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Category: Blog
This page is meant as a resource to our clients and to our potential clients. Nothing here should be seen a legal advice but merely our opinions on legal topics.
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Washington Redskins’ Federal Trademark Cancelled by USPTO
The United States Patent and Trademark Office has cancelled the trademark registration for the Washington Redskins, stating that the name of the team is “disparaging to Native Americans.” This was the second time that the case was filed against the Washington Redskins on behalf of 5 Native Americans. This decision affects 6 trademarks, which contain the word “Redskin.” The decisions comes based on the law which does not allow trademarks to be registered if the trademark “may disparage” groups or individuals and “bring them into contempt or disrepute.”
The decision by the USPTO does not necessarily mean that the Redskins will need to re-brand themselves with a new team name or logo, but it will certainly affect how it can control and produce merchandise. Since the NFL will no longer be protected by the same laws as if they had a registered trademark, it will certainly affect how they can bring suits against people who use their logos and names without proper authorization from the NFL.
Attorneys for both sides have spoken, and the attorney representing the team stated that “this ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo.” The attorney for the team is confident that they will prevail on appeal and have a federal district court reverse the Board decision, as they have done in the past. The lead attorney for the Native Americans stated “this victory was a long time coming and reflects the hard work of many attorneys at our firm.”
Over the years, there has been much controversy over whether or not the Redskins should change their name. Recently, many senators and NFL players have requested that the name be changed, however, it has not been changed. Native American groups have been fighting for years for the team to change their name, but, the team owner, Dan Snyder believes that the name and logo honor Native Americans and has stated that they would never change the name of the team. It will be interesting to see where this legal battle ends up and how the word “Redskin” will be maintained by the team.
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Dumb Starbucks: A Parody or Not?
Earlier this month a new coffee shop opened in Los Angeles called Dumb Starbucks. The outer appearance of the shop is an exact replica of a Starbucks coffee shop except the word “Dumb” appears in front of Starbucks. Inside, everything is also an exact replica of a Starbucks with the word “dumb” inserted in front. The cups have the Dumb Starbucks logo and the menu items are dumb as well. Canadian comic Nathan Felder is the owner of the shop and announced plans to open a second location in New York. Naturally, Starbucks is not amused and has pledged to protect its trademark. They have stated that they are “evaluating next steps” and have made it clear that “they cannot use our name, which is a protected trademark.”
Dumb Starbucks has potentially infringed multiple forms of trademark protection. Starbucks is a protected word mark and using Dumb Starbucks in commerce can confuse consumers or dilute the Starbucks brand. Similarly, the logo for Starbucks is also protected but Dumb Starbucks copied it and inserted the word “dumb.” Since Dumb Starbucks also copied the colors of a Starbucks shop it may have infringed upon trade dress protection, the outside appearance of the coffee shops which help consumers identify they are Starbucks.
In the Dumb Starbucks store, a notice was posted claiming the store was protected by parody law and fair use. Chances are Starbucks and Dumb Starbucks will not head to court (litigation is expensive!) but if they do, it is hard to determine who will emerge as a winner. To be a parody, a court must find that an offending mark both invokes the original mark but also differentiates itself by communicating satire, ridicule, joking, or amusement. The more famous the original mark is, the more likely a judge may find parody. However, there is no guarantee Dumb Starbucks will be considered a parody in the court of law. Starbucks knows that litigation is lengthy, costly and not always predictable, thus they will likely negotiate with Mr. Felder before instituting a legal action, but only time will tell.
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Football, Video Games & The Law
Football video games have existed for over 25 years and have continued to grow in sophistication. Player avatars have evolved from generic pixels to fully developed representations. Electronic Arts (EA), the video games publisher with an exclusive license for NFL games, now records player information like height and weight to create as realistic an experience as possible. Along with these technological advances have come concerns about the use of player likenesses in both professional and amateur football games. The 9th Circuit recently decided a case regarding player likenesses in both the Madden NFL and NCAA video games. The court ruled differently in each case and a quick look at the cases sheds light on how these claims will be handled in the future.
Brown vs. Electronic Arts featured Cleveland Browns running back Jim Brown disputing the use of his likeness in EA’s Madden NFL series. While Jim Brown stopped playing football in 1965, EA included him as part of the 1965 Cleveland Browns team in some versions of the Madden series. His avatar did not include his name but was physically similar to him and simulated his style of play. In later games EA changed the number of Brown’s avatar to make it a little more dissimilar to him.
