Review of the 2006 Trademark Decisions of the Federal Circuit

The United States Court of Appeals for the Federal Circuit delivered only seven precedential trademark opinions in 2006. The Court addressed a range of substantive issues including trade dress configuration, reverse passing off, and genericism. Notably, two of the seven precedential decisions involved plant names protected by the Plant Variety Protection Act. The Court decided only one case in 2006 where the primary issue was procedural, rather than substantive. In that case, the Court sided with the Trademark Trial and Appeal Board and affirmed its decision on the applicability of the res judicata doctrine. In 2006, as in previous years, appellants faced a difficult challenge in convincing the Federal Circuit to overturn the Trademark Trial and Appeal Board\u27s findings and determinations. Only one of the eight Board decisions appealed to the Federal Circuit was overturned. The Federal Circuit also affirmed rulings by a federal district court and the International Trade Commission. The Court affirmed in every trademark decision it published, and designated four out of the total eleven of its trademark decisions as not citable precedent. All four non-precedential decisions dealt with the application of the In re E.I. DuPont de Nemours & Co. factors for likelihood of confusion

No Trademark, No Problem

Does the Lanham Act permit a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for its use of the same mark in the U.S.? A recent case from the Court of Appeals for the Fourth Circuit addressed this consequential question. In Belmora, LLC.v. Bayer Consumer Care A G, the Court of Appeals surprised the legal community and answered this question in the affirmative, reversing the district court\u27s decision to reject the trademark claim because it was unsupported by a federally protected U.S. trademark.The Belmora decision has received considerable attention. What has thus far escaped much notice by commentators is the treatment of this dispute below by the Trademark Trial and Appeal Board ( TTAB ). There, the TTAB reached a similar result as the Fourth Circuit. The TTAB ordered the cancellation of the U.S. registered mark for a misrepresentation of source, finding that a cancellation petition need not be supported by a protectable mark.This article will evaluate the TTAB\u27s receptivity to claims in cancellation proceedings by parties that have neither used nor registered their marks in the U.S. The TTAB has resolved some interesting cancellation proceedings, some of which have extended trademark protections to parties that do not have a mark protectable in the U.S. This article will consider how these types of cases have fared in the courts and in the TTAB, and why the TTAB has accepted certain legal claims that Article III courts have not. Finally, this article will consider the implications of the TTAB\u27s acceptance of these kinds of claims for jurisdiction in Article III courts

Confusing the Similarity of Trademarks Law in Domain Name Disputes

This article anticipates doctrinal disorder in domain name disputes as a result of the new generic top-level domains (gTLDs). In the course of the intense and prolonged debate over the possibility of new gTLDs, no one seems to have focused on the conspicuous fact that domain name disputes incorporating new gTLDs will be markedly different from the first-generation domain name disputes under previous gTLDs. Now second-generation disputes will have the added feature of the domain name having a suffix that will likely be a generic word, geographic term, or trademark. This addition is significant. Rather than disputes over , we will have disputes over . Before these new gTLDs, Uniform Dispute Resolution Procedure (UDRP) panels have routinely ignored the gTLD portion of the domain concluding that the suffix is inconsequential to their determinations of confusing similarity. This approach has already changed. While this change may seem trivial especially in a non-precedential system, the consequence of this change may be profound for trademark owners’ rights on the internet and portend a fundamental shift in how trademarks will be called upon to pick winners and losers in this new land grab

The Protection of Geographical Indications in the Inter-American Convention

The international community is currently deeply divided over the appropriate level of protection for Geographical Indications (“GIs”). This conflict has recently come to a head in the negotiations over the Transatlantic Trade and Investment Partnership Agreement (TTIP). GIs receive extensive protections within the European Union (EU) that go beyond international standards, while the United States is generally opposed to strengthening existing international GI protections.Given its current stance, it is remarkable that the US has since 1929 been bound by a little known international convention that ensures strong protection of GIs. Since that date, the US has been a member of the General Inter American Convention for Trade Mark and Commercial Protection (“Inter-American Convention”). What is even more astonishing is that, at the time, the provisions on GIs in the Inter-American Convention — a regional agreement instituted by the US — were the most developed and strongest protections available in any international agreement. Given that this agreement is still in effect, it indicates the minimum standards for the protection of GIs in the US. Understanding this agreement therefore offers a sturdier basis for the international negotiation of GI protections.This article elucidates the history of US protection of GIs. It seeks to uncover the mystery behind the inclusion of a chapter GI protection within the Inter-American Convention in 1929 and the absence of these protections in the 1946 Lanham Act. The article reveals the momentous contributions of Edward Rogers and Stephen Ladas, two of the leading practitioners of US trademark law in the twentieth century. These two men had as sophisticated an understanding of US common law and international obligations as anyone. The resulting texts of the Inter-American Convention and the Lanham Act, both of which they were instrumental in drafting, were no mistake

