Trademark Law Update in
the U.S.: An In-Depth
Review of Case Law and
TTAB decisions
The USF School of Law McCarthy Institute,
INTA and Microsoft Corporation
Symposium: Trademark Law and Its
Challenges 2015
September 26, 2015
Tom McCarthy
Helen Hill Minsker
Mark Puzella
Garner Weng
Lorelei Ritchie
Senior Professor
Principal Shareholder Principal
Partner
Trademark Judge
University of San Francisco Trademark Trial & Appeal Board Banner & Witcoff
Fish & Richardson Hanson Bridgett LLP
B&B Hardware, Inc. v.
Hargis Indus., Inc., 135
S. Ct. 1293 (2015)
2015 McCARTHY INSTITUTE
J. Thomas McCarthy
Copyright 2015 J.T. McCarthy
U.S. SUPREME COURT LANHAM
ACT DECISIONS (2014-2015)
POM Wonderful v. Coca-­‐Cola , Lexmark v. Sta:c B&B
B&B HHardware
ardware v. Hargis v. Hargis Hana Financial v. Hana Bank B&B Hardware Inc. v. Hargis Industries Inc., 135 S.
Ct. 1293
Decided March 24, 2015.
•  Issue: Does a T.T.A.B. decision on the likelihood of confusion
issue create issue preclusion in a later court infringement
case?
TTAB COURT B&B Hardware Inc. v. Hargis Industries
Inc.,
(1)  T.T.A.B. Opposition: B&B SEALTIGHT for
aerospace fasteners versus Hargis’ SEALTITE for
screws used in manufacturing buildings. T.T.A.B.
finds likelihood of confusion. Hargis did not
appeal.
(2)  District Court Infringement Case: B&B
SEALTIGHT versus Hargis’ SEALTITE. Jury finds
no Likelihood of confusion. Both Dist. Ct. and CA8:
T.T.A.B. decision is not entitled to issue preclusion
on LOC.
STAKES ARE HIGHER IN COURT
LITIGATION – HARDER FOUGHT
TTAB
COURT LITIGATION
HOLDING IN B&B HARDWARE CASE
•  “So long as the other ordinary elements of issue
preclusion are met, when the usages
adjudicated by the TTAB are materially the
same as those before the district court, issue
preclusion should apply.”
•  Justice Alito for Majority of Seven: “We agree
with Professor McCarthy that issue preclusion
applies where ‘the issues in the two cases are
indeed identical and the other rules of collateral
estoppel are carefully observed.’”
WHAT’S THE IMPACT OF THE B&B
HARDWARE CASE?
To say, as the Supreme Court did,
that issue preclusion can sometimes
apply is not to say that issue
preclusion will always, or even often,
apply.
Justice Alioto remarked: “[F]or a
great many registration decisions
issue preclusion will not apply
because the ordinary elements will
not be met.”
FACTORS THAT AMELIORATE ANY
NEGATIVE IMPACTS OF THE B&B
HARDWARE PRECEDENT
•  The scope of the decision was geographically
limited
•  Defendant in the T.T.A.B. can file suit in federal
court and move the T.T.A.B. for a stay
•  Loser in T.T.A.B. can file suit in a federal District
Court and receive a de novo review of the entire
case
•  In many cases, there is no preclusion in because
the issues are not materially the same
T.T.A.B. DECISIONS ON LIKELIHOOD OF
CONFUSION DECISIONS ARE LIMITED
In an opposition or cancellation,
likelihood of confusion is
determined only as to the
registrability of the applicant’s
mark exactly as shown in the
application or registration and
only as to the goods or services
listed in the application.
Will Issue Preclusion Impact Validity
Findings of the T.T.A.B.?