The other case was In re NCAA Student-Athlete Name & Likeness Licensing Litigation. The plaintiff in this case was Samuel Keller. A quarterback from Arizona State University who transferred to the University of Nebraska. His in-game avatar did not feature his name but did have the same “height, weight, skin tone, hair color, hair style, handedness, home state, play style (pocket passer), visor preference, facial features, and school year as Keller.” In re NCAA Student-Athlete Name & Likeness Licensing Litig., 724 F.3d 1268, 1272 (9th Cir. 2013).
Both of these cases had similar trademark and likeness claims, but it was procedural decisions which caused different rulings at the 9th Circuit level. Both cases started in federal district courts in California. They both made claims under California’s right to publicity law and under the Lanham Act, which establishes federal trademark rights. However, Brown asserted supplemental jurisdiction over his state law claims while Keller asserted federal diversity jurisdiction. This meant if Brown’s Lanham Act claims were dismissed the 9th Circuit could not weigh the state law claims but Keller’s would still be ok.
The Court used the Rogers test to weigh Brown’s Lanham Act claim. Under the Rogers test, a likeness claim loses unless the use of the likeness has no artistic relevance. If it does, the likeness claim still fails if the work does not explicitly mislead the public as to the public figure’s endorsement of the work. In Brown and NCAA, the court ruled the realistic likeness of the players is very important to EA’s artistic goal of creating a video game experience as close to real life as possible. Additionally, EA proved they never led consumers to believe Brown endorsed any of the Madden games. Having failed the Rogers test, Brown’s Lanham claim was dismissed and therefore the rest of his case.
In In re NCAA, the court turned its attention to Keller’s right of publicity claim. The justices stated that unlike the Lanham Act, the right of publicity does not seek to prevent the risk of confusion in consumers but instead is concerned with a public figure’s right to control their image. From this perspective, the court ruled the NCAA avatar was too identical to Keller’s actual likeness. It rejected EA’s 1st Amendment claim and refused to use the Rogers test in a case of right of publicity. Thus Keller’s lawsuit was allowed to proceed.
As a result of the NCAA ruling, EA has settled all pending cases with college players. On September 27th, 2013, it subsequently dropped its plans to release a new game in the franchise and the future of college football games is now in question.
If you have any trademark issues or are defending trademark claims, you can contact Stone Law at 732-444-6303 or leave us a message on our website.
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Trademark Infringement in The Dark Knight
Trademark infringement suits happen every day and Hollywood is no exception. On May 16th of 2013, the United States District Court for the Northern District of Indiana decided a lawsuit against Warner Bros. for the Clean Slate program in The Dark Knight Rises. For those who may not remember, in the movie the Clean Slate program that could erase a person’s entire history. This of course is not to be confused with Tony Stark’s Clean Slate program to destroy his Iron Man suits.
Warner Bros. was sued by Fortres Grand Corporation. Fortres Grand started selling a real life Clean Slate in 2000 and registered a trademark for it in 2001. The nonfictional program protects computer networks by erasing all evidence of user activity so later users see none of the previous user’s activity. Fortres Grand sued Warner Bros. for trademark infringement for not only the movie but two websites Warner Bros. made for Rykin Data, the fictitious company which developed Clean Slate in the movie. Fortres Grand claimed Warner Bros. committed trademark infringement by using a fictional product that was similar to their real product. Warner Bros. responded with a motion to dismiss the case.
The Court analyzed Fortres Grand’s reverse confusion theory that Warner Bros. saturated the market with a trademark similar to the one owned by Fortres Grand and consumers will be deceived into thinking Clean Slate is a Warner Bros. product, not Fortres Grand’s. The Court pointed out a fatal flaw in the argument – the product Warner Bros. is advertising is not the fictional software, but the movie itself. Fortres Grand’s case becomes very weak since the analysis for consumer confusion heavily relies upon comparing the two actual products.
In his opinion, Chief Judge Simon noted there is little case law on point but they all reached the same conclusion. In Ocean Bio–Chem, Inc. v. Turner Network Television, Inc. the Southern District of Florida ruled actual products should be used for consumer confusion analysis. The case involved the made-for-TV movie Incident at Dark River. In the movie a kid dies from pollution caused by a fictional company called Starbrite Batteries. Ocean Bio-Chem owned a real company called Star Brite Distributing and brought suit. The Court concluded it must compare the ultimate products, not the fictional company within the movie.
