Sunday, July 20, 2014

The “Redskins” Trade Mark Cancellation

In June 2014, the US Trademark Trial and Appeal Board (TTAB) cancelled the registrations for the American Football club Washington Redskins’ “REDSKIN” trade mark, based on section 2 (a) of the Trademark Act (15 U.S.C. Section 1052(a)). The Washington Redskins’ name has been the subject of recent controversy due to the team’s name originating from an offensive term used for Native Americans. There had been a swell of voices pushing for the team to change their name.

The controversy dates back to 1992, when various groups first voiced their outrage about the name, prompting a call for the cancellation of the “Redskins” and “Redskinettes” (the football club’s name for their cheerleading team) marks.

The proceedings themselves were convoluted. The TTAB first issued a trade mark cancellation order in 1999, which was then overturned by the US District Court for the District of Columbia, a decision that was in turn upheld by the US Court of Appeals based on an ancillary laches argument. What followed was a refilling of the cancellation proceedings, which lead to the June 2014 cancellation order from the TTAB.

To know the practical implications of the football club’s loss of trade mark protection for the “Redskins” term, it is important to understand that the TTAB only has the authority to cancel a trade mark if there is valid cause at the time of registration. They cannot prevent the Washington Redskins from using both the Redskins and Redskinettes brands.

Additionally, the cancellation of the registration for the trade marks seems to be a minor setback for the football club. The club no longer has the advantage of federal registration for the marks, but in the U.S. marks that are consistently used and regularly enforced – like the Washington Redskins – are protectable as unregistered trade marks.

What does this mean for the average business? Be careful of cultural sensitivities when choosing a brand. Words and logos that have derogatory or culturally unpopular meanings can cause havoc with a brand launch or brand extension into a new jurisdiction.

Friday, July 18, 2014

Quixotic Tilts: Enforcing Descriptive Trade Marks

Trade mark owners who acquire highly descriptive marks through evidence of use should take care not to think that this entitles them to enforce their rights against third parties which use marks which are substantially identical. The following note is the substance of a presentation I gave to the Asian Patent Attorneys Association (Australia branch) on Friday three weeks ago, in Perth.

What are descriptive marks?

The essence of what is a descriptive mark was well-defined in an American case: Abercrombie & Fitch Company v Hunting World, Incorporated [1976] USCA2 141; 537 F 2d 4, 9-11 (2nd Cir 1976). The categories are:

(1) generic;
(2) descriptive;
(3) suggestive; and
(4) arbitrary or fanciful.

The court went on to say that generic terms can never be trade marks. Descriptive terms can, but only if they have acquired a secondary meaning. On the other hand, suggestive arbitrary or fanciful terms are inherently distinctive: Two Pesos, Inc. v Taco Cabana, Inc [1992] USSC 108; 505 US 763, 768-769. See also Gruner + Jahr USA Publishing v Meredith Corporation 991 F 2d 1072 (2nd Cir 1993).

Another US case, Big O Tire Dealers Inc v The Goodyear Tire & Rubber Company, an Ohio Corporation 408 F Supp 1219, 1243 (DC Cir 1976); affirmed [1977] USCA10 180; 561 F 2d 1365 (10th Cir 1977), elaborated upon this:

In trademark usage, words can be classified according to the degree of their distinctiveness. A ‘coined’ word is an artificial word which has no language meaning except as a trade mark. EXXON is a coined word used by an oil company.

A ‘fanciful’ word is like a coined word in that it is invented for the sole purpose of functioning as a trade mark and it differs from the coined word only in that it may bear a relationship to another word or it may be an obsolete word. FAB is a shortened version for fabulous and is a fanciful word used for detergent.

An ‘arbitrary’ word is one which is in common linguistic use but when used with the goods in issue it neither suggests nor describes any ingredient, quality or characteristic of those goods. OLD CROW for whiskey is an example of an arbitrary word.

A ‘suggestive’ word is one which suggests what the product is without actually being descriptive of it. STRONG-HOLD for threaded nails is suggestive of this superior holding power.

A merely ‘descriptive’ word is one which draws attention to the ingredients, quality or nature of the product. TENDER VITTLES as applied to cat food is descriptive.

A ‘generic’ word is one which is the language name for the product. BUTTER is the language word for butter. There can be no trademark rights in a generic term. They remain in the public domain as part of our language. The right to protection of a trademark comes from its use to identify the product."

The Court went on to say: