Tag Archives: trademarks

Changes to Trademark Rules of Practice

The October 26, 2009 Federal Register published a final rule effective December 28, 2009 that includes changes to Trademark Rules of Practice (37 CFR Part 2). The changes are in: (1) Requirements for Signature of Documents, (2) Recognition of Representatives, and (3) Establishing and Changing the Correspondence Address.

The purpose is to “codify and clarify current practice.” The Office “reworded and/or reorganized the rules for clarity, and added headings to facilitate navigation through the rules.”

The changes include:

1. Section 2.17(d) is amended to provide that the owner of an application or registration may appoint an attorney through the Trademark Electronic Application System (“TEAS”) for up to twenty applications or registrations per TEAS form that have the identical owner or attorney (consistent with TMEP § 602.01(a));

2. Section 2.17(g)(1) is added to provide that the Office considers a power of attorney to end with respect to a pending application when the mark is registered, when the ownership changes, or when the application is abandoned (consistent with TMEP § 601.01);

3. Section 2.18(b)(2) is added to provide that a request to change the correspondence address must be made in writing, signed by the applicant, registrant, or party to a proceeding, someone with legal authority to bind the applicant, registrant, or party, or a qualified practitioner, in accordance with § 2.193(e)(9) (consistent with TMEP §§ 603.02 and 603.02(a));

4. Section 2.19(a) is revised to clarify the requirements for revocation of a power of attorney; and

5. Section 2.19(b) is revised to set forth the requirements for filing a request to withdraw as attorney.

 

Trademark Use on Twitter and Facebook

The use of a third party’s trademark on social networking sites such as Twitter and Facebook has recently been a topic of interest for trademark owners.

Twitter
On September 15, 2009, ONEOK, Inc., a publicly traded Fortune 500 company in the energy industry, filed suit against Twitter, Inc. for trademark infringement and contributory infringement of ONEOK’s registered trademarks in the District Court for the Northern District of Oklahoma.

ONEOK is the owner of U.S. Trademark Registration Number 2,985,073 for the word mark “ONEOK” and a Diamond design. ONEOK is also the owner of U.S. Trademark Registration Number 3,655,886 for a Diamond design. In the Complaint, ONEOK alleges the following:
1. Twitter has assigned the user name “ONEOK” to a party other than ONEOK, Inc.;
2. The current ONEOK Twitter account holder has generated Tweets on at least two occasions containing information regarding ONEOK, Inc., the ONEOK trademark name and the Diamond design;
3. The Tweets have the appearance of being an official statement issued by ONEOK and have been passed off to unsuspecting recipients as official statements by ONEOK on Twitter;
4. Twitter has provided the means by which the Twitter account holder generated the postings; and
5. Twitter has refused to transfer control of the ONEOK Twitter account to ONEOK, Inc.

ONEOK claims that if the situation is allowed to persist, it will cause irreparable damage to ONEOK’s reputation in the investor community and in the energy industry.

Twitter’s current Terms of Use do not provide a means for submitting a notice of trademark infringement. The Terms only provide a means for submitting a notice of copyright infringement.

Facebook
On June 13, 2009, Facebook allowed users to personalize a Facebook URL by selecting a unique “username” (www.facebook.com/username) which could include a trademark, brand name, or personal name. Companies could protect their registered trademark from a potential infringer registering their trademark as a username by filing out a “Preventing the Registration of a Username” form. The trademark owner was required to provide their trademark and registration number on the form.

Facebook’s current Terms of Use provide a means for submitting a notice of copyright infringement and non-copyright intellectual property infringement. Facebook allows users to provide a “Notice of Intellectual Property Infringement” by filling out an “automated IP infringement form” online if the user believes their non-copyright intellectual property rights are being infringed.

