Trademark law has seen substantial developments in 2019 and 2020, with four major cases in the United States and Europe rising to the top. The U.S. Supreme Court (SCOTUS) issued two of those decisions, the most recent being especially significant because the court has not opined on the topic of trademark genericism in nearly 100 years. The other SCOTUS case dealt with the hotly contested topic of awarding profits obtained through innocent (unknowing) trademark infringement.
After decades of legal battles in which they ultimately succeeded in maintaining the legal right to federal trademark registration of the “REDSKINS” moniker—through the separate efforts of an Asian band by the name of “The Slants”—Washington, D.C.’s National Football League (NFL) team finally succumbed to pressure to change their name. Faced with the immediate prospect of losing $45 million from a stadium naming rights deal with Federal Express, on July 13, 2020, the team announced it would have a new name and logo. Still to come: the new name and logo.
Is imitation really the highest form of flattery? Nintendo might not think so after seeing dbrand’s latest Switch skin set. The Nintendo Switch has become extremely popular amidst social distancing, work from home, and stay at home requirements during the COVID-19 pandemic. The console’s combination of handheld and traditional features, along with its wide variety of games, appeals to a large audience and provides an engaging way to spend time at home.
One of a company’s most valuable assets is its trademark – its name, logo, color or slogan. A trademark or service mark establishes your company as the source of certain products (trademark) or services (service mark). This helps establish your company brand so consumers can easily recognize it. As we consider international trademark registration, there are some important lessons we can learn from the Duke and Duchess of Sussex, who tried to register a SUSSEX ROYAL trademark.
Whenever I wanted my grandmother to reveal a deep secret—such as what I was getting for my birthday—she would reply by asking, “Does Gimbels tell Macy’s?” That was when the Gimbels and Macy’s department stores battled for market share like colossi astride Herald Square. Gimbels is long gone from the New York metropolitan area retail market—as are, from all levels of pricing—Alexander’s, B. Altman and Company, Bamberger’s, Bonwit Teller, Galleries Lafayette, E. J. Korvette, the Lord & Taylor flagship on Fifth Avenue, Stern’s, Takashimaya, and Two Guys, among others. And to that list we can now add Barneys. As I never tire of advising our clients, trademarks are the awards that the law bestows upon a well-operated brand, and brand—in fashion and luxury, and in retailing of all but the most elemental variety—is about story. That is, the brand has to tell a story that is clear and identifiable to the customer—a story so compelling that he or she will elect to participate in it by making purchases. Enter an Hermès and you are sharing in a gentrified vision of France as authentic to the XVIe arrondissement as to a canter on horseback through the fields of the Loire. Walk down the block to Salvatore Ferragamo and inhabit that world of Florentine grace and worldliness that has guided the West since the Renaissance. Maintaining a distinct brand image is often challenging for a manufacturer/design company, especially if it operates its own boutiques. But it can by even more demanding for a large, multi-brand retailer, especially now.
The Lanham Act’s ban on federal registration of “immoral or scandalous” trademarks is unconstitutional under the First Amendment. So held the United States Supreme Court on Monday, resoundingly, if a bit uneasily, in Iancu v. Brunetti. It’s a good result, and one that the trademark bar and the free speech community had broadly urged, including Debevoise’s client, the International Trademark Association (INTA), in an amicus brief that we had the privilege of writing.
Trademarks must be continuously used to be enforceable. If you stop using them, they are lost. This also means you should have evidence to prove use of your trademark. If your use is challenged, you will have to prove that you’ve been using your trademark, and you need the correct evidence. This just happened to McDonalds in Europe. Even though they were using the BIG MAC trademark, they didn’t have the correct evidence to prove that they had continuously used that trademark for the previous five years, and they lost their European registration. A truly shocking result.
While all eyes are on China and how it plans to tackle bad faith infringers, the United States Patent and Trademark Office (USPTO) also is cleaning house, implementing stricter rules for acquiring and maintaining trademark registrations. Unlike other countries, the U.S. is a “first to use” country, not “first to register.” This means, generally speaking and with some exceptions, you acquire ownership by being the first to use a trademark, not the first to register. You acquire these automatic common law rights through use, not registration. Why register then? Aside from being able to use that nifty registration symbol and obtain additional remedies in an infringement suit, you also expand your trademark rights nationally. Suddenly, with a registration in hand, your common law rights in, say, California and Nevada expand presumptively (and over time conclusively) to all 50 states. This is why registrations are so valuable, and this is why the USPTO’s initiatives to remove fraudulently obtained and dead marks have such a significant impact on brand conscious clients. Over the last two years, the USPTO has launched several pilot programs and initiatives.
