Justia U.S. Federal Circuit Court of Appeals Opinion Summaries

Tam, the “front man” for Asian-American dance rock band The Slants, filed the 263 application, seeking to register the mark THE SLANTS for “Entertainment, namely, live performances by a musical band.” Tam attached specimens featuring the band name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent under 15 U.S.C. 1052(a) and refused to register it. The Trademark Trial and Appeal Board dismissed for failure to file a brief and the application was deemed abandoned. Tam then filed the 044 application, seeking to register the mark THE SLANTS for identical services as in the 263 application. In the 044 application, Tam claims use of the mark since 2006. Specimens attached to the 044 application do not contain Asian motifs. The examining attorney again found the mark THE SLANTS disparaging and declined to register it. The Board affirmed, stating that “it is abundantly clear from the record not only that THE SLANTS . . . would have the ‘likely meaning’ of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances.” The Federal Circuit affirmed. View "In re: Tam" on Justia Law

TriVita filed trademark application Serial No. 77/658,158 to register the mark NOPALEA on the Principal Register for dietary and nutritional supplements “containing, in whole or in substantial part, nopal juice.” The examiner rejected the application under section 2(e)(1) of the Lanham Act as “descriptive of a feature of applicant’s goods on the grounds that applicant’s products contain nopal which is derived from an [ex]tract of the nopalea plant.” The Trademark Trial and Appeal Board and the Federal Circuit affirmed, rejecting an argument that “nopalea plant” is not a term used in the food industry, and that the term is not descriptive because TriVita’s products contain extracts from the Opunti genus of nopal cactus, not the Nopalea genus. Various websites show Nopalea as the name of a genus of cactus used in food and supplements. Some of TriVita’s affiliates explicitly state on their website that TriVita’s products were derived from the Nopalea cactus. Consumers may well assume, as do some of TriVita’s affiliates, that, as a characteristic of nopal juice, TriVita’s goods derive from genus nopalea. View "In re: Trivita, Inc." on Justia Law

In May 2008, Couture applied to register the service mark PLAYDOM under Lanham Act, 15 U.S.C. 1051(a), submitting a “[s]creen capture of [a] website offering Entertainment Services in commerce.” His website, www.playdominc.com, then included only a single page, stating: “[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: playdominc@gmail.com,” with the notice: “Website Under Construction.” No services under the mark were provided until 2010. The PLAYDOM mark was registered by the U.S. Patent and Trademark Office in January 2009. On February 9, 2009, Playdom, Inc. applied to register the identical mark. The registered mark was cited as a ground for rejecting the application. Playdom, Inc. sought to cancel the registration of Couture’s mark as void ab initio because Couturehad not used the mark in commerce as of the date of the application. The Board granted cancellation, stating that Couture “had not rendered his services as of the filing date of his application” because he had “merely posted a website advertising his readiness, willingness and ability to render said services.” The Federal Circuit affirmed. View "Couture v. Playdom, Inc." on Justia Law

Newbridge, headquartered in Newbridge, Ireland, designs, manufactures and sells housewares and silverware around the world under the mark NEWBRIDGE HOME. Newbridge designs its products in Newbridge, Ireland, and manufactures someof its products there. In the U.S. its products are available for sale through its website and through retail outlets that feature products from Ireland. The NEWBRIDGE HOME mark is the subject of an International Registration, which was filed through the International Bureau of the World Intellectual Property Organization. Newbridge sought protection of the mark pursuant to the Madrid Agreement and Madrid Protocol, under which the U.S. Patent and Trademark Office (PTO) examines international registrations for compliance with U.S. law, 15 U.S.C. 1141. Newbridge disclaimed the word HOME apart from the mark as a whole in the application. It sought registration for listed items of silverware, jewelry, desk items and kitchenware. The Trademark Examiner refused to register the mark as being primarily geographically descriptive. The Trademark Trial and Appeal Board affirmed. The Federal Circuit reversed. The evidence as a whole suggests that Newbridge, Ireland, is not generally known; to the relevant public the mark NEWBRIDGE is not primarily geographically descriptive of the goods, which is what matters. View "In re: Newbridge Cutlery Co." on Justia Law

St. Helena conducts a 10-day residential health improvement program at its California in-patient facility. St. Helena applied to the U.S. Patent and Trademark Office to register the mark “TAKETEN,” identifying the service as “[h]ealth care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program” in class 44. The examiner refused to register the mark, citing likelihood of confusion with the “TAKE 10!” mark shown in the 657 Registration and commonly owned U.S. Registration 182 for the mark “TAKE 10! (and Design). Both cited registrations are for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness” in class 16. The registration for “TAKE 10! (and Design)” also identifies goods in class 9: “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs.” The Trademark Trial and Appeal Board affirmed under 15 U.S.C. 1052(d). The Federal Circuit reversed, agreeing with the Board’s assessment of the respective marks themselves, but holding that substantial evidence did not support the denial based on the 657 Registration, given the dissimilarities in the respective services and goods and the high degree of consumer care. View "In re: St. Helena Hosp." on Justia Law