Another related case was Davis v. Walt Disney Co. in the Eighth Circuit. This case involved another made-for-TV movie called Up, Up, and Away. The villains were an environmental software company called Earth Protectors and the plaintiff was the president of Earth Protector, Inc. Again the Court insisted only real products could be used for a consumer confusion analysis.
The last case Chief Judge Simon brings up is Caterpillar Inc. v. Walt Disney Co. from the Central District of Illinois. Caterpillar tried to prevent the release of the home-video movie George of the Jungle 2 because Caterpillar’s farm equipment was in the movie. The Court denied Caterpillar’s request because “it appears unlikely … that any consumer would be more likely to buy or watch George 2 because of any mistaken belief that Caterpillar sponsored this movie.” Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913, 920 (C.D. Ill. 2003).
Chief Judge Simon followed the spirit of these cases and ruled it was not plausible consumer could be deceived into believing the fictional Clean Slate was connected to Fortres Grand nor the movie Dark Knight Rises for “obvious” reasons. “Any consumer going online or into a store looking to buy the ‘clean slate’ software mentioned in The Dark Knight Rises would quickly find that they are unable to do so because it is not a real product.” Fortres Grand Corp. v. Warner Bros. Entm’t Inc., 2013 WL 2156318 (N.D. Ind. May 16, 2013). He also points out no one looking for the real Clean Slate program is likely to mistakenly buy a ticket to The Dark Knight Rises either.
For now at least it looks like movies can include whatever fake products they like as far as trademarks are concerned. It doesn’t matter if the names are identical as long as the product or company is fictional and stays that way. To see the full text of the opinion in this case see Fortres Grand Corp. v. Warner Bros. Entm’t Inc., 2013 WL 2156318 (N.D. Ind. May 16, 2013).
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Is ‘Redskins’ Too Offensive to be Trademarked?
The Trademark Trial and Appeals Board, the TTAB, has recently heard a case to determine if the Washington Redskins name is disparaging, and therefore should be stripped of its protected trademark status. This has been a long disputed issue. The case was organized by Suzan Shown Harjo, president of the advocacy group the Morning Star Institute. The lead plaintiff is Amanda Blackhorse, a young Native American, who believes the term ‘redskin’ to be a racial slur. Harjo was famously the lead plaintiff on Pro-Football, Inc. v. Harjo, a series of cases which was first brought in 1992, and wasn’t fully decided until the Supreme Court decided not to hear the case in 2009. see Harjo v. Pro-Football Inc., 1994 TTAB LEXIS 9, 30 U.S.P.Q.2d 1828, 1831 (TTAB 1994); Harjo v. Pro Football Inc., 50 U.S.P.Q. 2d 1705, 1749 (TTAB 1999); Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005); Pro-Football, Inc. v. Harjo, 567 F. Supp. 2d 46 (D.D.C. 2008) ; Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009); certiorari denied by Harjo v. Pro-Football, 2009 U.S. LEXIS 8206 (U.S., Nov. 16, 2009). That 17 year long series of cases was ultimately decided on a technicality, the doctrine of laches, and the courts had not determined if ‘redskins’ is offensive. With the current group of plaintiffs being young enough to have satisfied the doctrine of laches, it is hoped that this case will finally determine the issue, although this case is likely to be appealed multiple times regardless of the decision.
The current case, Blackhorse v. Pro-Football, Inc., illustrates the principle codified in the Lanham Act at 15 U.S.C. §1052(a), that trademarks which depict “immoral, deceptive, or scandalous matter” or “matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols” shall not be registered. §1064(3) of the Lanham Act allows for the cancellation of a trademark which violates §1052(a). Examples of trademarks which were denied as scandalous or disparaging include: “Bullshit” as mark for attache cases, handbags, purses, belts, and wallets, In re Tinseltown, Inc. 212 USPQ 863, (1981, TMT App Bd), “Bubby Trap” for brassieres, In re Runsdorf 171 USPQ 443, (1971, TMT App Bd), “Khoran” for alcoholic beverages, In re Lebanese Arak Corp. 94 USPQ2d 1215, (2010, TMT App Bd), “1-800-JACK-OFF” for an adult phone service, In re Blvd. Entm’t 334 F3d 1336, (2003, CA FC), “Only a breast in the mouth is better than a leg in the hand” for restaurant services Bromberg v Carmel Self Service, Inc. 198 USPQ 176. (1978, TMT App Bd), and “Black Tail” for entertainment magazines, Boswell v Mavety Media Group 52 USPQ2d 1600, (1999, TMT App Bd). Examples of ethnic slurs which were held not to be disparaging include: “JAP” for clothing, In re Condas S. A. 188 USPQ 544, (1975, TMT App Bd), and “The Memphis Mafia” used for entertainment services, Order Sons of Italy in Am. v Memphis Mafia, Inc. 52 USPQ2d 1364, (1999, TMT App Bd).
