered? If not, there is no likelihood of consumer confusion. That is what the panel of judges decided in this case the second time around.

Amazon isn’t the only company who has faced this type of challenge. Google and Yahoo were victorious in similar suits. With the explosion of internet keyword searches, initial interest confusion has become a hotly contested issue.

Article written by DA Johnson. Connect with DA on

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Dirty Fight Over Trademarks in Utah

Soda shops where you can order a “dirty” Diet Coke have become quite the rage in Utah as of late. Drinking a “dirty” soda may sound unappealing to the uninformed, but all “dirty” means in the soda context is the addition of flavored syrup shots (typically coconut and sometime also lime). As custom soda shops grow in popularity, one shop claims it coined the term “dirty” and with a federal trademark registration in hand, wants the other shops to stop using it.

The Utah soda flavor craze allegedly traces its roots back to St. George, Utah, where a soda shop called Swig began selling flavor shot enhanced sodas. When Swig opened for business in 2010, it quickly became a hit. Its “dirty” flavors, brightly colored straws and pebbled ice resonated with customers. In 2013, Swig looked to protect its signature brand by filing a trademark application on “dirty” in the class of “concentrates and syrups for making soft drinks.” The trademark registered in 2014.

As the business took off, others took notice. Similar soda shops began springing up in northern Utah. One in particular, Sodalicious, had (allegedly) a very familiar feel and used “dirty” to describe flavor enhancements for its drinks. It also allegedly used brightly colored straws and menu boards very reminiscent of Swig’s. This (alleged) imitation was quickly detected by Swig.

Swig’s CEO said that he tried for several months to get Sodalicious to stop using the term “dirty” to describe its drinks, stating that if Sodalicious stopped using the term, Swig would not take any further action. Apparently, Sodalicious wasn’t interested in making any changes and continued to use the term. This forced Swig to further escalate the matter.

Swig filed a lawsuit against Sodalicious alleging that Sodalicious infringed its trademark registration on “dirty” and also infringed on its trade dress, claiming that the look of Sodalcious’ shop is nearly identical to Swig’s shops, even down to the brightly colored straws and cups with bubbles on them. The look and feel of a product can be protected through trade dress, so long as the look is not a functional element of a product. If there is a likelihood of consumer confusion between the aesthetic elements of two products or services, trade dress infringement can be found. Swig believes that Sodalicous is in violation of both its trade dress and trademark protection.

This case of success breeding imitation is all too common. Copycat companies abound in most industries, particularly those with a low cost for entering the market. While it is not illegal to copy a successful business model, elements of a brand, like logos, signature names, and product design can be protected via trademark and trade dress. The lawsuit is in its early stages and could potentially settle before ever going to trial. But if you are a fan of the “dirty” soda, you will want to keep abreast of this fight.

Article written by DA Johnson. Connect with DA on

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Guitarist playing an electric guitar. Shallow depth of field. Grunge filter.

Federal Appeals Court to Review “The Slants” Trademark Application

Portland, Oregon based rock band “The Slants” isn’t planning to change its name anytime soon. It just wants the Trademark Office to recognize its chosen name and grant it a trademark registration. After determining that “The Slants” is a disparaging term and rejecting its application, the Trademark Office has stuck to its guns despite multiple attempts by the band to appeal the decision. The band now rests its hopes in a panel of federal appeals judges, hoping they will overrule the U.S Patent and Trademark Office. The question of whether free speech rights should trump trademark law’s prohibition on immoral, scandalous or disparaging marks will now go before this group. Continue reading “Federal Appeals Court to Review “The Slants” Trademark Application”

Did Macy’s Allow Their Trademark to Go Abandoned

A few decades ago there used to be a lot more variety in department stores. Robinson’s-May, Marshall Field’s, and Meier and Frank used to dot the commercial landscape. But when these stores, along with several others, were acquired by Macy’s in 2005 and subsequently rebranded with the Macy’s masthead and brand name, the overall diversity of department stores took a hit. Now, after several years of dormancy, an enterprising individual is attempting to bring back some of these nostalgic brands and commercially exploit them, selling merchandise bearing the names and logos of these brands on his website. Macy’s has responded by suing for trademark infringement, claiming it is still the owner of these brands, but by shelving them for years, has Macy’s abandoned its trademark registration rights?

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“Je Suis Charlie” Trademark Aftermath

Je Suis CharlieFollowing a growing trend of attempts to trademark social rallying cries, two trademark applications have been submitted on “Je Suis Charlie”. Je Suis Charlie was a common slogan of support at the rallies and in social media in reference to the Charlie Hebdo attacks in Paris. It quickly became an international statement of solidarity against violence and terrorism. Like other social movement slogans before it, trademark applications quickly followed its viral spread. But like those other slogans, the U.S. Patent and Trademark Office is unlikely to grant a trademark registration for Je Suis Charlie.

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Activision First Amendment Rights Trump Trademark Infringement Claim

Call_of_Duty_GhostsActivision’s Call of Duty video game franchise has been incredibly successful. It is a highly detailed, military style game that attempts to deliver a realistic combat experience by incorporating real weapons and equipment. This realism includes the ability to customize a player’s combat uniform, right down to the patches worn by the combatant. Such extreme realism enhances the player’s experience, but one company claims that Activision’s use of its patch is a little too real and infringes on its trademark registration. But a U.S. District Court in California doesn’t see it this way.

Continue reading “Activision First Amendment Rights Trump Trademark Infringement Claim”