Blackletter

On July 3rd, the Washington Redskins announced that it would review its team name after nearly two decades of vigorously fighting legal challenges by Native Americans to keep it. Two registration cancellation actions filed in the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office[1] culminated in Pro-Football, Inc. v. Blackhorse, a decision by a federal district court in Virginia on July 8th, 2015, that the “REDSKINS” name and federally registered trademark was considered disparaging of Native Americans under Section 2(a) of the Lanham Act and therefore not eligible for federal trademark registration under U.S. trademark law. While the Redskins were appealing their registration cancellation decision to the Virginia federal appellate court, a landmark Supreme Court case, Matal v. Tam, held that the disparagement clause of Section 2(a) of the Lanham Act was unconstitutional for violating First Amendment free speech rights when it reviewed a trademark registration refusal by the USPTO of the “SLANTS” mark by an Asian-American music band. Thus, the law on which Native Americans were able to have the REDSKINS registered marks canceled was stricken, and the Redskins managed to preserve the team’s right to register its controversial marks.

Enter the force of the market, arguably more significant than the force of law, and the Redskins suddenly have a change of heart. Companies that generate revenue for the Redskins began targeting what matters most to the team – its wallet.

FedEx, which owns naming rights to the team’s stadium, announced the night before that it would exit the multimillion-dollar agreement if the team did not change its name. The Redskins were also under pressure from other big sponsors and resellers of its merchandise that featured their registered trademarks, including Amazon, Walmart, Nike, and Target, all of which stopped carrying the team’s merchandise. The monetary pressure mounted to the point where Dan Snyder, the team owner, was forced to wave the white flag. The team had maintained its controversial Redskins name since it was initially adopted in 1933. However, on Monday, the NFL’s Washington team officially announced that it would abandon its name and its 1970s-era logo, depicting the profile of a Native American man.

Following the team’s announcement that it will abandon its name, speculation on what the new name will be has run rampant, and so have new trademark applications for possible names, similar to the situation discussed in our April 23rd, 2020 blog article entitled “Everybody “COVIDS” a CORONAVIRUS Trademark Registration But It’s Not That Easy.” A review of trademark applications demonstrates that McCaulay, an Alexandria, Virginia, realtor, has attempted to register trademarks on eight different Washington-themed names, several of which have new applications filed this month.

McCaulay has received registrations for “WASHINGTON RED-TAILED HAWKS,” “WASHINGTON AMERICAN,” and “WASHINGTON FOOTBALL CLUB and he tried to register at least a couple of trademarks as early as 2014.”

McCaulay owns pending applications to register ‘WASHINGTON RED WOLVES,” WASHINGTON REDTAILS,” “WASHINGTON MONUMENTS,” “WASHINGTON VETERANS,” WASHINGTON RENEGADES GRIDIRON FOOTBALL,” and “WASHINGTON WARRIORS.” McCaulay’s trademark registrations have made him a target of many football fans who are labeling him a trademark troll. However, as our previous blog in April blog pointed out, “trolling” to own trademark registrations for marks believed to be on the verge of extraordinary popularity has been increasingly trending for some time now and is rarely successful.

After the widespread criticism of McCaulay for attempting to appropriate team names expected to be desired by the Redskins and thereby delay their renaming process – despite the Redskins’ negligence in failing to procure alternate names much earlier before being pressured to do so –McCauley has retained a sports attorney who has since sent Dan Snyder a letter stating that McCauley is not a trademark troll because “this was simply just an expensive hobby for him and he does not have any intention of holding up the Washington team’s process.”

Interestingly enough, Las Vegas sportsbooks such as Bovada, have the Red Tails, Warriors, and Monuments listed as three of the top five betting favorites for Washington’s new NFL team name. Only time will tell if McCaulay’s tactics will lead to a settlement with the team and a huge paycheck.

If you suspect that someone is squatting on trademark registrations to force a buyout before you use the name for your business, you may need to seek assistance from a trademark lawyer at Dunlap Bennett & Ludwig. There are avenues to challenge and even cancel weak trademark registrations that were only made as an impediment to someone else using the naming rights. One of our firm’s experienced trademark lawyers can help you secure the trademark you need today. Contact our team at 703-777-7319,  or email [email protected] to schedule a consultation.

  [1] The first cancellation proceeding was determined to have been invalid for having been filed after the statute of limitations. The second cancellation proceeding was filed by recently emancipated minors for whom the statute of limitations was refreshed.

https://www.dbllawyers.com/washington-redskins-trademark-registration-challenge/

Tom Dunlap sits down with Gerald LeMelle of Dunlap, Bennett & Ludwig about immigration in the time of COVID and what the new executive order means for employees and students alike. We also hear from Natalie Cressey, a Canadian student attending Boston University and how this executive order will impact her.