While readers of this website will be well aware of the damaging impact of “patent troll” rhetoric that has reached the highest levels of American political discourse, many players in the trademark space have been shining a light on the issue of “trademark trolls” in recent years. Trademark trolls can take several different forms, according to a December 2015 article published in the INTA Bulletin. Generally, a troll will register a trademark, often viewed as a frivolous mark by others in the industry, and then demand licensing payment, threaten litigation or issue serial takedowns on e-commerce platforms through assertion of the mark. These can include companies that file for domestic trademarks for a mark owned by a foreign company that hasn’t yet entered that market or entities, including individuals, who claim trademark use and registration to threaten infringement or issue takedowns against other entities, even when their use of the mark is in unrelated areas. Last spring, the word “troll” was thrown around once or twice to describe Faleena Hopkins, a romance novel writer who was asserting her trademark rights to the use of the word “Cocky” against other writers using that word in their book titles. Last June, changes to Canadian trademark laws that shifted requirements for trademark registration from first-to-use to first-to-file had sparked some fears that trademark trolling could result.
In most industries, federal trademark registration is seen as an attractive form of protection, because federal registration converts what would normally be localized common law trademark rights into national rights covering all 50 states. However, businesses in which the products or services involve the manufacture, distribution or consumption of cannabis—aka “plant-touching” businesses—face an uphill battle seeking to build and protect their brands. This is because all “plant-touching” products and services are still considered illegal at the federal level under the Controlled Substances Act (CSA), which prohibits, among other things, manufacturing, distributing, dispensing or possessing certain controlled substances, including cannabis and cannabis-based preparations, and makes it unlawful to sell drug paraphernalia. Accordingly, the USPTO’s current policy is to refuse all trademark applications for cannabis-based goods and services as illegal under the CSA.
A trademark audit is a review of a brand owner’s current trademark portfolio to ensure that the brand owner’s trademark usage and trademark holdings are sufficient, comprehensive, and accurate. Good practices requires that a trademark audit be conducted yearly, or any time an existing trademark portfolio is acquired, even if there has already been IP due diligence. The primary goal of conducting a trademark audit is to ensure that there are no deficiencies in protection.
Although running an early-stage startup is exhilarating, do not let your brand name protection be swallowed up by all the excitement. Neglecting to properly secure a trademark for your company and products can lead to expensive consequences in the future, such as being forced to rebrand just as you’re gaining traction or being unable to stop infringers from using your brand name. Below are 5 of the most common mistakes businesses make with trademarks and what you can do to avoid them.
Consumers driving the Wellness industry seek more than just a clothing company, a new workout, or a healthy alternative to the standard lunchtime sandwich – they value brand integrity and want to build relationships with brands that align with the lifestyle they aspire towards. This means Wellness companies should have a solid brand protection strategy in place from the outset. Ideally one that is capable of scaling with your international ambitions, and which can help prioritize spending, save resources and attract investors. Early-stage checks on trademarks, designs and domain names are essential to ensure your business can trade with confidence.
Your business name is how people will identify with your goods and services, so you want to have one identity that is all your own. Simple enough really, at least in concept, but making a mistake at the selection stage will prove costly… It would seem virtually impossible to operate in the modern world without a website for your business, and soon it will be equally incomprehensible not to be using social media platforms in one way or another. The power of social media is only growing, and smart businesses are trying to position themselves to take advantage of the phenomenon. If you are serious about your business endeavors you too need to get in the social media game, and if you don’t already have a website for goodness sake get moving!
Not all trademarks are created equal. While every state allows you to obtain a trademark registration, a federal trademark registration provides the greatest rights. This is because when you obtain a United States federal trademark your rights will exist throughout the country, and not just in one particular geographic locality. With a state trademark you obtain rights to your immediate geographical area only, not the entire state, which is an important consideration… This does not, however, mean that state trademarks are useless. It does mean that you should not only obtain a state trademark.