MVS Filewrapper® Blog: Likelihood of confusion at USPTO may be preclusive in litigation

Post by Dan Lorentzen

Although trademarks exist outside of the federal trademark system set out in title 15 of the U.S. Code (the Lanham Act), federal trademark law provides a number of benefits to mark owners who register their trademarks through the United Stated Patent and Trademark Office. In the context of federal trademark law, a trademark owner's rights in a mark, and the validity of that mark, can be tested in two separate types of proceedings: a lawsuit in federal court, or opposition at the USPTO.  The recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc. provides important clarification on how determinations in the two types of proceedings interact.

B&B registered its mark SEALTIGHT in 1993 for "“threaded or unthreaded metal fasteners and other related hardwar[e];namely, self-sealing nuts, bolts, screws, rivets and washers, all having a captive o-ring, for use in the aerospace industry.”  Hargis began producing metal screws for use in building construction using the mark SEALTITE, and sought to register the mark in 1996.  B&B sued Hargis in federal court for trademark infringement and also filed a concurrent opposition to Hargis' registration at the USPTO.  A central question in both proceedings was whether there was a likelihood of confusion between Hargis' SEALTITE mark and B&B's already registered SEALTIGHT mark. 

Before the District Court had ruled on the likelihood of confusion, the Trademark Trial and Appeal Board (TTAB) of the USPTO ruled on the opposition proceeding, determining that Hargis' mark could not be registered because there was a likelihood of confusion with respect to B&B's mark.  Hargis did not appeal the TTAB decision to either a district court or the Federal Circuit.   B&B, in turn, argued to the District Court that as a result of the TTAB's decision, Hargis could not contest likelihood of confusion in the pending court proceeding.  Following Eighth Circuit precedent, the District Court disagreed, reasoning that the TTAB is not a judicial body created by Article III of the Constitution, and so the TTAB decision could not have preclusive effect on the District Court.  The jury ultimately found there to be no likelihood of confusion.  B&B appealed to the Eighth Circuit, which affirmed the District Court on the basis that the TTAB weighs different interests (e.g., the right to register versus the right to use) and applies different factors in determining likelihood of confusion than a district court would. 

On ultimate appeal, the Supreme Court resolved a Circuit-split on this issue and held that determinations of likelihood of confusion at the USPTO could be preclusive for subsequent determinations in litigation.  The Court concluded that an administrative determination, such as by the USPTO, can be preclusive for determinations of the same issue in federal court when the administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had an adequate opportunity to litigate.  The Court further determined that although the specific factors used by the district courts and the USPTO for determining likelihood of confusion may be different, the underlying legal standard is the same for both litigation and registration.  However, the holding is limited to situations where the application/registration at issue in the TTAB proceedings covers goods and services that are "materially the same" as those at issue in the federal court proceeding. 

It is worth noting that the Court's opinion relates to TTAB decisions regarding likelihood of confusion for trademark registration—that is, determinations proceedings such as oppositions where the parties have a chance to "litigate" the pertinent issues.  The same type of preclusion would not apply simply as a result of registration of a mark with the USPTO. 

As a result of this decision, parties considering taking action against a federal trademark applicant or registrant should carefully compare the goods/services shown in the trademark application/registration to the their own goods and services to determine whether they should proceed in the TTAB or a federal court.  Additionally parties trademark applicants/registrants who lose at the TTAB should strongly consider an appeal of that decision because that decision may now have preclusive effect in later federal court cases. 

The full decision is available here. 

MVS Filewrapper® Blog: Cancelation of Trademarks due to First Actual Use After Application

Post by Dan Lorentzen


Federal registration of a trademark provides a number of benefits to the trademark owner, including protection throughout the entire country, advantageous litigation position—for example presumption of validity and enhanced monetary damages—and enlistment of the U.S. Customs Service to stop importation of counterfeit goods. The federal trademark system provides two separate avenues for protecting a mark: (1) registration of a mark that is already used in commerce, and (2) certification of a bona fide intent to use the mark in commerce (ITU application), followed by a later demonstration of actual use.  However, failure to use the correct registration scheme can result in invalidation of the registration, and loss of the benefits of federal protection.


