Category Archives: trademark

SCOTUS Reshapes Lanham Act: The Slants, the Washington Redskins and Those Seeking to Register Subjectively Offensive Trademarks Celebrate

This week, the U.S. Supreme Court, in one decision, both struck a blow for civil liberties and free speech and opened the floodgates to the registration of subjectively offensive trademarks.  Just ask the rock band “The Slants”, who prevailed in the case decided by the United States Supreme Court, and the NFL’s Washington Redskins’ defiant owner and dedicated fans, who will now see their marks registered, despite meanings that are offensive to large groups of Americans, in the name of free private or commercial speech.

How does this impact a prospective trademark registrant?  Simply, the examiner must now ignore whether the mark is disparaging and evaluate the mark solely from a viewpoint neutral position.  To see the practical impact of this, one need only look to the controversial mark “Redskins”.  In June 2014, the USPTO cancelled the registration of the NFL’s Washington Redskins, determining that the “Redskins” mark was disparaging to Native Americans.  However, this week’s ruling, barring application of the disparagement clause, would seem to open the door for the Washington Redskins to apply to register the “Redskins” mark anew, as well for others to seek registration of future marks that may well be disparaging to other persons, institutions, beliefs or national symbols.

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Jeffrey A. Cohen is a member of Flaster Greenberg’s Litigation, Intellectual Property, Corporate and Real Estate Practice Groups. He has been a trial attorney for more than 23 years, counseling and representing a diverse range of clients in matters related to commercial contracts, shareholder and partnership agreements, trademarks, copyrights, patents, including Hatch-Waxman, insurance coverage, franchise disputes and commercial construction.

New NHL Las Vegas Team Issued Initial Refusal for “Golden Knights” Trademarks, But Registration Is Still Possible

The United States Patent and Trademark Office issued an initial refusal to the new NHL franchise in their efforts to trademark “LAS VEGAS GOLDEN KNIGHTS” and “VEGAS GOLDEN KNIGHTS” – citing a likelihood of confusion with the registered mark “GOLDEN KNIGHTS COLLEGE OF SAINT ROSE.”  Each mark was registered for entertainment services (ice hockey exhibitions) and clothing.

Importantly, this is a common initial outcome when applying for a mark that has competitors in the same market using a similar mark.  While some media sites opted for more incendiary headlines in stating that the trademark has been “denied,” registration is still quite possible as the Vegas franchise is now given six months to respond to the Trademark office’s initial refusal.

Sports teams using the same nickname as one another is nothing new.  There are many examples of professional and college teams sharing the same name – e.g. Boston Bruins (NHL) and UCLA Bruins (college).  The Simpsons weighed in on the subject years ago, poking fun at the overuse of “Wildcats” as a team nickname:

To overcome the initial refusal, the Vegas franchise will need to show, among other things, that likelihood of confusion will not be an issue.  One problem is that “GOLDEN KNIGHTS” is displayed in both marks more prominently than any of the other words or descriptors.  In addition, the College of Saint Rose and the Vegas franchise will be using the marks in connection with the same goods and services – sporting events and clothing sales.

Another problem is that the College of Saint Rose registered the mark in connection with a particular design and stylized type face.  The Vegas franchise attempted to register their mark in standard characters, which would allow them to display the words in any design and type face – meaning that the two marks could be presented and displayed in the same manner, a “likelihood of confusion” issue which is explicitly cited by the trademark examiner in the initial refusal.

In response to the Trademark office, the Vegas franchise will most likely cite the numerous examples of professional and college teams sharing nicknames, as well as professional teams in different sports sharing nicknames – e.g. Arizona Cardinals (NFL) and St. Louis Cardinals (MLB).  In this case, it may also be crucial that the College of Saint Rose does not have an ice hockey team.  The Vegas franchise is also likely to disclaim “Las Vegas” and “Vegas” as unregistrable portions of their marks, because exclusive rights cannot be obtained in wording that is primarily geographically descriptive of the origin of the goods or services identified in the trademark application.

It remains to be seen whether the Vegas franchise will ultimately be successful in registering the “GOLDEN KNIGHTS” marks, but the matter is far from over, as the initial refusal is just the beginning.

For more information on registering trademarks and intellectual property law, contact Eric Clendening, a member of Flaster Greenberg’s Intellectual Property Department.

Eric R. Clendening is a member of Flaster Greenberg’s Intellectual Property and Litigation Departments. He focuses his practice on intellectual property litigation and commercial litigation, including contract disputes, employment litigation, and other commercial disputes. He also advises clients on protecting and enforcing intellectual property rights online, including the resolution of domain name disputes and matters concerning e-commerce, online speech and conduct, and related intellectual property issues involving trademarks and copyrights.

 

 

 

 

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