Trademark Presentation

I’ve been meaning to post the slides from my Trademark Law – 2015 Update CLE that I presented at the Orange County Bar Association’s Intellectual Property Committee meeting back in May.

So, here they are in PDF format: Trademarks – OCBA CLE 2015.

I went over the following topics:

1) A Trademark Trial and Appeal Board (“TTAB”) proceeding which sought to cancel the registration for Gerber Childrenswear’s “ONESIES” trademark.  Since giving the CLE, the TTAB proceeding has been terminated because the party seeking to cancel the ONESIES registration has withdrawn the petition for cancellation.  Given that the petitioner’s website still uses the “onesies” term/mark, I’m guessing that Gerber has given the petitioner a free license or some other incentive to abandon its efforts to cancel the registration.  Even though I’m a trademark attorney, as a new dad, I admit to using the term “onesie” in a generic sense.  All baby bodysuits are “onesies” to me even though I know it’s a registered trademark and should not be used generically.  I still think Gerber will lose this registration at some point.  It might be many years from now, but ONESIE’s days as a registered trademark seem limited to me.

2) The Supreme Court’s B&B Hardware case, which addressed issue preclusion – i.e. does a TTAB finding of likelihood of confusion preclude a subsequent district court from finding otherwise?  (Answer:  It depends.  If the issues raised in the TTAB proceeding are identical to the issues in the district court litigation such that traditional collateral estoppel rules are triggered, then the TTAB decision can preclude a contrary district court decision.)

3) The Supreme Court’s Hana Financial case, which addressed whether or not “tacking” is a question of fact for a jury or if it is a question of law for the court.  (Answer: it is a factual issue which “falls comfortably within the ken of a jury.”)

4) A federal case in Maryland involving campaign signs.  I’ve blogged about campaign signs and trademarks on several occasions (HERE, HERE), so this one interested me for that reason as well as for the case’s analysis of another Supreme Court case – the Lexmark case with addressed standing in false advertising claims.  In this case, the Hershey chocolate company was upset that Mr. Steve Hershey was using the Hershey’s familiar trade dress – brown background, similar block letter typeface, etc.

hershey

The court found that Mr. Hershey does not have a fair use or First Amendment right to use the Hershey’s trade dress. Given how many local campaign signs I see in Orlando which play on famous trademarks, this case should serve as a warning.

5) Finally, I covered the In re Tam case, which was a case where the Federal Circuit first affirmed a TTAB decision that denied a band’s trademark application for THE SLANTS as being disparaging to those of Asian descent.  The band is made up of members of Asian descent, and they challenged the denial.  Interestingly, after the Federal Circuit affirmed the refusal in a majority opinion, the opinion went on in a dissent to question the constitutionality of the Trademark Act’s bar to registration of “disparaging” marks.  Five days after that opinion was issued, the Federal Circuit vacated it and ordered that the case will be heard en banc with new briefing on the constitutionality issue.  Oral argument will be held on October 2, which is a couple of days before my firm will be at the Federal Circuit in D.C. to argue an appeal in a patent case.

 

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