2.03 DECEPTIVE AND DISPARAGING MARKS Flashcards
DECEPTIVELY MISDESCRIPTIVE and DECEPTIVE
In re Berman Bros. Harlem Furniture (TTAB 1993)
FACTS: Furniture Retailer Attempting to Register FURNITURE MAKER
HELD: X
METHOD: Look to Dictionary Definitions of Words … Recognize Examiner’s Resources are Limited
DECEPTIVELY MISDESCRIPTIVE = Applicant Allowed to Show Secondary Meaning, Sec. 2(e)(1)
- It must be determined whether the proposed mark misdiscribes a characteristic, quality, function, composition or use of goods or services. … If so,
- Whether the misdescription is deceptive OR in other words, whether prospective purchasers are likely to believe that the misdiscription actually describes the goods or services.
ALLOWANCE, Sec. 2(f) [Not Listed as Exclusion] = Applicant Allowed to Register IF Provides Proof They Have Developed Secondary Meaning
DECEPTIVE = “More Damning” … Requires Third Element of Test, § 2(a)
DISTINCTION = X
- Misdiscription is likely to materially affect the decisions to purchase the product or services.
NO ALLOWANCE, Sec. 2(f) [ Specifically Excludes ] = Cannot Show Secondary Meaning
GEOGRAPHICALLY DESCRIPTIVE
Sec. 2(e)(2)
American Waltham Watch v. US Watch (S.J.Ct. Mass. 1899)
GEOGRAPHICALLY DESCRIPTIVE, When used on or in connection with the goods of applicant is primarily geographically descriptive of them, except as indications of regional origin may be registerable under Sec. 4
SIMILAR TO PERSONAL NAMES
- FACTS: US Watch Trying to Label Watches as Made in “Waltham” → Same as Personal Names
- USUAL RULE: Allows Manufactures to Say Where Something is Made UNLESS Another Manufacturer Establishes They Have Secondary Meaning in the Mark Associated with the Name of the Place
GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE
§ 2(e)(3) Corporacian Habanos v. Anncas (TTAB 2008)
FACTS: Trying to Get Havana Club on Cigars Prior to Thawing of Relations NO Trade for Cigars to Come from Cuba
- The primary significance of the mark is a generally known geographic location,
- Must SHOW the Primary Significance of the Mark is X - The consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e. that a goods/place association exists), when in fact the goods do not come from that place, and
- Goods / Place Association Exits
- Where Do the Goods Actually Come From - The misrepresentation was a material factor in the consumer’s decision.
- Goods / Place Association is Material to Consumer
GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE
AND
SECONDARY MEANING
In re California Innovations (Fed. Cir. 2003)
FACTS: Canadian company trying to register CALIFORNIA INNOVATIONS
NO SECONDARY MEANING
Sec. 2(e)(3) Same as Sec. 2(a) Analysis Post NAFTA
NAFTA / TRIPS = Each Party Shall Provide … “the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good.”
HOLDING / MEANING: Makes it Harder for Examiner to Exclude
(???) Sec. 2(f) Specifically Excludes … Federal Supremacy = Totally Unenforceable (???)
GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE
APPLICATION
(???) Get to Use Geographic Name IF From the Region, NOT Allowed to Confuse Consumer as to Origin (???)
Most Likely Primarily Geographically Deceptively Misdescriptive IF Goods are Known to Come from the Region (In re California Innovations)
But Perhaps NOT IF Region NOT Known for It … e.g., ANTARTICA NOT Known for Anything, Known for Not Making Anything (Note 1 at 176)
Goods / Place May Exist ‘IF There is Sufficient Nexus / Connection’ (Habanos)
- E.g., Nantucket Nectars HQ in Nantucket but NOT Manufacturing
- E.g., Primary Component ( MORE THAN Seed Imported 40 Years Before ) From Region
WINE and SPIRITS
X
DISPARAGING MARKS, Sec. 2(a) Statutory Bar
Test
In re Heeb Media (TTAB 2008)
- Term as Used for the Good in Question Retains Disparaging Meaning
- How is Term Understood / Used in Market Place NOT Intention of Applicant
- Use of Dictionaries, etc. Allowed - Understood as Disparaging by Substantial Composite of Referenced Group Though
- Looking at ENTIRE Referenced Group NOT Necessarily the Majority
- BUT Must Properly Define the Referenced Group
USPTO has Burden of Showing Disparaging by Substantial Evidence > Scantila of Evidence
- Put on Supplemental Register
- Someone who has standing before USPTO brings in evidence to challenge
USPTO NOT Bound by Prior Decisions
DISPARAGING MARKS
First Amendment
In re Tam (Fed. Cir. Dec. 22, 2015)
THE SLANTS … Asian American Band Name Trying to Reclaim the Term Seeks Trademark ( Expression )
HELD = STRICT SCRUTINY APPLIES = USPTO Cannot Deny Government Benefit Based on Content, Disparagement
Found = 2(a) Regulates the Content of Speech NOT a Function of Commercial Speech
Found = 2(a) Significantly Chills Speech, Influences Which Marks are Sought
Found = TM NOT Government Speech (Different form Licenses Plates)
- Not Created by Government
- Not Controlled by Government
- If Trademark is Speech, Then So is Copyright
NOTE … FED. CIR. Determines Law for PTAB … SCOTUS Probably Going to Take It
ISSUES
In re Tam (Fed. Cir. Dec. 22, 2015)
“Supreme Court has said trademarks are a form of commercial speech and nothing more.” … Central Hudson (ca. 1980)
- Substantial Government Interest
- Regulation Advances that Interest
Test for Disparagement Does NOT Look at Intent of Applicant (e.g., Political Statement)
Trademark is an Exclusive Right to Use in Commerce (Applicant is Seeking for Commercial Purposes) … Trademark Does Not Prevent People from Using a Phrase
Trademark is Identification of Product in Commerce NOT Expression (Copyright)
AD = What keeps the government out of speech the most? … No Trademark
… Don’t Issue Trademarks When the Mark Sought Itself a form Expression?
PMG: Commercial = TM; First Amendment Expression = No TM
AD: What about Trademarks in Non-Profits Needing to Protect Their Message?
… Marks Cannot Be Expression Itself
… Mark Can Be Used by Those Who Express Themselves to Identify Themselves
NOTE: If exam asks about immoral … Argue Whether In re Tam Applies
Disparagement (Can’t Take this Side of Issue) vs. Immoral (Social Norm)