In its recent decision in Couture v. Playdom, the Federal Circuit Court of Appeals held that a trademark that was registered under the standard (i.e. non-ITU) system, but was not actually used in commerce until after the registration, was void.  The mark owner filed a registration including, as a specimen showing use of the mark, a screen capture of the mark owner's website.  At the time of filing, the website was a single page that advertised the mark owner's readiness, willingness and ability to render services.  The mark owner did not, however, provide any services under the mark until after the mark had been registered.  The mark was the subject of a cancelation proceeding, and the Trademark Trial and Appeal Board (TTAB) canceled the registration as void from the time of filing because the owner had not used the mark in commerce as of the date of the application.


On appeal, the Federal Circuit affirmed the TTAB's cancelation.  The court held that "use in commerce" for registration requires actual use in conjunction with the services described in the application, and not merely offering services.  The court further noted that, although ITU applications are available, and procedures for substitution of an ITU application for a standard application are available, such substitution is specifically provided for prior to publication and registration.  As a result, once a standard trademark application is published, it can no longer be converted into an ITU application. 


This case highlights the need for mark owners to understand when and how they use their marks.  For the incautious, failure to fully consider and communicate these use issues may result in loss of trademark rights. 


The full opinion is available here.  

MVS Filewrapper® Blog: U.S. Supreme Court Holds Trademark Tacking Is a Question for the Jury

By Jonathan Kennedy


The Supreme Court recently released its unanimous decision in Hana Financial, Inc. v. Hana Bank, holding that “when a jury trial has been requested and when the facts do not warrant entry of summary judgment or judgment as a matter of law, the question of whether tacking is warranted must be decided by a jury.”


The case involved use of the "Hana Bank" mark by a Korean financial service provider, which has been known as “Hana Bank” since 1991. However, in 1994 it established a service called “Hana Overseas Korean Club” which was advertised in the United States. In 2000, “Hana Overseas Korean Club” was renamed to “Hana World Center” and finally began operation in the United States as “Hana Bank” in 2002.  The petitioner, Hana Financial, is a California company established in 1994 and also in the field of providing financial services. In 1996, after a year of use in commerce, Hana Financial obtained a federal registration for its logo appearing with the name “Hana Financial.” Suit was brought in 2007 by Hana Financial, alleging trademark infringement on the basis that the use of "Hana Bank" infringed the rights in the "Hana Financial" trademark. In response, the respondent invoked the tacking doctrine to assert earlier rights.  The tacking issue was ultimately decided by a jury, with the district court denying motions for judgment as a matter of law.


The tacking doctrine recognizes that trademark owners and users should be allowed to make certain changes to their marks over time without losing their claim of priority. Lower courts have traditionally found that tacking is available when the original and revised marks are “legal equivalents” which have the same, continuing commercial impression when viewed through the eyes of the consumer.


Justice Sotomayor delivered the opinion of the Court and noted that it has long been recognized across doctrinal lines that when the viewpoint of an ordinary person is in question, the jury is generally the decision maker. However, the Court distinguished that holding when warranted by the facts, a judge may decide the question of tacking on a motion for summary judgment or for judgment as a matter of law. Furthermore, the Court noted that even if tacking was to be considered a mixed question of law and fact due to the “legal equivalence” requirement, typically these mixed questions are still left to the jury with carefully crafted jury instructions as to the legal standard.

MVS Filewrapper® Blog: Are Trademarks for Beer Names Becoming a Commodity?

Post by Alex Christian


While typically we think of finite resources such as oil and coal as commodities, it could be that the next big commodities are names for craft beers and breweries.  According to a recent NPR story, which can be found here, the craft brewing industry is becoming an increasingly crowded industry with more than 3,000 breweries in the United States. Unfortunately for many craft brewers, the individuals behind naming the brews tend to adopt similar—and in some cases, identical—names and labels for their products.  And although it may be the case that many in the craft brewing industry do not seem to mind sharing similar or identical names for their beers, there still remain significant risks of knowingly adopting and using similar marks to other breweries.


