Trademark Review (July 2014)

by Knobbe Martens Olson & Bear LLP
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Past Disparagement Results in Present Cancellation: REDSKINS Marks Cancelled by TTAB

The Trademark Trial and Appeal Board (“TTAB”) cancelled six registrations for marks consisting in whole or in part of the term REDSKINS for use in connection with a professional football team, because the marks were found to be disparaging to Native Americans at the time they were registered (between 1967 and 1990). 

The Board found that when used in connection with football services, REDSKINS retains the meaning of “Native American.” Videos of football games, newspapers, and press guides created between 1967 and 1990 established that the respondent “made continuous efforts to associate its football services with Native American imagery.” 

The Board also found that dictionary definitions of “redskin” published prior 1967 and during the relevant time period established that there was “a clear trend” to label the term “redskin” as offensive and that by 1986, the dictionaries unanimously labeled the term as offensive. 

The Board then considered statements and resolutions from members of the National Congress of American Indians (“NCAI”) which represented approximately thirty percent of Native Americans during the relevant time period. When considering whether a term is disparaging, a “substantial composite” of the referenced group is required, not a majority.  In 1993, the NCAI passed a resolution voicing its continuous opposition to the registration of the REDSKINS marks. Even though the resolution was passed after 1990, the Board found that it was a group statement about views held during the relevant time period. Further, the NCAI had protested each registration of the mark from 1967 to 1990. Because the petitioners’ evidence demonstrated that the NCAI represented at least thirty percent of Native Americans during the relevant time period, the Board agreed that a substantial composite of Native Americans find the mark disparaging.  

Amanda Blackhorse, Marcus Briggs-Cloud, Philip Grover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No.  92046185 (TTAB June 18, 2014) [precedential].

Some Things Never Change: Swearword Continues to Be Scandalous Matter

The Trademark Trial and Appeal Board (“TTAB”) found the mark “ASSHOLE REPELLENT” to be scandalous and vulgar despite its use on a gag gift. After considering contemporary attitudes towards swearwords, the Board affirmed the examining attorney’s refusal to register the mark. 

The applicant filed an application to register ASSHOLE REPELLENT for a spray-top can. The can is sold as a gag gift. The Trademark Act prohibits the registration of trademarks consisting of “scandalous matter.”  The applicant submitted evidence to prove that the mark is not scandalous and is at worst impolite. However, the Board found that the evidence actually confirmed the examining attorney’s finding that the mark is scandalous and vulgar. 

The Board took into account the standpoint of the general public and contemporary attitudes towards swearwords. However, the Board noted that some terms are still vulgar even though society and the media appear to have a relaxed attitude towards use of swearwords.

The Board found that the use of “asshole” on the applicant’s product, repellant spray, invokes the vulgar meaning of the word. While the evidence demonstrated the increased use of the swearword in the main-stream media, the Board stated that “a term does not lose its profane meaning simply because it may be used more frequently.”  An academic study and a Vocabulary.com posting confirmed that the general public considers the swearword to be offensive. 

In re Michalko, Serial No. 85584271 (TTAB May 30, 2014) [precedential]

The Mark of Greatness: Russian Imperial Surname is Not Just Any Last Name

In a non-precedential opinion, The Trademark Trial and Appeal Board (“TTAB”) reversed the Patent and Trademark Office’s (“PTO”) refusal to register the mark ROMANÓV.

The applicant sought registration of the mark ROMANÓV for decorative eggs, picture frames, porcelain boxes, jewelry, and table clocks. The Examining Attorney refused registration on the grounds that the mark is “primarily merely a surname.”

Under the Trademark Act, a mark cannot be registered if it is “primarily merely a surname” unless the applicant demonstrates acquired distinctiveness. 

In reviewing the PTO’s refusal, the Board examined the rareness of the surname, whether anyone connected to the applicant bears the surname, whether the mark has significance other than as a surname, and whether the mark looks or sounds like a surname. After considering these factors, the Board found that the PTO had failed to establish that ROMANÓV was “primarily merely a surname”.

The PTO relied upon a search of a directory website that revealed “100+ Results” for “Romanóv.” The Board found this to be insufficient proof that the name is common because “100+” is an inconclusive indicator of the rareness of the surname. There could be thousands of persons having the surname or just over 100 persons. Because it was the Examining Attorney’s burden to demonstrate the commonness of the surname, the Board gave the applicant the benefit of the doubt and assumed that Romanóv was a rare surname. Thus, the public is less likely to consider its significance as a surname when encountering ROMANÓV. The Board also considered that no one connected with the applicant bears that surname. 

The applicant argued that the name has recognizable historical significance, because it is the surname of the dynasty that ruled Russia from 1613 to 1917. The PTO found that “Romanóv” has no significance other than a surname because it has no dictionary meaning and multiple members of the House of Romanóv (such as Peter the Great and Catherine the Great) held that surname. Because the applicant’s goods (decorative eggs and jewelry) are items associated with the Romanóv dynasty, the Board found that consumers encountering the mark are more likely to think of the dynasty and not individuals bearing the surname. Thus, the applicant’s mark ROMANÓV is not “primarily merely a surname.”

In re The Hyman Companies Inc., Serial No. 85483695 (TTAB June 4, 2014) [not precedential].

Super Supplement Does Not Help Vitamin Supplier Outgrow Genericness

The Federal Circuit affirmed the Trademark Trial and Appeal Board (“TTAB”) ruling that the mark CHILDREN’S DHA is generic for nutritional supplements containing DHA. 

Nordic Naturals (“Nordic”) specializes in nutritional supplements made from fish oil, which contains DHA (docashexaeonic acid), an omega-3 fatty acid that assists in brain development. Nordic filed an application to register CHILDREN’S DHA in connection with nutritional supplements containing DHA for children. The examining attorney rejected the mark as generic, or in the alternative, as lacking acquired distinctiveness. The Board affirmed, finding that dictionary definitions and third-party uses of the term established that the term is used generically by parents and adults who purchase nutritional supplements containing DHA for children. Although Nordic has achieved commercial success, the Board found that CHILDREN’S DHA does not identify Nordic as a source. Thus, the mark had not acquired distinctiveness. 

On appeal to the Federal Circuit, the court found the evidence supported the TTAB finding that the relevant public primarily uses “children’s DHA” generically to refer to DHA products for children. 

Nordic also argued that while “children’s DHA supplement” may be descriptive, CHILDREN’S DHA by itself is not descriptive. Nordic claimed that its commercial success results from the consumer’s ability to identify Nordic as the source of CHILDREN’S DHA. Nordic provided declarations from retailers, examples of its own advertising, and third-party uses of “children’s DHA” which refer to Nordic ‘s products. It argued that since there was a “mixture of usages” of the mark, it could not be generic.  

However, the Federal Circuit found that the record did not establish that there was a mixture of usages of “children’s DHA” among the relevant public. The third-party references used the term to describe the products, not to refer to Nordic as the source. Further, the court found that the declarations did not demonstrate that the public uses the term to identify Nordic since the declarations were only from retailers and not the relevant public. 

The Federal Circuit recognized that Nordic may have been the first to use “children’s DHA” in the market. However, since the term is used by the public to refer to DHA products for children, Nordic could not claim exclusive use of the term. 

In re Nordic Naturals,Inc. ( Case No. 2013-1492, Serial No.77131419) (United States Courts of Appeals for the Federal Circuit, June 23, 2014). 

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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