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Shlesinger, Arkwright & Garvey, LLP Ranked for Patents and Trademarks

Shlesinger, Arkwright & Garvey, LLP is ranked in the top 33 in the number of utility patents, design patents and trademark registrations obtained for clients in 2017.  In a recent ranking of law firms, SAG LLP was ranked #33 in the number of utility patents, #31 in the number of design patents, and #33 in the number of trademark registrations obtained for clients in the United States.
 

Chief Wahoo Logo Removed from Cleveland Indians Uniforms

The Cleveland Indians have announced that they will remove the Chief Wahoo Logo from the team's jerseys and hats in 2019.  The logo is depicted here:

Image result for chief wahoo

According to the ESPN article about the decision, the team has agreed that the logo is no longer appropriate for "on field use".  However, the team will continue to use the logo on merchandise.

This decision is interesting, because an owner of a trademark must use the mark in interstate commerce to retain rights in the mark.  The Cleveland Indians own a federal registration for the log for a variety of goods and services, including jewelry, paper goods, glassware, clothing, toys and entertainment services.  If the team stops using the mark in connection with any of these goods and services, they will lose rights in the mark for those goods or services.  This puts them in an interesting quandary.  If the logo is inappropriate, should they stop using it completely?  However, if they stop using it, they will lose their trademark rights, allowing someone else to use and register the logo.  So, is the question one of control vs. appropriateness?  They can't prevent others from using the logo without using it themselves.
 

Proper Use of a Trademark

Two recent events have reminded us of the importance of the proper use of a trademark.  First, the TTAB issued a precedential opinion concerning the specimen of use for a service mark.  In re Pitney BowesIn this case, the TTAB ruled that the applicant's explanation of the specimen clarified the specimen and that the Trademark Office should have accepted the specimen as proper use of the mark.  The ruling was based on precedent and The TMEP (specifically, Section 1301.04).  Second, Alexandra Roberts, an Associate Professor at UNH Law School wrote a gif filled article about trademark use.  We aren't sure we would use that many gifs, however the article provides a brief overview of the requirements of trademark use.

Use of a trademark gives the owner common law rights in the U.S.  Proper use is required for registration (with exceptions for foreign applicants that own foreign registrations under certain requirements).  Even though Pitney Bowes was able to get their mark registered, the TTAB case re-emphasizes that you should make sure you are using your mark properly before alleging use with the Trademark Office.  This will improve your chances of registering your mark and prevent additional hassles and requirements during the registration process.

What Could Have Been - Copyrights

The 1976 Copyright Act (effective in 1978) extended the term of a Copyright to the life of the author plus 70 years for works created by individuals and 95 total years for works "created" by corporations or works made for hire.  Prior to 1976, the maximum term of a copyright was 56 years (an initial term of 28 years that could be extended for an additional 28 years upon renewal).  If not for the Copyright extension, several well known works would have entered the public domain this year.  These include:

- Catch-22, by Joseph Heller (book)
- James and the Giant Peach, by Roald Dahl (book)
- Breakfast at Tiffany's (movie)
West Side Story (movie)
- Splendor in the Grass (movie)
- Judgment at Nuremberg (movie)
- The Hustler (movie)
- Stand by Me, by Ben E. King. Jerry Leiber and Mike Stoller (song)
- Let's Twist Again, by Kal Mann and Dave Appell (song)
- Surfin', by Brian Wilson and Mike Love

Alas, these works all remain protected by copyright.  They will, however, enter the public domain in 2057.  So only another 39 years.

Creepy IP and Lessons Learned

During the month of October, the US Patent and Trademark Office used the hashtag, #CreepyIP, to tweet about patents and trademarks related to Halloween or other scary subjects.  This was a fun exercise by the USPTO and Shlesinger, Arkwright & Garvey enjoyed looking at the various types of intellectual property displayed on Twitter.  We re-tweeted several of the postings by the USPTO.  In addition to the enjoyment at seeing the various types of "Creepy IP", the tweets reminded us of the importance of protecting intellectual property.  The "Creepy IP" included home protection devices, decorations, masks, a tombstone, a life preserving bubble and many other patented products.  In addition, several trademarks were tweeted.  This is a reminder to everyone that many different types of inventions can be patented.  With respect to trademarks, aside from standard protection of a brand for the primary product, there are other techniques and requirements for protecting a trademark (for example, the title of an individual work can not be registered, but the title of a series of works can).  Other Intellectual Property Offices, including the European Intellectual property Office and the Canadian IP Office, had some fun with #CreepyIP during October, too.  You can see some of these examples on our Twitter page, @SAGLLP .