In the first half of 2020, several significant decisions further shaped the course of trademark law, with rulings from the Supreme Court and circuit courts impacting USPTO proceedings, as described below:

Romag Fasteners v. Fossil (U.S. Supreme Court):

In April, the U.S. Supreme Court clarified what a plaintiff in a trademark infringement suit is required to prove to be granted a defendant’s ill-gotten profits. Romag Fasteners, Inc. and Fossil, Inc. signed an agreement to use Romag’s fasteners in Fossil’s leather goods. Romag later discovered that Chinese factories producing Fossil products were using counterfeit Romag fasteners and sued Fossil for trademark infringement under 15 U.S.C. § 1125(a).

The district court relied on Second Circuit precedent and denied Romag’s request for an award of profits because the jury did not find that Fossil had acted willfully. Other circuits had also required a showing the defendant willfully infringed a plaintiff’s trademark to win a profits remedy.

The Supreme Court, faced with the question of whether that categorical rule could be reconciled with the Lanham Act’s plain language, answered negatively. The high court noted that the statute requires a showing of willfulness as a precondition to a profits award when the plaintiff proceeds under § 1125(c), which creates a cause of action for trademark dilution. However, Romag alleged and proved a violation of § 1125(a), a provision establishing a cause of action for the false or misleading use of trademarks. In cases like this, the court emphasized that “the statutory language has never required a showing of willfulness to win a defendant’s profits.”

USPTO v. Booking.com (U.S. Supreme Court):

On June 30, in a significant win for potential online trademark owners, the Supreme Court ruled that the addition of “.com” to an otherwise generic term could transform it into a protectable trademark.

A generic name—the name of a class of products or services—is ordinarily ineligible for federal trademark registration and protection. The long battle between these two parties centered on the USPTO’s conclusion that Booking.com is a generic name for online hotel-reservation services in its rejection of Booking’s request for trademark registration.

The USPTO urged the Supreme Court to adopt a bright-line rule, arguing that a generic term adorned with “.com” should always be unprotectable. However, the justices were left unpersuaded by the USPTO’s exaggerated monopoly concerns and instead adopted a more flexible approach based on consumer perception.

The court held that a term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Here, because “consumers do not in fact perceive the term ‘Booking.com’” as a generic name for online hotel-reservation services, the company was able to secure a landmark victory that will likely incentivize more online companies to apply for federal trademark protection.

Molson Coors v. Anheuser-Busch (Seventh Circuit):

Early in 2019, after Super Bowl LIII, Anheuser-Busch advertised that Bud Light is made using rice while making fun of Miller Lite and Coors Light for using corn syrup. Molson Coors responded by filing suit under 15 U.S.C. §1125, alleging that Anheuser Bush violated the Lanham Act by implying that a product made from corn syrup also contains corn syrup.

The Seventh Circuit rejected those claims, noting that Molson Coors identifies corn syrup as an ingredient in Miller Lite and Coors Lite. Although Molson Coors insisted that a list of ingredients differs from what the finished products contain, the court said that “common usage equates a product’s ingredients with its constituents” and even “some of Molson Coors’s managers testified that a beer ‘contains’ what’s on the ingredients list.” 

Because Molson Coors chose a word such as “ingredients” with multiple potential meanings, the court ruled that it “brought this problem on itself” and held that it is not false or misleading for a seller to say or imply, of a business rival, something that the rival says about itself.

https://www.dbllawyers.com/top-trademark-decisions-2020/

Today we're going to talk about the TCPA and a new ruling from the FCC. The Federal Communications Commission, the FCC has just approved two new safe harbors from liability for blocking unwanted robocalls. This is good news for consumers. As phone companies step up and try to block unwanted robocalls and illegal robocalls, this provides a safe harbor for those phone companies so that they don't get in trouble for blocking calls. That they shouldn't be blocking. The first safe harbor, which is the simplest one allows phone companies to use "reasonable analytics, including caller ID authentication information to identify and block illegal or unwanted calls from liability." The TCPA,the Telecommunications Privacy Act, prohibits robocallers from making calls to you if you don't want them, and if they don't have your consent. Consent usually has to be in writing and signed by you electronically (click to agree counts). The illegal robocalls could subject the company that's making the calls to TCPA liability. This new act gives phone companies safe harbor from lawsuit on either side, as long as they "use reasonable analytics." For example, including caller ID to identify and block illegal or unwanted calls. The second part of the act safe harbor says that "It protects providers that block call traffic from bad actor upstream voice service providers that pass illegal or unwanted calls along to other providers when those upstream providers have been notified, but failed to take action." In other words, if an upstream provider is making unwanted robocalls, the phone company, if they've been notified, that's a bad actor can stop receiving calls from that company in the phone lines for the consumer. 

Tom Dunlap sits down with Tracy Pearson and Rolando Diaz of Dunlap, Bennett & Ludwig to discuss the unique aspects of the Delaware court system. Topics include the advantages of incorporating in Delaware, local counsel in Delaware, the Delaware bar process and advice for those looking to incoporate and practice in the state.