Amanda Blackhorse has presented quite a bit of evidence of the offensiveness of the phrase. This includes: national polls of Native Americans and the public at large of the connotations of the phrase, the dictionary definitions which define the phrase as offensive, academic studies detailing the derogatory usage of the phrase in popular media prior to the 1980’s, and the manner in which the team has used the phrase. Whether this evidence is sufficient is a matter for the TTAB. But, should the TTAB, and the appellate courts who are likely to hear the case afterward, strip the Redskins of the trademark, this would not mean that the team would be forced to change their name. This would only prevent the team from stopping others from using the trademark. In actuality, this would mean that anyone could begin selling Washington Redskins apparel without the consent of the team. This would likely mean less income in apparel sales, but not prohibitively so. Mostly, a decision for Blackhorse would be a moral victory. This would be the federal government officially stating that this name is offensive. This would be far more public embarrassing for the team, and their owner Dan Snyder, than it would be financially disruptive.
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Loss of Trademark Rights: Embracing Negative Trademarks
Red Sox fans, Mets fans, and baseball fans of any team other than the Yankees will tell you that the Yankees are evil. Now, so have a panel of federal judges. Last month, the Yankees successfully blocked a trademark application by Evil Enterprises for the phrase “Baseball’s Evil Empire”. Evil Enterprises initially applied for a trademark back in July of 2008, and it’s been the source of a five year fight between the baseball club and the t-shirt makers since. The phrase originated back in 2002 when an executive of the Boston Red Sox first used it to disparage the Yankees. Since then, it has been popularly used in articles, sports columns, and TV highlight shows as a label for the Yankees.
The Yankees have never used the phrase themselves, however, and that is why this is such an interesting trademark case. The team argued that they have “implicitly embraced” the “Evil Empire” theme as a “badge of honor” by playing music from Star Wars during their home games. The team does not necessarily want to make t-shirts with the phrase on it, yet they still wish to block others from doing so. The Yankees had not registered the trademark for itself. But, nonetheless, they now own the trademark. This is because there is a likelihood of confusion and that people now associate the term with the Yankees. If the Trademark Trials and Appeals Board, the TTAB, were to allow Evil Enterprises to have the mark, then consumers would think that their products were official Yankees apparel. This confusion would lead to a dilution of the Yankees brand, since the phrase has a negative connotation. Evil Enterprises claimed that its mark was a “spoof and parody.” A primary test of trademark infringement is whether there is a likelihood of confusion as to the source of goods and services. Here, the TTAB held that this standard was met.
But, this rationale only explains why Evil Enterprises did not win the exclusive rights to the phrase. Understanding why the TTAB gave those rights to the Yankees, rather than leaving the phrase in the public domain, is far more complex. The purpose of trademarks is to identify the source of goods and services. It matters far less who invented the idea, the important factor is who is using the trademark. Where a trademark comes from does not matter. But, instead, where the trademark goes and who and what it identifies will dictate registration. To determine that, this case hinged on the ‘public use doctrine’. The public use doctrine provides that the public’s use of a term to describe a company can confer trademark rights. The TTAB explained that “[i]t is well-settled that in order to establish rights in a mark, a party need not have actually used a mark if the public nevertheless associates the mark with the goods or services of that party.” Some examples of the public use doctrine include: Coca-Cola Co.‘s mark COKE, Apple’s mark MAC for its Macintosh computers, American Express’s mark AMEX, McDonald’s mark Mickey D’s, and Volkswagen’s mark BUG for its Beetle’s. None of these companies had used those phrases at the time at which they were trademarked. But, since the public so closely identified them with these marks, they were granted exclusive ownership. “The Public Use doctrine states that abbreviations or nicknames used only by the public can give rise to protectable trademark rights to the owner of a mark which the public has modified.” George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383, 403 (4th Cir. 2009). However, the cases cited by the TTAB panel all properly apply the doctrine to the public’s adoption of shorthand or abbreviations for a trademark owner’s mark. In George & Co. LLC v. Imagination Entertainment, the Plaintiff sought to apply the public use doctrine in the reverse. Id, at 383. The Plaintiff had a dice game titled “LCR”, which stands for “Left Center Right.” Id, at 390. They claimed that the Defendant’s mark, LEFT CENTER RIGHT, was infringing upon its LCR mark. Id, at 392. The Plaintiff argued that the public use doctrine applied so that LCR’s elongated form “LEFT CENTER RIGHT” would be covered. Id, at 403.