The risks involved do not relate solely to future legal battles; rather, the biggest risk may actually be the potential damage confusingly similar trademarks can do to a trademark owner's reputation.  Trademarks are intended to be source identification tools that allow consumers to distinguish product A from product B in the marketplace.  In a crowded industry such as the craft brewing industry, when the marketplace is inundated with hundreds of similar and derivative names for beers, it becomes increasingly difficult for the consumer to identify one particular beer from another. The implication being the trademark for which typically businesses spend significant financial resources to develop and market, fails to serve its very purpose: distinguishing brands in the marketplace.

MVS Filewrapper® Blog: Passing Off and Taking Credit for Architectural Plans

The United States Court of Appeals for the Seventh Circuit has issued a decision in Gensler v. Strabala, overturning a district court’s ruling dismissing a complaint for trademark infringement under §43(a) of the Lanham Act.

Strabala, a former Design Director and architect for the architectural firm Gensler & Associates, formed his own design firm, 2Define Architecture.  The 2Define Architecture website stated that Strabala had designed five projects for which Gensler was the architectural firm of record. Gensler filed suit, contending that this was “reverse passing off” and violated §43(a) of the Lanham Act.  However, the district court dismissed the complaint, ruling that Strabala neither claimed that he built or sold those structures, therefore he could not have violated the statute.

Genseler appealed the dismissal to the Seventh Circuit Court of Appeals.  According to the Seventh Circuit, there are three ways in which an architect’s assertion that he designed the building could be false: “(1) the architect did not have anything to do with the project, never working on the design; (2) The architect worked on the project but overstated his role; (3) The architect worked on the project and contributed some or even all important features, but the project was so complex that no one person bore full responsibility.”  In this case, the Seventh Circuit determined that although Gensler’s complaint did not assert one of these three situations, the complaint could be interpreted to mean that big projects, such as those at issue in this case, require big teams and that Gensler insists on institutional rather than personal credit. Furthermore, the court reasoned that as both firms specialize in large projects with sophisticated clients, and such clients would not be misled by such statements, the purpose of the complaint is to conceal that an architect has left the firm.

Ultimately the court believed that Gensler's allegations were not sufficient to warrant dismissal under Rule 12(b)(6), and the district court's dismissal was not proper before the parties had joined issue on vital topics.

The full opinion is available here.

MVS Filewrapper® Blog: USPTO Cancels Washington, D.C. NFL Franchise's Trademark Registrations

The United States Patent and Trademark Office issued a decision yesterday cancelling six federal trademark registrations owned by the Washington, D.C. National Football League franchise.  The cancellation proceeding was brought by five Native American petitioners on the basis that the marks disparage persons or bring them into contempt or disrepute in violation of 15 U.S.C. § 1052(a).  The Trademark Trial and Appeal Board (TTAB) panel of three Administrative Trademark Judges sided with the petitioners, cancelling all six of the challenged registrations. 


The registrations in question were all obtained between 1967 and 1990 on behalf of the Washington NFL franchise, and are all word marks.  The registrations were previously challenged in 1992 in a similar proceeding that also challenged the team logos without the word marks.  In the prior proceeding the TTAB held that the marks were disparaging to Native Americans when registered and ordered the registrations canceled.  The Washington NFL franchise appealed the decision in the prior proceeding to the U.S. District Court for the District of Columbia, who reversed the decision as barred by the doctrine of laches. 


The TTAB panel found that the five petitioners had standing to bring the cancellation proceeding, and were not barred from doing so by the doctrine of laches. The TTAB panel further found that the alleged honorable intent and manner of use of the term did not contribute to the determination of whether the marks were disparaging, but rather the sole issue was whether a substantial composite of the referenced group found the term to be disparaging in the context of the Washington NFL franchise during the time period when the registrations were obtained (1967-1990). 


