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Douglas Panzer
March 24, 2015

Breaking News: Supreme Court Says TTAB Finding of Confusion Can Bar Litigation of Same Question

Posted By Douglas Panzer @ 11:46 am
Filed under: Likelihood of Confusion,Litigation,Registration,Trademarks,TTAB

The 18-year trademark dispute in B&B Hardware, Inc. v. Hargis Industries, Inc. has been decided by the Supreme Court in an opinion issued this morning (case 13-352).  The Court summarized the facts as follows:

Respondent Hargis Industries, Inc. (Hargis), tried to register its trademark for SEALTITE with the United States Patent and Trademark Office pursuant to the Lanham Act. Petitioner, B&B Hardware, Inc. (B&B), however, opposed registration, claiming that SEALTITE istoo similar to B&B’s own SEALTIGHT trademark. The Trademark Trial and Appeal Board (TTAB) concluded that SEALTITE should not be registered because of the likelihood of confusion. Hargis didnot seek judicial review of that decision.Later, in an infringement suit before the District Court, B&B argued that Hargis was precluded from contesting the likelihood of confusion because of the TTAB’s decision. The District Court disagreed.The Eighth Circuit affirmed, holding that preclusion was unwarranted because the TTAB and the court used different factors to evaluate likelihood of confusion.

In a ruling that seems surprising at first blush, the Supreme Court held “[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before a district court, issue preclusion should apply.”

This holding therefore permits issue preclusion before an Article III court to be based upon a finding by an administrative agency of the executive branch.  The majority thoroughly and carefully explained that this was appropriate based on the “straightforward” idea that “once a court has decided an issue, it is forever settled as between the parties.”  Citing the Restatement of Judgments, the Court explained further that the precluded issue need not be raised in two courts, but also “where a single issue is before a court and an administrative agency, preclusion also often applies.”

The Court’s opinion dealt with several technical issues, including the fact that Hargis did not advance an argument that giving issue preclusive effect to an administrative decision would be unconstitutional.  Rather, Hargis based its argument on a narrow construction of the Lanham Act.  Nonetheless, the Court did away with any Constitutional question, mentioning that “the Court has already held that the right to a jury trial does not negate the issue preclusive effect of a judgment, even if that judgment was entered by a juryless tribunal. See Parklane Hosiery Co. v. Shore, 439 U. S. 322, 337 (1979).”

The majority opinion summarized its reasoning:

The real question, therefore, is whether likelihood of confusion for purposes of registration is the same standard as likelihood of confusion for purposes of infringement. We conclude it is, for at least three reasons. First, the operative language is essentially the same; the fact that the registration provision separates “likely” from “to cause confusion, or to cause mistake, or to deceive” does not change that reality.3 See 2 Gilson §5.01[2][a], at 5—17 (explaining that “the same statutory test” applies). Second, the likelihood-of-confusion language that Congress used in these Lanham Act provisions has been central to trademark registration since at least 1881. See Act of Mar. 3, 1881, ch. 138, §3, 21 Stat. 503 (using a “likely to cause confusion” standard for registration). That could hardly have been by accident. And third, district courts can cancel registrations during infringement litigation, just as they can adjudicate infringement in suits seeking judicial review of registration decisions. See 15 U. S. C. §1119; 3 McCarthy §21:20.

While seemingly well-reasoned and thorough in its analysis, Justice Thomas writes in his dissent, “[t]he majority does not address the distinction between private rights and public rights or the nature of the power exercised by an administrative agency when adjudicating facts in private-rights disputes. And it fails to consider whether applying administrative preclusion to a core factual determination in a private-rights dispute comports with the separation of powers.”

The 7-2 decision firmly establishes that TTAB findings of likelihood of confusion can bar litigation of the same question in federal court and no separation of power question exists.

