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SCOTUS decides trademark dispute in favor of Booking.com

This past June, the U.S. Supreme Court decided that Booking.com, a travel reservation company could trademark its name.  The ruling overrules the United States Patent and Trademark Office which determined that the name was “generic.”  The United States Supreme Court determined that the name was distinct enough to trademark. 

The dispute arose as the company attempted to trademark its name but was refused on the grounds that the name was “generic” as it was a term for a category of services.  The addition of “.com” did not transform it into a protected trademark.  The court relied in part on surveys that Booking.com refers to a particular company and not a general online hotel reservation service.

In general, trademark registration is likely of a mark if it is inherently distinctive as opposed to being “merely descriptive.”  A descriptive term could be eligible for registration if it has obtained “acquired distinctiveness” or “secondary meaning,” something that must be proven.  Booking.com presented an interesting question because it was denied registration on the basis of being generic.  The USPTO argued that the addition of “.com” to the name did not provide any “protectable meaning” to an otherwise generic term. 

The Court argued that the determination of generic is dependent on its meaning to its consumers. 

The ruling is considered narrow in scope because adding “.com” to any generic term will not mean that the mark applicant will receive a registration. There is still the hurdle of proving that the mark has acquired distinctiveness and is associated by consumers with a specific source of goods or services. 

The ruling does provide another layer of protection for brands that may have a presence online.  Whether or not we will see an expansion in trademark registrations based on the ruling is something to monitor.    

Court grants Summary Judgment in favor of Activision over use of Humvee in Call of Duty

Activision, the makers of the Call of Duty, received a win in the U.S. District Court for the Southern District of New York over AM General, LLC from a lawsuit stemming from the use of Humvees in its video game.  The Court determined that the use of the vehicle without authorization did not infringe on the company’s trademark as the game makers were protected by the First Amendment.

Humvee Lawsuit – Order on MSJ by MMA Payout on Scribd

The Court also granted Summary Judgment for Major League Gaming, an esports league that was also a co-defendant in the lawsuit.

Call of Duty is a video game described in the opinion as one of the “most popular and well-known video game franchises in the world” with over 130 million units sold.  It is a first-person shooter series developed, produced, and distributed by Activision. 

The overarching issue with the lawsuit which drew many eyes from the IP community is the potential that it would muddle the test established in Rogers v. Grimaldi.  In that case, the Court endorsed a test as to whether the use of a mark has artistic relevance, and if so, whether the work is explicitly misleading.  The opinion states:

[t]he balance [between trademark interests and First Amendment speech interests] will normally not support application of the [Lanham] Act unless [the use of the trademark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [the use of the trademark] explicitly misleads as to the source or the content of the work.”

Essentially, courts must “strike the balance between the two competing considerations of allowing artistic expression and preventing consumer confusion.” 

The makers of Humvee, the Plaintiff in this case, indicated that the Court should establish an additional eight-factor test for consumer confusion set forth in Polaroid v. Polarad. Humvee argued that the “explicitly misleading” prong could be satisfied upon particularly compelling evidence of the likelihood of confusion. 

When acknowledging the Polaroid test, the Judge finds in favor of Activision as he believes that the use of Humvees in Call of Duty has some artistic relevance.  The Judge states, that “realism can have artistic merit in itself,” in supporting Activision’s argument for its use in the game. 


The opinion in the Humvee case may provide some guidance in interpreting the balance between the First Amendment and Lanham Act protections.  Here, the Court sided with Activision for its use of the Humvee in its video game because the depiction of realism has “artistic merit.”  The question is whether this ruling expands the bounds of First Amendment protection for those that would like to use brands in video games, video, books, etc.  One might argue that the definition of “artistic merit” under the guise of First Amendment is being expanded to depict realism. 

We will see if the makers of Humvee push back with an appeal. 

Who is ‘The Man’?

Professional wrestler Ric Flair has filed an application with the USPTO to utilize “The Man,” mark.  Registering the mark might be a tough task as World Wrestling Entertainment (WWE) has a character using the same moniker.

Flair, who has appeared off and on with the WWE for some time is drawing a line with The Man trademark and it appears that he might take legal action he the company opposes his application.  Women’s wrestler, Becky Lynch, is using “The Man” as part of her character with the WWE.

Flair, has used the nickname in the past, but never filed an application to get the mark registered.  Moreover, his specimen that accompanies the application doesn’t really show how he’s really used the trademark.

Via Wikimedia Commons

On the other hand, the WWE has used The Man mark to sell t-shirts for Lynch.  But, the WWE has not made a move to trademark the name despite the fact its aggressive in ensuring that it owns the marks for most of his characters.

Flair is cognizant that Lynch is using the mark and even staked a claim to it on twitter:


The application by Flair is still in the initial stages and has yet to be assigned an Attorney Examiner which would determine whether it would be suitable to be a registered trademark.  Still, the WWE could file a “Letter of Protest” noting that it would be confused with the WWE’s use of the mark.  We recently saw this used in order to defeat the initial application of Tom Brady. The WWE could file a Notice of Opposition preventing Flair from obtaining the mark.

