trademark

Charlie Meyer quoted in The Indiana Lawyer, “Say what?: Trademark case tests ‘scandalous,’ ‘immoral’ standards”

April 25, 2019

Charlie Meyer was quoted in The Indiana Lawyer article, “Say What?: Trademark Case Tests ‘Scandalous,’ ‘Immoral’ Standards.”

What’s more, the scandalous and immoral clause seemingly gives the government permission to treat some businesses differently than others based on the trademark they choose to use, said Charlie Meyer, a partner at Indianapolis IP firm Woodard, Emhardt, Henry, Reeves & Wagner, LLP. But such unequal treatment would seem to be unconstitutional, Meyer said.

“Is it the government’s job to treat people differently on this basis?” Meyer said, pointing to a question he thinks is an important issue for the justices to resolve. Further, if Tam stands for the proposition that the government cannot determine what is “disparaging,” then Meyer questioned why the government would still be allowed to decide what is scandalous or immoral.

Click here to read the full article.


Using a Webpage as a Specimen for Products Associated with a Trademark

April 18, 2019

When registering a trademark, the Patent and Trademark Office requires the submission of a specimen to show that a trademark is being used in interstate commerce.  It is often tempting to simply submit a screenshot of a webpage showing the trademark and the products associated with that trademark as a specimen.  However, as shown in a recent Federal Circuit decision made precedential, care must be taken when using a webpage as a specimen for goods associated with a trademark to ensure that the webpage is likely to be acceptable.

In the case, In re Siny Corp., 2019 U.S. App. LEXIS 10499 (Fed. Cir. Apr. 10, 2019), the Applicant filed an application for the mark CASALANA for a knit fabric used to make outerwear, gloves, and apparel.  The specimen submitted for this trademark was a screenshot of a webpage that included the trademark along with a picture and a description of the fabric, as well as a phone number and an email address to contact for sales information.  The Federal Circuit affirmed the Examining Attorney and the TTAB’s decision to refuse registration, stating that the webpage was just advertising material and failed to show use of the mark in commerce for the listed products.  It is important to note that this decision specifically pertains to a specimen for goods and that webpages are more readily accepted as specimens for services.

A trademark is used in commerce when it is placed directly on goods or placed on the containers, displays, tags or labels associated with the goods.  A trademark included on a webpage may qualify as a “display” associated with goods shown on the webpage.  However, a webpage simply advertising the goods used in connection with the trademark is not sufficient to qualify as a display, and is therefore not an acceptable specimen.  In order to be an acceptable specimen, the webpage must act as a point of sale location for the products.

As shown by the decision in Siny, showing only a phone number or an email address as contact information for ordering products associated with the trademark may not be enough to make the webpage a point of sale location.  Instead, a webpage submitted as a specimen should either make the goods available for purchase directly through the webpage or display additional information other than just contact information that would be considered essential to a purchasing decision.  Examples of this additional information include prices or a range of prices for the goods, sizing information, the quantity of the goods that may be ordered, how to pay for the product, and how the product will be shipped.

This decision by the Federal Circuit doesn’t mean that webpages cannot be used as a specimen for a trademark application covering goods.  Instead, an Applicant should make sure that when using a webpage as a specimen for a trademark application, the webpage includes as much information as possible about the nature of the goods and includes specific information on how to purchase the goods associated with the trademark.  Following these guidelines should lead to an acceptable specimen.


Woodard Emhardt Obtains Dismissal of Trademark Infringement Complaint

May 19, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a trademark infringement lawsuit filed against operators of historical horse racing games by numerous prominent race tracks should be dismissed. The suit alleged that the defendants infringed upon the Plaintiffs’ trademarks by using the racetracks’ names to identify the location where historic horse races had taken place. The Court reasoned that the defendants were “fully within their rights to describe where an event took place in their wagering system without implying the owners of the racetrack are sponsoring the game…” Moreover, the court found that the defendants were protected by the fair use defense when describing where an event took place, even when the location described is most commonly conveyed using a registered trademark. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.


Woodard Emhardt Obtains Dismissal of Patent Infringement Complaint Under Section 101

May 12, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a patent infringement lawsuit filed against operators of historical horse racing games should be dismissed as the three patents asserted failed to claim patent eligible subject matter under 35 U.S.C. 101. In dismissing all three infringement claims, the Court wrote “[Plaintiff]’s patents encompass subject matter facially unpatentable under Section 101. The only plausible reading of the ‘150, ‘887, and ‘737 patents reflects that they are ineligible for patent protection. The Asserted Patents are abstract ideas, and [plaintiff] has failed to demonstrate an inventive concept required to transform these claims into patentable subject matter within the meaning of Section 101. Thus, the claims asserted in the Amended Complaint must be dismissed.” The opportunity for companies facing the threat of infringement from patent holders to obtain either invalidate those patents or obtain prompt and efficient dismissal such as this in litigation has significantly increased following the Supreme Court’s decision in Alice. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.


Washington Redskins Trademarks Canceled

June 27, 2014

On Wednesday, June 18, the Trademark Trial and Appeal Board canceled the “Redskins” mark in a 2-1 decision stating that it is “disparaging to Native Americans.” A similar case was filed in 1992 and was overturned by a federal district court due to lack of standing. A lawyer representing the team stated that a similar appeal is likely to follow the current decision. The USPTO has refused to register about a dozen mark containing the recitation “Redskins” since 1992 stating that it is a “derogatory slang term.” Regardless of the outcome, the team will retain its common law rights to the mark and therefore it is not expected that this ruling will have an immediate impact on the team.


USPTO Cautions Trademark Customers

February 29, 2012

The United States Patent and Trademark Office (USPTO), after receiving numerous inquiries and complaints, has posted a warning directly on its Trademark homepage to highlight the problem of non-USPTO solicitations that resemble official USPTO communications.

According to the Office, private companies not associated with the USPTO will often use trademark application and registration information obtained from the USPTO’s official databases to send trademark-related solicitations by mail or e-mail.  The warning states that the solicitations often mimic official government documents and can include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry.

The Office asks its customers to read trademark-related communications carefully before making a decision about whether to respond, and reminds them that “all official correspondence will be from the ‘United States Patent and Trademark Office’ in Alexandria, VA, and if by e-mail, specifically from the domain ‘@uspto.gov.'”


Take Down Provisions: Copyright First. Now Trademark. What Next?

September 16, 2010

Below is a presentation that discusses how the take down provisions of the Digital Millennium Copyright Act (DMCA) have been expanded to not only cover copyrights but other forms of intellectual property, such as trademarks, rights of publicity, patents, etc. The presentation compares the different take down procedures used by major websites as well as provides sample take down forms and policies. To view the presentation, visit: Take Down Provisions from Woodard, Emhardt, Henry, Reeves & Wagner, LLP


Trademark Office Consistency Program Extended

August 20, 2010

After assessing the Trademark Consistency Initiative Pilot Program, the United States Patent and Trademark Office (USPTO) has decided to extend and expand the program.  The USPTO is expanding the parameters of the program so that a Request for Consistency Review on substantive or procedural issues (excluding issues involving identifications of goods and services) may include registrations that have issued within the past five years.  Additionally, for at least a period of four months, commencing on June 23, 2010, the Office will accept Requests concerning inconsistency issues with respect to identifications of goods and services.  Please note that applications and registrations based on the Madrid Protocol are excluded and registrations relied upon must have issued within the two years prior to the Request.  Additionally, the pending application at issue must have a final identification or classification requirement outstanding.  

 If you would like more information on the Trademark Office’s Consistency Program, please contact us.