Today, a little bit of the lighter side of law. We're going to stay away from COVID. A federal judge dismissed a putative class action over Nestle Toll Houses Premier White Morsels. What happened here? Well, plaintiff's, a class action group, brought a lawsuit saying that Nestle's Toll House Premier White Morsels didn't actually contain chocolate. And that using the words white and premier, even though the product didn't contain cocoa or cocoa derivatives was deceptive to consumers.

The district court judge said that Nestle doesn't even say the word chocolate on their label and they say Premier White Morsels and the word white alone, or morsel doesn't necessarily imply chocolate and nobody's deceived by this. 

Today, we're going to talk about COVID and coronavirus in the trademark world. Whenever there's a big news story or something that just entices the United States population, and in this case, the globe, in this case, it's coronavirus and COVID, and COVID-19, these are new terms that we've never heard before. And there's a huge misconception among the public that if you register something at the USPTO, you own it, and so there was a massive rush. I think more than 200 trademarks were filed since December 19th containing the words COVID or coronavirus. A couple problems with that, registering a trademark has to be associated with something that is sold in commerce, goods or services. Now, most of these trademark registrations are clothing registrations. So if you register something COVID and you put it on the front of a piece of clothing, that's not doing what trademarks do. That's an ornamental use of the mark. So key here, and this is just a good lesson for everybody out there, is trademarks identify the source of the goods. So the easiest way to think about it is if you look at that shirt that says COVID on the front, if it doesn't say COVID in the label, and that's not the brand of the shirt, or doesn't say the COVID Company on the bag or the COVID line of clothing, then it's not identifying the source or origin of the goods. It's an ornamental use of the trademark or brand. And so that's a mistake that was probably made in about 80% of these 200 plus new trademark applications. The other challenge they're going to face, obviously with so many trademark applications in the same space with similar names is a likelihood of confusion issue. So I suspect that of these, most of these trademark applications are going to be rejected resulting in thousands and thousands of dollars of loss to the people who filed them without looking into the whole trademark thing. My advice for today is before you file a trademark application, do your research and maybe talk to a good lawyer.

For more information check out this DBL blog: https://www.dbllawyers.com/everybody-covids-a-coronavirus-trademark-registration-but-its-not-that-easy/

Today, we're going to talk about legal issues in the COVID-19 vaccine development arena. A big challenge from a legal perspective is how can these companies get the vaccine to us? Typically when you're developing a new vaccine or anything for use inside of a human being, the FDA under the FD and C Act, the Federal Food, Drug and Cosmetics act, and the Public Health Service Act regulates the development of vaccines and anything that gets injected into your body. And there's a good reason for that and typically it takes a long time. These companies have to go through a series of clinical trials and they have to produce results to the FDA and the FDA has to come back, but there is a provision of the FD and C Act called an EUA, Emergency Use Authorization, and let's see if this happens. For the FDA to issue this EUA, which basically allows temporarily the use of an unapproved product, or an approved product for unapproved uses, the FDA has to go through the secretary of Health and Human Services. And the secretary of Health and Human Services have to first determine that there's a qualifying emergency caused by biological, chemical, radiological or nuclear. And here we've got, I think number one, biological emergency, COVID clearly. Two, the secretary of Health and Human Services has to find out that this agent can cause serious life threatening disease and the secretary then has to determine that for each product it's reasonable to believe that based on the totality of all the evidence available, that the product can treat or prevent the disease caused by this agent, in this case COVID, and that the known potential benefits outweigh the risk. Finally, that there are no other adequate and approved alternatives. So, in short, if COVID-19 is a biological qualifying emergency and the secretary of Health and Human Services finds that a company has produced something that it reasonably believes can help people, then it can issue this Emergency Use Authorization and we will get our vaccine.

Let's wait and see what companies come up with, and the FDA comes up with. Hopefully they come up with it quickly.

For more information check out this blog: https://www.dbllawyers.com/covid-19-progress-pfizer-inc-s-u-s-trials-for-coronavirus-vaccine/

Tom Dunlap speaks with Phil Schwartz, attorney at Dunlap, Bennett and Ludwig, about what steps to take, shifts to make and liabilities to expect when employer strives for re-open.  

Today we're going to talk very briefly about online conferences and the potential loss of intellectual property rights and the risks that you face.

In this new day and age of COVID-19 and Zoom conferences, people have been bombing Zoom conferences logging in when they don't have the right to, even password protected conferences get photobombed, like Zoombombed, I guess.  First, you might not always know who's in your Zoom conference. So it's a good idea offhand to ask everybody to introduce themselves and make sure that every little shiny group that's on the phone is accounted for. You know who everybody is. If you disclose something in a Zoom conference that's right now a company trade secret or one of your employees does, you could potentially lose that trade secret for good.

Second, another thing that is happening in this day and age is people are sharing things online because they can't see each other and that can include inventions. And that might mean an almost instant loss of patent rights if you happen to accidentally publish something to a third party. Be careful about what you do, know who's in your Zoom conferences, and think about using nondisclosure agreements, taking other precautions, especially in this day and age when you can't see people face-to-face as much as you'd like to.