Opinion [PDF]: 13-352_B&B Hardware v Hargis SCOTUS

March 6, 2015

Hall & Oates Go All Maneater on Haulin’ Oats Cereal Maker Over Trademark

Posted By Douglas Panzer @ 11:56 am
Filed under: Music,Offbeat,Trademarks

Lawyers on behalf of Darryl Hall and John Oates filed a complaint in federal district court in New York on Wednesday alleging trademark and service mark infringement, as well as unfair competition against Brooklyn, NY company Early Bird Foods & Co., LLC, based on the latter’s marketing and sale of (exorbitantly expensive) granola under the brand name “Haulin’ Oats.” One interesting part in all of this is that Hall and Oates aren’t just suing Early Bird because the company came up with a (semi-)creative, but unauthorized play on the singers names. No, Hall and Oates’ business entity, Whole Oates Enterprises, actually owns a federally registered trademark in the phrase “Haulin’ Oats” (U.S. Reg. No. 4345444). “This mark was assigned to Whole Oats in 2014 by a Monterey, California/Nashville, Tennessee cereal entrepreneur who appears to have been the first to go to market with the witty breakfast brand. According to the complaint against Early Bird, Whole Oats “entered into a business relationship [in 2014] whereby Haulin’ Oats assigned to Whole Oats its trademark and service mark rights in and to the mark HAULIN’ OATS (including the United States Trademark and Service Mark Registration identified above) and [Whole Oats] granted a royalty-based license back to Haulin’ Oats.”

So, everybody thought this was just about Hall & Oates protecting their music-related brand. Nope – they actually are in the cereal business. Who knew?!

I almost forgot to throw in the musical puns:

Hall & Oates say “I can’t go for that” over competing cereal brand…

Hall & Oates hope you say “your grits are on my list”…

Cereal maker trying to trade off the Hall & Oates name - say it isn’t so…

Read the complaint here: Whole Oats v Early Bird Complaint

January 29, 2015

Business Flexibility in Trademark Licensing as Taught by Taylor Swift

Posted By Douglas Panzer @ 4:27 pm
Filed under: Licensing,Music,Registration,Trademarks

Website Vox.com reported on January 28 (with a citation to Twitter user @imbeccable) that Taylor Swift has filed an application to register the trademark “This Sick Beat.” What most don’t know is this is just another step in Swift’s clearly well-advised operation of her growing business empire.

Swift presently has 100 live trademark registrations or applications (and a few dead ones). The marks even include registrations in 19 different classes for the name “Taylor Swift” or a stylized version of the name.

So why is this worthy of an intellectual property law blog entry? There is actually a good business lesson to be learned here.

From a legal practice note perspective, it’s interesting that Swift’s attorneys chose to file a separate application for each class of use for each mark. While not necessary, this certainly provides a very convenient mechanism – despite the initial data entry – for record keeping relating to, and potential licensing or assignment of, any of the individual registrations. The use of, for example, “Taylor Swift Fearless” could be easily licensed to one manufacturer by reference to the 3966410 registration, without any confusion regarding the right to use the mark on other classes of goods, while another manufacturer could be licensed to use the same mark on posters by reference to the 3966409 registration. Similarly, cancelation, abandonment, opposition or any other legal event affecting the registration itself remains contained to the individual registration.

And in case you’re wondering, registration and renewal fees would be the same whether filed as one application with multiple classes, or multiple registrations, each for a single class. Pretty good lawyering you got there, Taylor.

In case you’re curious, here are Taylor Swift’s current registrations and pending applications:

Taylor Swift Trademarks

Taylor Swift Trademarks

Taylor Swift Trademarks

Taylor Swift Trademarks

Taylor Swift Trademarks

(h/t Gretchen Geisser for cueing up this topic.)

August 27, 2014

ALS Association Files for Ice Bucket Challenge Trademark Registration

Posted By Douglas Panzer @ 10:59 am
Filed under: Trademarks

This is actually going to be interesting.  The Amyotrophic Lateral Sclerosis Association – better know to you and me as the ALS Association – filed two applications on August 22, 2014, to register the trademarks in ICE BUCKET CHALLENGE and ALS ICE BUCKET CHALLENGE.  Both applications claim the exclusive right to use the mark in connection with Charitable Fundraising (international class 36).  So, you ask, why is this so interesting?

The applications for registration claim a date of first use of the mark in commerce on August 4, 2014.  It’s conceivable that someone could object to ALS Association’s attempt to legally lock up this name on the basis that ALSA’s use was not first.  That is, because people began doing the ice bucket challenge before August 4, someone else is actually the rightful first user of the mark.  That seems far-fetched in this context, but it raises the question in the broader context: If a grassroots campaign develops a slogan or some other type of mark, is the organization benefiting from that mark entitled to claim exclusive rights to use in the mark?

I will update the status of the Ice Bucket Challenge applications as they change.  The outcome and any hiccups in the application process will be instructive for future attempts to herd the cats of viral marketing in an effort to legally manage the trademarks that grow out of the campaigns.

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