•  classify a designation as either inherently distinctive
or not
•  find that a designation is a generic name
•  find that a non-inherently distinctive designation
either has or does not have a secondary meaning,
•  find that a party had priority of use of a mark
•  find that a party could achieve priority by tacking on
an earlier version of its mark to a later version
Dilution and the
Parody Defense
Lorelei Ritchie, Trademark Judge
Trademark Trial and Appeal Board
[email protected]
N.Y. Yankees P’ship v. IET Prods. & Srvs., Inc.,
114 USPQ2d 1497 (TTAB 2015)
•  Dilution by blurring (and Section 2d Likelihood of
confusion)
­  With a defense of parody
• 
• 
• 
• 
Expanded panel
Chief Judge
Deputy Chief
panel from Research in Motion Ltd. v. Defining Presence
Marketing Group Inc., 102 USPQ2d 1187 (TTAB 2012)
Opposer’s Mark
•  THE HOUSE THAT RUTH BUILT
Applicant’s Mark
•  THE HOUSE THAT JUICE BUILT
Opposer’s Mark
Applicant’s Mark
Defining Dilution by Blurring
•  “association arising from the similarity between a mark or
trade name and a famous mark that impairs the
distinctiveness of the famous mark.”
–  Trademark Act Section 43(c)(2)(B).
Four elements
1.  P owns a famous mark that is distinctive;
2.  D is using a mark in commerce that allegedly dilutes P’s
famous mark;
3.  D’s use of its mark began after P’s mark became
famous; and
4.  D’s use of its’ mark is likely to cause dilution by blurring
or tarnishment.
•  See Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012).
Applying the test
1. 
2. 
3. 
4. 
Fame of P’s mark: D’s admission and testimony
D’s use in commerce: ITU mark satisfies
P’s fame first: D’s admissions and evidence
Likely to cause dilution by blurring: 5 non-exhaustive
factors
Likely to cause dilution? Factors (statutory)
•  Degree of similarity between the marks
•  Degree of inherent or acquired distinctiveness of the
famous mark
•  Extent of exclusive use
•  Degree of recognition
•  Whether D intended to create an association
•  Any actual association
Parody: Exclusion in Section 43(c)(3) (Not
actionable)
•  (3)(A) Any fair use, including a nominative or descriptive
fair use, or facilitation of such fair use, of a famous mark
by another person other than as a designation of source
for the person’s own goods or services, including in
connection with –
–  (ii) identifying and parodying, criticizing, or commenting upon the
famous mark owner or the goods or services of the famous mark
owner
•  (C) Any noncommercial use of the mark
Applicant’s Marks as Commercial and SourceDesignating
•  “To obtain federal registration, an applicant’s use of the
applied-for matter must be as a designation of source –
i.e., as a mark – and commercial – i.e., used in
commerce.” (at 1508)
•  “Thus, given the circumstances generally presented by
opposition and cancellation proceedings based on
allegations of dilution, we find it virtually impossible to
conceive of a situation where a parody defense to a
dilution claim can succeed in a case before the
Board.” (at 1510)
Discussion Points:
•  Elements of dilution (too restrictive? overbroad?
changing?)
•  Parody for registration (ever)?
A Presumption of
Irreparable Harm?
Mark Puzella, Principal
Fish & Richardson P.C.
[email protected]
A Presumption of Irreparable Harm?
•  Issue: Does proof of a likelihood of success on the
merits entitle a preliminary injunction movant to a
rebuttable presumption of irreparable harm?
•  Historically, courts applied a rebuttable presumption of
irreparable harm in trademark cases
•  eBay and Winter
•  Present state of the law
•  What’s the “right” answer?
SCOTUS Puts the Presumption in Doubt
eBay Inc. v. MercExchange, LLC, 547
U.S. 23 (2006)
Winter v. Natural Resources Defense
Council, Inc., 555 U.S. 7 (2008)
•  Patent litigation
•  Rather than applying a
“categorical rule” courts
must apply the four-factor
equitable test (including
irreparable harm) to justify
an injunction
•  Focus on patent and
copyright harms – no
discussion of TM
•  Environmental litigation
•  Plaintiff seeking injunction
must establish likelihood of
irreparable harm, not mere
“possibility” of irreparable
harm
•  No discussion of TM
The Circuits React to eBay and Winter
Presumption Granted
•  Fifth Circuit: “injury is
presumed” in TM cases
(Abraham v. Alpha Chi Omega,
708 F. 3d 614 (5th Cir. 2013))
Presumption Doubted or Refused
• 
• 
• 
• 
Eleventh Circuit: “a strong case can be
made” that eBay applies in TM cases (N.