College Rivalries Never End

In an opposition to registration of the mark, HOKIE, the opposer, HOOS, LLC, a one person LLC in Virginia that stands for Hokie Objective Onomastics Society, LLC, founded by a graduate of the University of Virginia, failed to prove that the term HOKIE is generic for education and entertainment services, or that Applicant, Virginia Polytechnic Institute and State University (VA Tech), improperly used the ® symbol of registration or abandoned the mark.  Hokie Objective Onomastics Society, LLC v.  Virginia Polytechnic Institute and State University.  The TTAB resolved several evidentiary issues before reaching its decision.  In the decision, the TTAB ruled that the opposer failed to prove by a preponderance of the evidence that the term "hokie" is recognized by the general public as referring to generic education and entertainment services.  Instead, the evidence demonstrated that this term refers to education and entertainment services offered by VA Tech.  With respect to abandonment, the opposer failed to properly introduce evidence of naked licensing of the mark, and therefor failed to prove abandonment.  Finally, the opposer failed to prove that VA Tech improperly used the ® symbol of registration with the intent to deceive the purchasing public or others in the industry that the mark is registered.

People familiar with the University of Virginia know that Hoos is a common nickname for the athletic teams and supporters of the UVA Cavaliers, one of VA Tech's biggest rivals.  The name of the opposer, HOOS, LLC, and the alma mater of the one member of the opposer, makes this case a little more interesting.  The TTAB may not agree, as they made the decision non-precedential.

What Is a Descriptive Trademark: PERSON

The TTAB recently ruled that the mark, PERSON, is not descriptive for a broad range of wearable electronic devices.  In re Caleb Suresh MotupalliA descriptive trademark is a mark that immediately conveys knowledge of a quality, feature, function characteristic or purpose of the goods or services for which it is used.  The Examining Attorney argued that a "person" is the user of the wearable electronic devices and therefor the mark was descriptive of a feature of the goods, namely, the type of being that would use the goods.  The term "person" was distinguished from animals, who may also wear such goods.  The TTAB disagreed.  The TTAB ruled that the term "person" was so broad, it would describe the consumer of all goods and services.  Further, the TTAB ruled that the Examining Attorney did not present evidence that demonstrates that the term "person" describes a feature of these goods with a degree of particularity.  Thus, the mark was approved for registration.

Does this mean PERSON is not descriptive for any goods or services?

Would LEGS be descriptive of pants?

When is A Win on Appeal not a Win?

On September 6, 2017, The Trademark Trial and Appeal Board (the Board) issued a decision granting an opposition to registration of the mark, PRETZEL CRISPS, on the Principal Register, and cancelling a Supplemental Registration of the mark PRETZEL CRISPS.  The decision can be found here.  The Board had originally granted the opposition and cancelled the registration in a decision issued on February 28, 2014, Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014).  On appeal, the Federal Circuit vacated the decision and remanded the case to the Board after finding that the Board had used an incorrect standard.  Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015).  So Princeton Vanguard won, right?  No.

On remand, the Board asked the parties to re-brief the case on the original record.  The Board then came to the same conclusion:  the mark, PRETZEL CRISPS, as used on pretzel crackers is generic.  Even on remand, Princeton Vanguard lost both registrations.

Shlesinger, Arkwright & Garvey, LLP in Top 50 for Patents

Shlesinger, Arkwright & Garvey, LLP is  ranked #45 in the number of Utility patents obtained for clients in 2016.  In a recent ranking of law firms, SAG LLP was ranked #45 in number of Utility patents obtained for our clients in the United States.

Venue in Patent Litigation
The Federal Circuit has clarified the rules concerning venue in patent litigation.  In In re Cray Inc., the Federal Circuit ruled that an employee who telecommutes from a particular judicial district does not create a "regular and established place of business" in that district.  If the defendant does not have a "regular and established place of business" in the judicial district, venue is not proper.  In reaching the decision, the Federal Circuit considered factors such as whether the employee may move without the consent of the employer; whether the defendant owned, leased or exercised any control over the home; whether living in the judicial district was a requirement of employment; and other factors.  The ultimate decision rests on the idea that the "regular and established place of business" must be of the defendant, not the defendant's employees.  This decision will make it harder for plaintiffs to file suit in friendly venues.


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