The TTAB consulted evidence that reflected the sentiments of Native Americans, including a resolution passed by the National Congress of American Indians, various reports and testimony, newspaper articles, official records, and letters, and concluded that the substantial evidence may have disparaged a substantial composite of Native Americans at the times of the registrations.


Administrative Trademark Judge Bergsman dissented in the opinion on the basis that the petitioners had not shown by a preponderance of the evidence that a substantial composite of Native Americans found the marks to be disparaging in connection with the Washington NFL franchise during the relevant time frame.


The full decision and additional information are available here.  

MVS Filewrapper® Blog: 2014 Supreme Court Cases Relating to Intellectual Property

On January 10, 2014 the Supreme Court agreed to review a variety of intellectual property cases in the upcoming session, including two patent cases, a copyright case, and a trademark case (including Lanham Act claim).  A brief overview of these cases is provided and more detail will be available once decisions are entered by the Court.

Limelight Networks, Inc. v. Akamai Technologies, Inc. (U.S., No. 12-786.)

Question Presented to the Supreme Court: Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).

The Federal Circuit dismissed the “single-entity” rule for finding induced infringement of a method/process claim, finding that steps taken by multiple parties can result in induced infringement. The Federal Circuit stated, “To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.” If the Supreme Court upholds the Federal Circuit’s ruling, a patentee has increased opportunity to assert induced infringement for method/process claims in the marketplace.

Nautilus, Inc., v. Biosig Instruments, Inc. (U.S., No. 13-369)

Question Presented to the Supreme Court: Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming? Does the presumption of validity dilute the requirement of particular and distinct patent claiming?

The Federal Circuit reversed a district court decision that a patent claim to a heart rate monitor was invalid for indefiniteness as a matter of law because of its use of the claim term “spaced relationship” in describing the positioning of two electrodes with respect to each other. The Court held that this claim term was not one that is “insolubly ambiguous” when the intrinsic evidence is considered from the perspective of a person of skill in the art. It considered the functionality of the claimed monitor, as described in the specification, as did the USPTO when the claim was under reexamination. “[T]he claims provide inherent parameters sufficient for a skilled artisan to understand the bounds of ‘spaced relationship.’” Judge Schall concurred in the result but would have used a more narrow analysis, explaining that he would not have used the functional limitation to address the definiteness issue.


POM Wonderful LLC v. The Coca-Cola Company, U.S. (No. 12-761)

Question Presented to the Supreme Court: Whether the court of appeals erred in holding that a private party cannot bring a Lanham Act claim challenging a product label regulated under the Food, Drug, and Cosmetic Act.

The case arising out of the 9th Circuit resulted in affirming judgment in favor of Coca-Cola, finding that POM's Lanham Act challenge to Coca-Cola’s “Pomegranate Blueberry” name was barred under the Food Drug and Cosmetic Act (FDCA).  Applicability of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a) (authorizing actions of false/misleading description of goods), The FDCA and/or state law claims will be addressed.

American Broadcasting Companies, Inc. v. Aereo, Inc. (U.S., No. 13-461)

Question Presented to the Supreme Court: Does a company “publicly perform” a copyrighted television program when it retransmits a broadcast of that program to thousands of paid subscribers over the Internet?

The Second Circuit denied reviewal of a panel decision that online streaming of TV programs to individual subscribers is not an infringing public performance. The panel found that the creation of a copy of a broadcast that is transmitted to individual subscribes failed to establish infringement as streaming “to the public.”

MVS Filewrapper® Blog: Flawed Evidence Undercuts "Charbucks" Trademark Suit

In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., the U.S. Court of Appeals for the Second Circuit affirmed a district court’s decision denying injunctive relief in Starbucks’ trademark case against Black Bear Micro Roastery over Black Bear’s use of “Charbucks” for coffee. 