Stauffer, pro se, filed a qui tam action against Brooks Brothers under the then-version of the false-marking statute, 35 U.S.C. 292, claiming that Brooks Brothers marked its bow ties with expired patent numbers. In 2011, while the action was pending, the President signed into law the America Invents Act, 125 Stat. 284A, which eliminated the false-marking statute’s qui tam provision, so that only a “person who has suffered a competitive injury” may bring a claim. The AIA also expressly states that marking a product with an expired patent is not a false-marking violation and that the amendments apply to all pending cases. Stauffer argued that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, violating the doctrine of separation of powers, and also violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The district court dismissed for lack of standing. The Federal Circuit affirmed, finding that the amendments did not constitute a pardon and that even if the law had not changed, Stauffer might have lost his lawsuit, and, therefore, could not have acquired a private-property interest in his share of the statutory penalty. View "Stauffer v. Brooks Brothers, Inc." on Justia Law

Nordic sought trademark registration for CHILDREN’S DHA for nutritional supplements. Nordic agreed to disclaim the exclusive use of “DHA” apart from use in the mark as a whole and clarified that the goods at issue are “designed for use by children.” The examiner rejected the mark as generic, or alternatively, as lacking acquired distinctiveness. The Trademark Trial and Appeal Board found that the relevant goods were adequately defined by Nordic’s description: “nutritional supplements containing DHA” and that the relevant public for these goods “consists of parents or other adults seeking nutritional supplements containing DHA for children.” Citing dictionary definitions of “child” and “DHA,” the Board concluded that “children’s DHA” merely described an essential fatty acid for children, without indicating a source. The record also included third-party uses of “children’s DHA” both to describe DHA products for children in general and children’s DHA products other than Nordic’s. the Board concluded that children’s DHA “is the generic name for nutritional supplements containing DHA inasmuch as this wording encompasses nutritional supplements containing DHA formulated for children.” In the alternative, if the mark was not generic, the Board found that although Nordic has enjoyed commercial success with its products bearing the children’s DHA label, the mark was not acting as a source identifier and had not acquired distinctiveness. The Federal Circuit affirmed.View "In re: Nordic Naturals, Inc." on Justia Law

Cubatabaco, a Cuban entity, and General, a Delaware company, manufacture and distribute cigars using the COHIBA mark. General owns trademark registrations issued in 1981 and 1995. Cubatabaco owns the mark in Cuba and uses it worldwide. Cuban Assets Control Regulations (CACR), prohibit Cubatabaco from selling cigars in the U.S.; 31 C.F.R. 515.201(b) prohibits “transfer of property rights . . . to a Cuban entity,” but a general or specific license allows Cuban entities to engage in otherwise prohibited transactions. General licenses are available for transactions “related to the registration and renewal” of U.S. trademark. Specific licenses issue from the Office of Foreign Assets Control. Cubatabaco used a general license to attempt to register the COHIBA mark in 1997, relying on 15 U.S.C. 1126(e), which allows reliance on a foreign registration if the applicant has a bona fide intent to use the mark in commerce. Cubatabaco also sought to cancel General’s registrations, which the PTO cited as a basis for likelihood of confusion. Cubatabaco obtained a special license to sue General. The district court held that General had abandoned its registration by non-use and enjoined General’s use of the COHIBA mark, finding that Cubatabaco had acquired ownership under the famous marks doctrine. The Second Circuit reversed, holding that injunctive relief would involve a prohibited transfer under CACR because Cubatabaco would acquire ownership of the mark and later affirmed denial of General’s motion concerning cancellation of its registrations. The Board then dismissed Cubatabaco’s petition, stating that it need not address preclusion because Cubatabaco lacked standing. The Federal Circuit vacated, finding that Cubatabaco has a statutory cause of action to petition to cancel the registrations and that issue and claim preclusion do not bar that petitionView "Empresa Cubana del Tabaco v. General Cigar Co., Inc." on Justia Law

In 2010, Geller and Spence filed an intent-to-use application to register the mark STOP THE ISLAMISATION OF AMERICA in connection with “[p]roviding information regarding understanding and preventing terrorism.” The Examining Attorney refused the application on the ground that the mark may be disparaging to American Muslims under the Trademark Act, 15 U.S.C. 1052(a). The Trademark Trial and Appeal Board affirmed, considering the likely meaning of the mark, and determining that meaning was likely to disparage “a substantial composite of the referenced group.” The Board found the term “Islamisation,” as used in the mark, had two likely meanings: “the conversion or conformance to Islam” (religious meaning) and “a sectarianization of a political society through efforts to ‘make [it] subject to Islamic law’” (political meaning).The Board determined the mark may be disparaging to American Muslims under both meanings. The Federal Circuit affirmed. View "In re: Geller" on Justia Law

StonCor Group owns the registered trademark “STONSHIELD.” When a different company, Specialty Coatings, sought registration of a competing mark, “ARMORSTONE,” StonCor opposed the registration, asserting a likelihood of confusion and that ARMORSTONE is merely descriptive of Specialty Coatings’ products. The Board dismissed StonCor’s opposition, finding no likelihood of confusion and that ARMORSTONE was not merely descriptive. The Federal Circuit affirmed. Although the Board erred in concluding that STONSHIELD would not be pronounced as “STONE SHIELD,” the error is harmless because dismissal was supported by substantial evidence View "StonCor Grp, Inc. v. Specialty Coatings, Inc." on Justia Law