– Katie Cooper

Federal Circuit raises bar for Fraud on Trademark Office

dreamstime_7137244In numerous recent cases the Trademark Trial and Appeal Board has seemed to be lowering the standard for what it considered Fraud against the Trademark Office. The Court of Appeals for the Federal Circuit has reversed that trend with its August 31, 2009 decision in Bose Corp. v. Hexawave, Inc., Fed. Cir., No. 2008-1448, 8/31/009.

The dispute arose over the “WAVE” trademark registration for radios, clock radios, audio tape recorders and players, portable radio and cassette recording combinations, compact stereo systems and portable compact disc players. Bose opposed the registration of “HEXAWAVE” in connection with compound semi-conductor devices consisting of an integrated circuit; microwave monolithic integrated circuit; modules, namely power modules for wireless communication; transistor; tuner; mixer; amplifier; downconverter; transceiver; transmitter; receiver; detectors, namely radio frequency detectors; radio frequency switch; [and] antenna by Hexawave, Inc. Hexawave, Inc. filed a counterclaim and asked for cancellation of Bose registrations.

The fraud alleged by Hexawave, Inc. was due to the fact that Bose had filed a combined section 8 & 9 Renewal that stated that the mark was still in use with audio tape recorders and players when Bose had stopped manufacturing audio tape recorders and players and the general counsel knew that when he signed the renewal. The general counsel testified that he thought the mark was still in use because the audio tape recorders and players were still being repaired by Bose and transported to customers.

The Trademark Trial and Appeal Board (“TTAB”) held that repairing and shipping to customers was not sufficient use to maintain the registration and that the general counsel’s belief was unreasonable. The TTAB also found that the statement in the Renewal was material and therefore Bose committed Fraud on the Trademark Office and ordered cancellation of the Bose WAVE registration.

The TTAB held, “[a] trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading.”

The Federal Circuit reversed the decision:

By equating “should have known” of the falsity with a subjective intent, the Board erroneously lowered the fraud standard to a simple negligence standard. See Ileto v. Glock, Inc., 565 F.3d 1126, 1155 (9th Cir. 2009) (“Knowing conduct thus stands in contrast to negligent conduct, which typically requires only that the defendant knew or should have known each of the facts that made his act or omission unlawful. . . .”); see also Davis v. Monroe County Bd. of Educ., 526 U.S. 629, 642 (1999) (explaining that in Gebser v. Lago Vista Independent School District, 524 U.S. 274 (1998), the Court “declined the invitation to impose liability under what amounted to a negligence standard—holding the district liable for its failure to react to teacher-student harassment of which it knew or should have known. Rather, [the Court] concluded that the district could be liable for damages only where the district itself intentionally acted in clear violation of Title IX by remaining deliberately indifferent to acts of teacher-student harassment of which it had actual knowledge.”).

We have previously stated that “[m]ere negligence is not sufficient to infer fraud or dishonesty.” Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1582 (Fed. Cir. 1991). We even held that “a finding that particular conduct amounts to ‘gross negligence’ does not of itself justify an inference of intent to deceive.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc). The principle that the standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, even though announced in patent inequitable conduct cases, applies with equal force to trademark fraud cases. After all, an allegation of fraud in a trademark case, as in any other case, should not be taken lightly. San Juan Prods., 849 F.2d at 474 (quoting Anheuser-Busch, Inc. v. Bavarian Brewing Co., 264 F.2d 88, 92 (6th Cir. 1959)). Thus, we hold that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

Subjective intent to deceive, however difficult it may be to prove, is an indispensable element in the analysis. Of course, “because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence. But such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008). When drawing an inference of intent, “the involved conduct, viewed in light of all the evidence . . . must indicate sufficient culpability to require a finding of intent to deceive.” Kingsdown, 863 F.2d at 876.