Starbucks sued Black Bear in 2001, alleging, among other things, trademark dilution in violation of 15 U.S.C. §§ 1125(c), 1127.  In December 2005 the district court ruled in favor of Black Bear and dismissed Starbucks’ complaint.  Starbucks appealed this original decision, but while the appeal was pending, Congress passed the Trademark Dilution Revision Act of 2006 (“TDRA”), which amended portions of the federal trademark law relevant to the case, resulting in the case being remanded.   The district court again ruled in favor of Black Bear, and Starbucks again appealed.  On appeal, the Second Circuit remanded again, instructing the district court to reconsider Starbucks dilution claim based on its interpretation of the TDRA provisions.  Once again, the district court found in favor of Black Bear, and once again Starbucks appealed.

On appeal, the Second Circuit made its own conclusions regarding the elements of Starbucks’ dilution case, under the TDRA.  The appellate court refused to revisit its previous conclusion that the “Charbucks” mark is only minimally similar to Starbucks famous mark.  The court also rejected Starbuck’s arguments that Black Bear’s admitted intent to create an association raises a strong presumption of actual association, and that Starbuck’s proffered survey evidence proved a high degree of association.  The court then conducted its own weighing of the factors, and concluded that—although four of the six factors favored Starbucks—the overall determination based on the weight afforded each factor favored a finding that there was not a likelihood of dilution. The court concluded that what ultimately tipped the balance was that Starbucks meet its burden due to the combination of fundamentally flawed survey evidence and minimal similarity of the marks.

The full court opinion is available here.  

MVS Filewrapper® Blog: New and Useful - February 21, 2013

·         In U.S. Polo Assoc., Inc. v. PRL USA Holdings, Inc., the Second Circuit Court of Appeals found that the natural zone of expansion doctrine did not permit the United States Polo Association (“USPA”) to expand its offerings into a line of fragrances and affirmed the district court’s entry of a permanent injunction prohibiting such use.  The USPA filed a declaratory judgment to approve use of its Double Horseman mark, accompanied by the words “U.S. POLO ASSN.,” “USPA,” and/or “1890,” in the sale of men’s fragrances.  PRL counterclaimed, seeking entry of a permanent injunction precluding such use—which the district court granted.  USPA’s argument was centered on the, so called, natural zone of expansion doctrine.  USPA argued that its history of selling branded apparel provided it with the right to expand into related markets, i.e., apparel sales give rise to the right to expand into fragrances.  The district court gave little weight to USPA’s survey and found that PRL’s survey gave strong evidence of a likelihood of confusion.  The Second Circuit found that the district court’s holdings regarding the survey evidence did not abuse its discretion and that the previous litigation and USPA’s history did not support USPA’s argued natural right to expand.

·         In Function Media, L.L.C. v. Google, Inc., the Federal Circuit Court of Appeals held that the denial of a pre-trial motion for summary judgment of non-infringement is not sufficient to show that the district court delegated claim construction to the jury.  Function Media (“FM”) sued Google for infringement of three patents directed at “facilitate[ing] advertising on multiple advertising outlets such as newspapers and websites.”  Slip op. at p. 2.  The district court held that one patent was invalid for being indefinite “because the specification did not disclose sufficient structure for its sole independent claim’s means plus function term ‘means for transmitting.’”  Id. at pp. 5–6 (citations omitted).  A jury found the asserted claims in other two patents invalid and not infringed.  FM moved for judgment as a matter of law (“JMOL”) that the claims were not invalid, which the district court granted with respect to four claims.  This did not alter the jury verdict of non-infringement. 

FM appealed on a number of grounds, including an assertion that the district court gave the claim interpretation to the jury.  The argument was based on the fact that the district court denied Google’s motion for summary judgment of non-infringement. FM argued that the denial of summary judgment demonstrated that there were unresolved issues regarding claim scope, which were subsequently left to the jury rather than construed by the court.  The Federal Circuit did not agree that the district court improperly gave the claim interpretation to the jury, the Federal Circuit stated, “We hold that the denial of a pre-trial motion for summary judgment of non-infringement does not, by itself, show that the district court delegated claim construction to the jury.  This is especially true where, as here, the jury was instructed to apply the district court's claim constructions.”  Id. at pp. 21–22. 