Review of the 2006 Trademark Decisions of the Federal Circuit

The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) delivered only seven precedential trademark opinions in 2006. This small proportion of trademark cases is consistent with the court’s docket in recent years. This year, the court addressed a range of interesting substantive issues including trade dress configuration, reverse passing off, and genericism. Notably, two of the seven precedential decisions involved plant names protected by the Plant Variety Protection Act. The Federal Circuit decided only one case in 2006 where the primary issue was procedural, rather than substantive. In that case, discussed below, the Federal Circuit sided with the Trademark Trial and Appeal Board (“the Board”), and affirmed its decision on the applicability of the res judicata doctrine. This year proved once again that appellants face a stiff challenge in convincing the Federal Circuit to overturn the Board’s findings and determinations. Of the eight Board decisions appealed to the Federal Circuit, only one was overturned. Also, the Federal Circuit affirmed rulings by a federal district court and the International Trade Commission (“ITC”). This year, the Federal Circuit affirmed in every trademark decision it published. In 2006, as in years past, the Federal Circuit has designated a good portion of its trademark decisions as not citable precedent. Four out of the total eleven trademark cases were unpublished. All four non-precedential decisions dealt with the application of the In re E.I. DuPont de Nemours & Co. factors for likelihood of confusion

Registering Offense: The Prohibition of Slurs as Trademarks

Since 1967, Pro-Football has registered six marks that include the term “redskins,” a derogatory racial epithet that refers to Native Americans. The use of disparaging marks dates back to the 19th century when brands commercialized racial stereotypes, such as Aunt Jemima. Today, offensive marks, including those that ridicule race, ethnicity, gender and religion are proliferating prompting the question of what role trademark law plays in protecting the interests of diverse communities. Section 2(a) of the Lanham Act prohibits the registration of marks that consist of matter that may disparage or bring into contempt or disrepute any person, institution, or belief. In this chapter, I review the policy goals and challenges in barring the registration of offensive marks and conclude that trademark law can play an important, albeit limited role in fostering diversity. U.S. trademark law only seeks to regulate the registration and not the use of offensive trademarks. Nevertheless, the symbolic gesture of the federal government cancelling the registration of a mark on the basis that it disparages people is significant and may affect the way society views the mark. Thus the government can perform important signaling for civility without abridging the freedom of speech

Imagining the Law: Art

Law’s relations to art--to its creation, its production, and dissemination, its restriction as well as to commercial and contractual agreements about art works—are as multiform and complex as the category of art itself. Acknowledging that there is no discrete body of law that governs art, the author defines art law as “the survey of legal issues raised by art, artist, and the art world” and surveys four central themes: the law as art, the law of art, the law of creativity, and the collision of art and law. Any legal dispute about art usually evokes a plea for special legal rules or approaches, as in the case of Nussenzweig v. diCorcia, 878 N.E.2d 589 (2006). The author points the way toward a study of law in its relationship to creative, cultural practices, particularly to the notion of aesthetic judgment in the domains of art and law. Law typically works to promote and protect, rather than impede, artistic creation on the logic that art is a social good. Questions about art’s role in the creation of culture and the rights of the artist frequently enter the legal domain for their answers. In cases of illegal trade of art treasures, for example, the courts have had to decide whether art constitutes a specific cultural heritage, a broader human achievement, or simply a commodity. Controversies in intellectual property, though they focus on the individual artist, are similarly bound up with creative and economic interests that reveal fundamental inconsistencies between law’s stated mission to encourage the production of art as a common good and law’s so-called creativity threshold, which works to restrict innovation. The author sees in these inconsistencies a collision between art (radically transformative) and law (resistant to change) based on their fundamentally differently cultural functions, and argues that judges apply private ideas about aesthetics instead of openly acknowledging that their judgments are not neutral and nonsubjective.https://digitalcommons.wcl.american.edu/facsch_bk_contributions/1087/thumbnail.jp