Then again, Flair could make a showing that he’s been using the mark longer than the WWE and is entitled to the mark.  Flair told TMZ Sports that the reason why the WWE has not filed the lawsuit is because he’s been using it for a while.  Whether or not this is true, one has to wonder why the WWE had not filed a trademark for The Man. Even if they believed it would be denied for one reason or another, its branding and intellectual property division would have pushed for it.

The talk of trademarking catch phrases or “gimmicks” is an important detail in branding.  While The Man may seem generic to many, it holds some weight due to the popularity of Flair and his use of the tag line.  In recent weeks, we may have seen some go overboard (e.g., “Taco Tuesday” or “the”) in registering marks, but we have seen companies and people being cautious about protecting themselves from lawsuits.

“Tom Terrific” denied by USPTO

When should one file a trademark to protect their right to use it?  There have been several high-profile Tom Brady was criticized for his application to file “Tom Terrific.”

I addressed this issue on sports personality Mike Meltser’s podcast.  The New England Patriot’s quarterback filed for the trademark as a way to protect his legal interests.  He filed an intent-to-use application for T-shirts and shirts, collectible trading cards, sports trading cards and printed photographs.  However, New York fans were not having it.  A letter of protest was filed by a New York-based attorney and former USPTO examiner.

The Letter of Protest, which can be filed by a nonparty, brought to the attorney examiner’s attention that the application’s mark was similar to famous Met’s pitcher Tom Seaver’s nickname.  The Letter of Protest included a multitude of examples of media referring to Seaver as “Tom Terrific.”

Letter of Protest re “… by Jason Cruz on Scribd

The Mets also chimed in:

The USPTO issued a nonfinal Office Action refusing registration for the False Connection with Tom Seaver.  Also, it was refused because it was the name of a living individual.

It’s noteworthy to bring up that Brady had stopped the trademark application of Lacrosse player Trevor Baptiste for the registration of TB9 due to a likelihood of confusion with Brady’s TB12 trademark.  So, the initial refusal to trademark “Tom Terrific” seems ironic.

If not for the Letter of Protest, one might wonder if the mark would go through the process of being published for opposition.  Certainly, if published for opposition there would have been someone to have stepped up to object to the registration.  Of course, the examiner could have discovered the name’s tie-in with the Met’s pitcher themselves.  But its interesting that the Letter of Protest was filed to prevent Brady’s application from going forward.  It goes to show you that the Boston-New York rivalry is deep.

But with filing trademarks, Brady’s attempt to register “Tom Terrific” as valid reasons.  He indicated that he wanted to insulate himself from being sued in the oft-hand case that he were to use it.

A couple things on the denial.  Brady could file a response to the Office Action in which he could plead his case for registering the lawsuit.  However, he’s expressed regret in filing for the application.  Also, a maybe most importantly.  Tom Seaver’s estate, nor the Mets or Reds (the two teams for which his playing career is synonymous) have filed a trademark with the USPTO.  Therefore, Brady could still utilize the name barring any mark application with the USPTO and/or state level.

 

Nike strikes back against Kawhi logo lawsuit

Nike has filed counterclaims against Los Angeles Clippers’ Kawhi Leonard arising out of his claims that the company stole his logo that he wished to use with his current shoe sponsor, New Balance.

Leonard filed a lawsuit last month claiming that Nike had filed a Copyright based on a logo he claims to have made.  Nike argues otherwise.

In a recent court filing, Nike has filed counterclaims against Leonard stating that the company owns the copyright, he is infringing on the copyright and requesting that the Copyright office cancel Leonard’s design.  Nike suggests that he “knew that he did not author the Claw Design, and specifically knew of the Contract’s intellectual property ownership provision. “

The counterclaims cite an interview Leonard did in 2014 in which he stated that he had a ‘rough draft’ of his logo but Jordan Brand refined it and he gave them the ‘credit’ because he was no artist. They also claim that Leonard is attempting to ‘re-write history’ with his claims of creating the design.

The crux of the issue is that Leonard wanted to use the Claw Design for use with his new apparel sponsor, New Balance.  The company capitalized on Leonard’s success this past year when he helped the Toronto Raptors win an NBA Championship.  Since then, Leonard has moved on to the Los Angeles in a blockbuster shift of power in the league as he went to the Clippers along with Paul George.  With his move to Los Angeles, the hub of everything, the marketing for Leonard would be vital assuming that his representatives would want to monetize the situation.

As one might have expected there are two sides to a story and according to Nike, Leonard’s design was not stolen.  In fact, per Nike, the company enhanced a ‘rough draft’ of the drawing.  Can Leonard claim that the idea was originally his built upon by Nike?  Likely, but that does not provide a legal basis for ownership of the claw design.  Leonard may claim that the ‘rough draft’ drawing that Nike has produced was not final and he provided input which could be an argument to the counterclaims.

Once again, this is another reminder that contractual clauses within contracts should be detailed.