The Fourth Circuit held that the public use doctrine is limited to where the formal mark is well-known and the nickname “adds distinctiveness” to the formal mark. Previously, that ruling is was thought to only include where the public abbreviates or nicknames a mark, not the other way around. Here, the Yankees have greatly expanded this doctrine, since “Evil Empire” is in no way an abbreviation of Yankees. While the TTAB’s opinion is not a precedent, so it will in no way change the law, it does indicate how a judge can interpret broadly the public use doctrine.
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Trademark Abandonment: When Enforcement Conflicts With Other Obligations
Texas A&M quarterback Johnny Manziel won the Heisman Trophy last year as a freshman, and is widely considered one of the best football players in the country. His nickname, Johnny Football is very popular in College Station, Texas. Fans of the Aggies are clamoring for t-shirts that read Johnny Football. But, the freshman phenom is forbidden by NCAA rules from profiting. If Johnny Football were to set up a t-shirt company and start selling apparel, he would lose his scholarship, under NCAA regulations. But, if he were to allow others to make Johnny Football t-shirts, and fail to stop them, he could lose the trademark forever.
This paradox was solved by forming a corporation, JMAN2 Enterprises. JMAN2 has registered the trademarks of “Johnny Football” and “Johnny Manziel”. JMAN2 has begun sending cease and desist letters to any entrepreneurs marketing his name or likeness, and even filing suit against those who do not. This is an awkward combination of policing others from using a mark, and yet not using it themselves. Johnny Football may inspire a roar of the crowd inside Kyle Field, but in the metaphorical marketplace, the name inspires a deafening silence.
This is the awkward truce between the NCAA rules and trademark law. The NCAA does not wish its schools to engage in a bidding war over top players, but rather insists upon a spirit of amateurism. To this end, they’ve set up a byzantine system of regulations to ensure schools do not allow their players to profit while playing.
Trademark law, however, does not distinguish between amateurs and professionals. The law will not take pity on a intellectual property holder who abandons their trademark in favor of a college scholarship. If the trademark holder does not police their mark, then a court will find it to have been abandoned. A finding of abandonment implies that the mark is in the public domain and the owner no longer has any rights to the mark. If the mark was abandoned through non-use a subsequent user may claim it after three years when the likelihood of confusion is lessened. §1127 of the Lanham Act states clearly that three years of non-use will be the principle evidence of abandonment. The trademark of Johnny Football would like have belonged to Johnny Manziel as soon as he became famous and t-shirts were printed up. This is true regardless of federal registration.
The NFL will not let him enter until after next season due to their draft policies. So, if Johnny Football wishes to play football in America, he will have to do so under the NCAA regulations for at least one more year. Counting last season, that will make two years for which he has not used his trademark. If he wishes to forego the NFL draft and play for his junior and/or senior years, a common enough occurrence among elite players, he will have exceeded the three years of non-use as required by the Lanham Act for a finding of abandonment. Therefore, the only option, for the player who knows how to run an option, is to thoroughly police his trademark while not profiting off of it. The silence in the marketplace is the only outcome for the two incompatible worlds of superstar athlete and college student.
Although, it is also worthy of note that Johnny Manziel is allowed under NCAA regulations to keep any awards from lawsuits which he would settle or win. This is because lawsuits are not profits. They remedies from a lawsuit are there to make the plaintiff whole, and to recoup losses. Cynics, however, have wondered if this will encourage a school’s boosters to intentionally infringe upon a player’s trademarks, then settle the resulting law suit for hundreds of thousands of dollars, as an end run around the NCAA regulations. The NCAA has said colluding to do so would be a violation, but has yet to define what evidence of collusion would be necessary. Nonetheless, we can look for the uneasy truce between NCAA regulations and intellectual property law to get far more complex in the coming decade.