Am. Med. Corp. v. Axiom Worldwide, Inc.,
522 F.3d 1211 (11 Cir. 2008)
Second Circuit: “see no reason” why
eBay would not apply in TM cases
(Salinger v. Colting, 607 F.3d 68 (2d Cir.
2010)) (dicta)
Ninth Circuit: “the eBay principle—that a
plaintiff must establish irreparable harm—
applies to a preliminary injunction in a
trademark infringement case” (Herb Reed
Enterprises, LLC v. Florida Enter. Mgmt,
Inc., 736 F.3d 1239 (9th Cir. 2013))
Third Circuit: the eBay rationale is
“equally applicable” in other contexts,
including Lanham Act cases (Ferring
Pharm., Inc. v. Watson Pharm., Inc., 765
F.3d 205 (3d Cir. 2014)).
Discussion
•  SCOTUS avoids the issue: certiorari denied in Herb Reed
•  What’s the right answer:
•  How do IP regimes differ? (Patent v. Copyright v. Trademark)
•  Is harm to reputation and goodwill readily quantifiable?
•  Is the role of the Lanham Act as a “consumer protection” statute
relevant?
•  Does the timing of a preliminary injunction support a presumption?
•  Is the defendant protected—is a presumption fundamentally fair?
•  Does it matter?
•  Groupe SEB USA v. Euro-Pro Op. LLC, 774 F.3d 192 (2014)(“Ferring
[applying eBay] does not bar drawing fair inferences from the
record”) (“a critical aspect of fact-finding in this and other contexts is
drawing reasonable inferences from facts”)
Intersection of
Trademark Law and
the First Amendment
Helen Hill Minsker, Principal Shareholder
Banner & Witcoff
[email protected]
THE INTERSECTION OF TRADEMARK
LAW AND THE FIRST AMENDMENT
QUERY: Is the provision of Section 2(a) of the Lanham
Act (15 U.S.C. §1052(a)) relating to disparagement
unconstitutional?
The Statutory Language:
•  Section 2(a) of the Lanham Act provides that the USPTO may
refuse to register a trademark that “[c]onsists of or comprises
…matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs, or
national symbols, or bring them into contempt, or disrepute.”
15 U.S.C. §1052(a).
Test for Applying 15 USC §1052(a)
1.  What is the likely meaning of the matter in question, taking
into account not only dictionary definitions, but also the
nature of the goods or services, and the manner in which the
mark is used in the marketplace in connection with goods or
services; and
2.  If that meaning is found to refer to identifiable persons,
institutions, beliefs or national symbols, whether that
meaning may be disparaging to a substantial composite of
the referenced group.
See, In re Geller, 751 F.3d 1355, 1358 (Fed. Cir. 2014) (quoting
Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 124 (D.D.C.
2003)).
The Cases
THE SLANTS
Pro-Football, Inc. v. Amanda Blackhorse, et al., __
F.Supp.3d __, 115 USPQ2d 1524 (E.D.Va. 2015)
•  Blackhorse and other Native Americans filed petition to cancel
registrations owned by PFI for various marks including the
words “WASHINGTON REDSKINS” and the Logo
•  TTAB granted the petition/ordered cancellation of the
registrations, relying on the §2(a) “may disparage” provision
•  PFI filed civil action in the USDC (Eastern District of VA) in
which it appealed the decision to cancel the registrations
Holdings - Cross Motions for SJ
1 cancellation of trademark registrations did not violate team's free
speech rights;
2 federal trademark registration program is government speech that is
exempt from First Amendment scrutiny;
3 Lanham Act's “may disparage” provision was not facially void for
vagueness under due process principles;
4 Lanham Act's “may disparage” provision, as applied, was not void for
vagueness;
5 trademark registrations were not property interests protected by due
process or Takings Clause;
6 evidence established that registered “REDSKINS” marks may
disparage Native Americans; and
7 unreasonable delay, as required for team's laches defense, was not
shown.
