11 Sep
2018

More #MeToo trademark applications, USPTO scandalous marks fight, and FIFA thanks Rospatent for World Cup help: news round-up

Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at many more trademark applications related to the #MeToo movement, the Swedish IP Office warning against fake election posters, a Budweiser and Jim Beam brand collaboration, a US court having its say on trademark bullying, and much more. Coverage this time from Trevor Little (TL), Tim Lince (TJL) and Adam Houldsworth (AH).

Legal radar:

USPTO keeps scandalous marks fight alive – In June 2017, the Supreme Court handed down its long-awaited ruling in Matal v Tam, holding that the disparagement clause of the Lanham Act violates the Free Speech Clause of the First Amendment. Eight months later came the Federal Circuit’s reversal of a TTAB finding that the FUCT mark was unregistrable, concluding that the Lanham Act’s bar on registering immoral or scandalous marks is an unconstitutional restriction on free speech. That particular decision, though, is still under scrutiny, with the USPTO filing a petition for a writ of certiorari at the Supreme Court late last week. The question posed?: “Whether Section 1052(a)’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the Free Speech Clause of the First Amendment.” The USPTO argues that “the scandalous-marks provision does not prohibit any speech, proscribe any conduct, or restrict the use of any trademark. Nor does it restrict a mark owner’s common-law trademark protections. Rather, it simply directs the USPTO to refuse, on a viewpoint-neutral basis, to provide the benefits of federal registration to scandalous marks… Under the proper analysis, the First Amendment does not prohibit Congress from making vulgar terms and graphic sexual images ineligible for federal trademark registration”. The scandalous marks fight has been fought for many years now, and this latest move shows it will be continuing into the foreseeable future. (TL)

Court has say on bullying claims – Last month we reported that Express Homebuyers USA, one of the largest companies in the US house-buying industry, had prevailed in the latest round of its battle to have the marks (owned by Jeremy Brandt’s company WBH Marketing Inc) WE BUY HOUSES and WEBUYHOUSES.COM declared generic. In a Memorandum Opinion, Judge T S Ellis III, of the Eastern District of Virginia, stated that “allowing one member [of the real estate industry] to have exclusive use of the phrase ‘we buy houses’ would be the equivalent of allowing a professional football team to trademark ‘we play football’ or a fast-food chain to trademark ‘we sell burgers’.” The court therefore concluded that the marks should be cancelled. As noted on Techdirt, separately WBH sued Express Homebuyers for false advertising, trade libel, and conspiracy. Timothy Geigner reports that “much of these accusations either relied on the trademark WBH once held or targeted Express Homebuyers' discussion of the dispute in public”. However, these claims have now been dismissed,  Judge Ellis concluding that WBH failed to present any facts to support its damages claims, while also finding that statements made by Express Homebuyers that “WBH was a ‘trademark bully’ were non-actionable opinions because they were nothing more than EHB’s ‘subjective assessment of WBH’s commercial activity’”. Geigner welcomes the court’s findings, arguing: “Rulings going the other way would have put one hell of a burden on the real estate industry in America writ large.” (TL)

Market radar:

Budweiser and Jim Beam team up and offer brand lessons – Over on the DuetsBlog, Steve Baird has turned his attention to the recently launched Copper Lager, the result of a brand collaboration between Budweiser and Jim Beam. While the Jim Beam logo adorns the six pack carton’s front face with top line prominence, Baird notes that the Budweiser brand is most prominent on the packaging. Crucially, though, the marks are presented in tandem, rather than as part of a new combined product identity. Baird observes: “It’s really not a good idea, from a trademark perspective, to mix and blend the combined brands into a single new visual identity, as doing so raises questions of ownership and how to untangle… Thankfully these brand owners are sophisticated enough not to combine Jim Beam and Budweiser into a single trademark filing, sadly I’ve seen commingling before, and it isn’t much fun to unwind”. It’s an intriguing collaboration, enabling each to promote their brand to the customer base of the other. However,  the ultimate measure of success will be sales. (TL)

Com Laude acquires Demys – Com Laude has acquired corporate domain name management and online brand protection services company Demys for an undisclosed sum. Demys currently provides services for a number of brand clients across the UK automotive, retail/leisure, media and FMCG sectors, its portfolio of offerings including domain watching services and the monitoring of online brand infringement.  Commenting on the acquisition, Nick Wood, managing director of Com Laude, said, “Demys are a good fit with us. They are a business that focuses on delivering high quality service to their customers, they have deep expertise in the domain name space and they have built a strong customer-centric business. The addition of their online brand protection services will help us to deliver greater value to brands who want to protect their online intellectual property.” (TL)