·         In Cephalon, Inc. v. Watson Pharma., Inc. , the Federal Circuit Court of Appeals reversed a district court’s holding of invalidity for lack of enablement stating, “Watson failed as a matter of law to show with clear and convincing evidence that Cephalon’s patents require undue experimentation to practice the invention.”  Slip op. at p. 2.  Throughout the discussion of enablement, the Federal Circuit highlighted that the burden is on Watson to show lack of enablement—undue experimentation—and to do so by clear and convincing evidence.  The district court’s analysis was that, “the disclosures lacked teachings directed to formulating and co-administering two separate dosage forms . . . to achieve an effervescent reaction.  The lack of disclosure of such methods of co-administration would, according to the court, necessitate undue experimentation to practice the invention.”  Id. at p. 11 (citations omitted).  Watson merely provided “[u] nsubstantiated statements indicating that experimentation would be ‘difficult’ and ‘complicated.’”  Id. at pp. 15–16.  The Federal Circuit found that these statements did not meet the standard of clear and convincing evidence to establish undue burden as opposed to reasonable experimentation.  As such, the Federal Circuit reversed the district court’s holding of invalidity and remanded.

·         The United States Patent and Trademark Office published the final rules and guidelines governing First-Inventor-to-File.  (  There were two separate Federal Register publications and each is briefly discussed below.  A more thorough discussion of each is forthcoming.

o   Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act

This publication sets forth the changes that will be necessary to implement the First-Inventor-to-File standards.  It addresses changes regarding each of the following:

§  The addition of definitions in the AIA to the rules of practice;

§  The submission of affidavits or declarations regarding:  disclosures in priority disputes under the first-to-file standards and prior public disclosures;

§  Standards regarding a U.S. Patent or Published Applications having a prior art effect as of the filing date of a foreign priority application;

§  Elimination of the provisions regarding statutory invention registrations; and

§  Adoption of requirements for nonprovisional applications filed on or after March 16, 2013, that claim priority to or the benefit of the filing date of an application filed prior to March 16, 2013.

o   Examination Guidelines for Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act

This publication sets forth the changes the changes to the examination guidelines under the First-Inventor-to-File standard.  The publication is also meant to clarify and respond to questions provided during the public comment period regarding whether there is a requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure.

Supreme Court: NFL collective licensing of trademarks not immune from Section 1 antitrust scrutiny

Monday the Supreme Court unanimously held the NFL's practice of collectively licensing the trademarks of all 32 individual teams is not immune from antitrust scrutiny under Section 1 of the Sherman Act.  The NFL argued that because the marks are all licensed through a single entity, NFL Properties, there was no "contract, combination, . . . or conspiracy" under § 1, and therefore there could be no antitrust problem.

The Court disagreed.  The Court first observed the question of whether there is a "single enterprise" is not dependent on the specific legal structure of the entities.  As stated by the Court (internal citations omitted):

The relevant inquiry, therefore, is whether there is a "contract, combination . . . or conspiracy" amongst "separate economic actors pursuing separate economic interests," such that the agreement "deprives the marketplace of independent centers of decisionmaking," and therefore of "diversity of entrepreneurial interests," and thus of actual or potential competition.

Applying this framework, the Court held the existence of NFL Properties was not sufficient to prevent a "contract, combination . . . or conspiracy" and therefore avoid § 1 scrutiny.  The teams are "sparately controlled, potential competitors with economic interests that are distinct from NFLP's financial well-being." 

Despite holding the NFL's actions were subject to review under § 1, the Court did not pass on the merits, and noted some aspects of the NFL may provide a sufficient justification of its licensing practices under the Rule of Reason.  Ultimately, it will be up to the district court to address the merits of the case and determine whether there is a § 1 violation.

Click below for more detail of American Needle, Inc. v. National Football League and links to media coverage of the case.


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