•  Summary judgment for Native Americans; TTAB's ruling
affirmed
•  PFI has appeal pending in the Fourth Circuit
In re Tam, 2015 BL 111109, vacated by order issued
4-27-2015, 114 USPQ2d 1469 (Fed. Cir. 2015)
•  Tam, an Asian-American, applied to register THE SLANTS as
a service mark for “live performances by musical band”
•  TTAB affirmed refusal under Section 2(a) – on the ground that
it “may disparage” persons of Asian dissent
•  Tam appealed to the Federal Circuit, challenging the
constitutionality of the 2(a) disparagement provision on First
Amendment, due process, vagueness and equal protection
grounds
Federal Circuit affirmed, BUT…
•  In a decision issued on April 20, 2015, the Federal Circuit
affirmed the TTAB decision, noting that under its prior
precedent it had affirmed the constitutionality of Section 2(a).
•  However, in “additional views”, Judge Moore proposed that
the court revisit McGinley’s holding on the constitutionality of
the disparagement provision.
The Precedent…
The Court relied on the McGinley case, which included the
following rationale:
With respect to appellant’s First Amendment rights, it is clear that
the PTO’s refusal to register appellant’s mark does not affect his
right to use it. No conduct is proscribed, and no tangible form of
expression is suppressed. Consequently, appellant’s First
Amendment rights would not be abridged by the refusal to register
his mark.
In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981)
Decision Withdrawn/Rehearing En Banc
Pending
•  Rehearing en banc granted to consider the following question:
Does the bar on registration of disparaging marks in 15
U.S.C. § 1052(a) violate the First Amendment?
•  Appeal pending
First Amendment Quandary
District Court in Pro Football Inc. v. Blackhorse:
•  Trademark Registrations are “Government Speech” exempt
from First Amendment Scrutiny
Judge Moore’s Additional Views in Tam:
•  Trademark Registrations are “Commercial Speech” subject to
First Amendment Protection
Analyzing the Issues
•  Decisions address the distinction between (1) the right to
obtain a trademark registration from the government and (2)
the right to use a mark
•  Categorization of trademark registrations as “government
speech” or “commercial speech” leads to different analysis
and potentially different results
“Government Speech”
•  District court relied in part on recent Supreme Court Decision,
Walker v. Tex. Div. Sons of Confederate Veterans, Inc., __
U.S. __, 135 S.Ct. 2239 (2015)
•  Opinion emphasized that cancellation of registration does not
preclude use of mark
•  Per district court’s analysis, speech not restricted, First
Amendment not implicated
“Commercial Speech”
•  Per Judge Moore, trademarks are “commercial speech” and
the disparagement provision of §2(a) should be analyzed
under the test set forth in Central Hudson Gas & Elec. Corp. v
Pub. Serv. Comm’n, 447 U.S. 557 (1980).
Central Hudson Test
The commercial speech must concern lawful activity and not be
misleading. If the commercial speech meets this threshold, then
the court must consider whether:
1.  The asserted governmental interest is substantial;
2.  The regulation directly advances the governmental interest
asserted; and
3.  The regulation is not more extensive than is necessary to
serve that interest.
•  In her “additional views”, Judge Moore noted:
“We have yet to be presented with any substantial government
interests that would justify the PTO’s refusal to register disparaging
marks. Without this, §2(a) cannot satisfy the Central Hudson test.”
Other Constitutional Issues
•  Due Process
•  Takings Clause
•  Vagueness
Stay Tuned…
•  Will there be a split in the circuits?