China seeks public comments on draft new drug traceability system – The China National Drug Administration announced at the end of August that it is launching a public consultation on proposals to develop a new drug traceability system in the country. It is being proposed to have compulsory unique drug traceability codes (DTCs) on all medicine packs. All parties in the pharmaceutical supply chain, including manufacturers, distributors and dispensers, will be able to trace a product’s history. The only exceptions are for traditional Chinese medicines, raw materials and certain compounded drugs. This is intended, it is reported, to help prevent the counterfeiting of medicines and the sale of poor quality products, and to assist in recalling dangerous products. Comments on the plan should be submitted by September 20th. (AH)

Major Australian brands on sale – The Sydney Morning Herald is reporting that some popular Australian food brands, including Big M, Yoplait, Pura and King Island Dairy, are up for sale. It comes as the company Lion announced it was conducting a strategic review of its dairy and drinks business. According to the article, the review “will consider all options including the retention of the whole business, its sale, and options in between, such as the sale of some brands and joint venture partnerships”. If any brand acquisitions take place, it’ll be another example of the increasing trend of intellectual property being traded – often to foreign companies looking for a way into a new market. (TJL)

Kenyan manufacturers push for legal reforms to help in fight against counterfeits – The Kenya Association of Manufacturers (KAM) is calling on the country’s law makers to fast-track planned legal changes aimed at helping to reduce counterfeiting. It is proposed to change Kenya’s 2008 Anti-Counterfeiting Act in order inter alia to give Anti-Counterfeit Agency inspectors investigatory powers and to fix higher minimum penalties for those involved in selling knock-offs – a change KAM believes is necessary to help reduce the threat of counterfeiting to the country’s manufacturing businesses. “It is high time we extinguish these activities as they imperil our economic development, governance structures, national security and supply chain integrity,” said KAM chairman Sanchen Gudka. Kenya’s President Uhuru Kenyatta has repeatedly emphasised his commitment to fighting fakes in recent months, seizing billions of shillings worth of fake goods, and raising public awareness of the problem. (AH)

Office radar:

EUIPO opens first edition of education programme – The EUIPO has officially opened the first edition of the EUIPO Trade Mark and Design Education Programme (ETMD EP), a new training programme for intellectual property practitioners. The opening was led by the EUIPO’s acting executive director Christian Archambeau, who welcomed 52 participants from 20 EU member states to the event. In a press release, the office explained that the course is “a practical programme, delivered by EUIPO staff, leading IP professionals and academics, and focuses on interaction between the EUIPO and IP practitioners in trademark and design registration and prosecution”. (TJL)

German registry celebrates sub-office birthday – The Germany Patent and Trademark Office  this week celebrated the 20-year anniversary of its Jena Sub-Office, an institution set-up in in 1998 which houses a trademark and design department to support the IP office’s broader operations. In all, the Jena sub-office conducts around 40% of all German national trademark applications, according to the press release, and now has 230 employees. (TJL)

Swedish IP office warn on fake election posters – Sweden went to the polls for its national general election this week, with the results finding the two main political blocs almost tied and an anti-immigration party making gains on previous results. However, in the days and weeks leading up to polling day, there were reports of malicious use of branding and logos as a way to mislead voters. In turn, the Swedish IP Office (PRV) warned the public about such activity, with the registry’s legal director of design and branding, Magnus Ahlgren, stating: “The parties' names and trademarks and their use are a hot potato prior to the selection. In recent weeks, we have seen reports of everything from fake election posters to parties using other party brands in their communications.” In the Q&A, he noted that such use that dilutes or damages a brand could be trademark infringement. (TJL)

IP office of Uzbekistan visits Serbian registry – A delegation from the Intellectual Property Agency of Uzbekistan last week visited the IP Office of Serbia to share knowledge on ways to improve their respective IT operations. In a press release about the visit, it was explained some of the activities that took place: “The purpose of the visit is to inform members of the delegation about the successful use of the IPAS administrative system by the Institute, which is used to administer applications for intellectual property protection.” The hope, then, is that the visit will spur improvements of digital systems at both offices. (TJL)