By equating “should have known” of the falsity with a subjective intent, the Board erroneously lowered the fraud standard to a simple negligence standard. See Ileto v. Glock, Inc., 565 F.3d 1126, 1155 (9th Cir. 2009) (“Knowing conduct thus stands in contrast to negligent conduct, which typically requires only that the defendant knew or should have known each of the facts that made his act or omission unlawful. . . .”); see also Davis v. Monroe County Bd. of Educ., 526 U.S. 629, 642 (1999) (explaining that in Gebser v. Lago Vista Independent School District, 524 U.S. 274 (1998), the Court “declined the invitation to impose liability under what amounted to a negligence standard—holding the district liable for its failure to react to teacher-student harassment of which it knew or should have known. Rather, [the Court] concluded that the district could be liable for damages only where the district itself intentionally acted in clear violation of Title IX by remaining deliberately indifferent to acts of teacher-student harassment of which it had actual knowledge.”).

We have previously stated that “[m]ere negligence is not sufficient to infer fraud or dishonesty.” Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1582 (Fed. Cir. 1991). We even held that “a finding that particular conduct amounts to ‘gross negligence’ does not of itself justify an inference of intent to deceive.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc). The principle that the standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, even though announced in patent inequitable conduct cases, applies with equal force to trademark fraud cases. After all, an allegation of fraud in a trademark case, as in any other case, should not be taken lightly. San Juan Prods., 849 F.2d at 474 (quoting Anheuser-Busch, Inc. v. Bavarian Brewing Co., 264 F.2d 88, 92 (6th Cir. 1959)). Thus, we hold that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

Subjective intent to deceive, however difficult it may be to prove, is an indispensable element in the analysis. Of course, “because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence. But such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008). When drawing an inference of intent, “the involved conduct, viewed in light of all the evidence . . . must indicate sufficient culpability to require a finding of intent to deceive.” Kingsdown, 863 F.2d at 876.

This decision raises the bar for Fraud on the Trademark Office to where it was before the TTAB started lowering it.

– John C. Thomas III

Carolina Hurricanes File Trademark Infringement Lawsuit Against Tye Banks

cropped stanley cupThe Carolina Hurricanes, who were eliminated from the 2009 Stanley Cup Playoffs by the Pittsburgh Penguins in the Eastern Conference Finals, filed a trademark infringement lawsuit against singer Tye Banks in the U.S. District Court for the Eastern District of North Carolina on August 7, 2009 (Hurricanes Hockey Limited Partnership v. Banks et al, case number 4:2009cv00136).

The Hurricanes claim that Tye is using their trademark by referring to his song “Carolina Hurricanes” as “the official Carolina Hurricanes song.” The Hurricanes play his song during hockey games.

The Hurricanes sent Banks a cease-and-desist notice in February and he responded by removing the term “official” or “anthem” from his website and by adding disclaimers. Nonetheless, the Hurricanes claim that by Tye wearing a Hurricanes jersey in promotional material to promote his song, he is suggesting affiliation with the Hurricanes that damages their marks. (Source: www.thehockeynews.com)

– Katie Cooper

Trademark Registration for Slogans

slogan tshirt

Slogans can be registered as trademarks. In a recent conversation with another Pittsburgh patent lawyer, the issue of how to register a slogan in connection with t-shirts was raised.

Two issues to be concerned with when trying to register a slogan are as follows:

1) Slogans that are considered to be merely informational in nature or statements that would ordinarily be used in business are not registrable. TMEP § 1202.04. An example of this is “THE BEST BEER IN AMERICA.” See In re Boston Beer Co. L.P., 198 F.3d 1370 (Fed. Cir. 1999). A slogan can function as a trademark if it is not merely descriptive or informational. TMEP § 1202.04; and

2) Slogans used on t-shirts and sweatshirts have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods. TMEP § 1202.03(f)(i). Cases have held that when a slogan is printed across a t-shirt or sweatshirt, it is likely to be perceived as lacking any source-indicating significance.

Before trying to register a slogan one should consider if the slogan is merely information or a normal statement, and also how the slogan is being used. If the slogan appears on a t-shirt, the t-shirt should also have a tag displaying the slogan on the shirt, so that the tag may be a sufficient source indicator.