FIFA thank Russian IP office for World Cup help – The International Federation of Association Football (FIFA) has publicly thanked the Intellectual Property Office of Russia (Rospatent) for its help during the recent 2018 World Cup in Russia. In particular, FIFA noted the laws that allowed effective brand protection during the event, with the office noting that it “took part in the work on the Federal Law of 07.06.2013 No. 108-FZ regarding the protection of intellectual rights of FIFA”, and also “adopted Order No. 49 of 04/05/2016, which established the features of registration of FIFA trademarks, recognition of FIFA trademarks as well-known in the Russian Federation”. Furthermore, Rospatent also granted FIFA legal protection to 64 trademarks under the national procedure and 17 international registrations under the international procedure in the run-up to the event. We’ve reported on the massive brand protection effort that takes place during World Cup events, especially around counterfeiting and brand ambushes. The work of IP offices beforehand to give FIFA the effective IP tools to combat infringement and misuse should not be overlooked. (TJL)

Media watch:

You ‘Vike’ that trademark bid? – With the NFL kicking off this past weekend, and commercial minds turning to how to capitalise, media outlets seized upon a trademark application for YOU VIKE THAT! By Minnesota Vikings quarterback Kirk Cousins. As noted by NBC Sports, while playing for the Washington Redskins, Cousins turned ‘You like that!’ into a rallying call. Having moved to Minneapolis in the off-season, he is now seeking to adapt the phrase to his new surroundings, applying for the mark in classes 16, 25 and 36. It’s a savvy move, the adaption of a phrase previously associated with him positioning him to cash in if granted. With the Vikings one of the favourites for Super Bowl XXV, an extended playoff run would likely lead to a nice merchandising bump for the 30-year-old quarterback. (TL)

#MeToo trademarks continue despite January controversy – In January, TMZ reported on make-up brand Hard Candy filing a trademark application with the USPTO for the term #MeToo. The application date was October 20 2017, which was less than a week after the #MeToo hashtag had been widely popularised following a New York Times article revealing sexual abuse allegations against film producer Harvey Weinstein. It appeared, then, that Hard Candy was hoping to capitalise on the #MeToo movement, with TMZ claiming readers can expect to see “the hashtag on lipsticks, nail polishes, mascaras and whatnot”. Unsurprisingly, the article caused a backlash against the brand, with some social media users claiming it was “hijacking an important cultural movement” and others calling for a boycott. Days later, Hard Candy confirmed it was abandoning the trademark. However, that backlash has not stopped other brands from around the world seeking #MeToo-related registered trademarks. For example, in the past few months, brands such as Fuzzy Logic LLC, Excellaw PLLC, Women In The World Media LLC, Benoit Touquette LLC and E-Lo Sportswear LLC have all filed applications at the USPTO. While some of these marks have not yet had an office action, the USPTO has refused at least one for various reasons, including a failure to function as a trademark due to being related to a “informational social movement”. In an office action on Fuzzy Logic’s #MeToo application, the USPTO examining attorney explained: “This term or phrase is a commonly used message that encourages people to speak out about sexual violence and harassment. Because consumers are accustomed to seeing this message used in ordinary language by many different sources, they would not perceive it as a mark that identifies the source of applicant’s goods but rather only as conveying an informational message.” It isn’t just in the US that individuals or companies have sought to obtain registered trademark protection that appear to be related to the #MeToo movement - we also found recent applications in countries including Brazil, Canada, and Mexico. Interestingly, we found only one #MeToo that has reached registration so far: an application dated October 17 2017 was filed at the Swedish IP Office by Stockholm resident Bo Westerling and entered Sweden’s trademark register in April 2018. Time will tell how that registered trademark will be used (or enforced), if other #MeToo marks will follow suit, and how the wider community will react. (TJL)

And finally…

Your new look WTR To coincide with the resumption of our full subscriber service on September 3, the World Trademark Review platform was reengineered to offer a refreshed look, enhanced functionality and a more responsive and faster website. Over the past nine months we have made a series of enhancements to the site. In November 2017 we stepped up our content output and also provided subscribers with early access to the 2018 rankings tables for the World Trademark Review 1000 – The World’s Leading Trademark Professionals. In February, we then re-engineered the site to create a series of microsites that allow users to quickly navigate to, and bookmark, the content most relevant to their needs. These included nine topic landing pages, eleven industry sector sites and five regional landing pages. This latest refresh marks the next stage of WTR’s journey and we have exciting plans for the coming months. WTR subscribers get automatic access to all parts of the refreshed WTR platform; while our registered users can continue to see everything that is in front of the paywall.  Should you wish to become a WTR subscriber, click here. (TL)

Adam Houldsworth

Author | Reporter

ahouldsworth@GlobeBMG.com

Adam Houldsworth