Tag Archives: Lanham Act

Trademark Board Blocks 76ers Joel Embiid’s Attempt to Register “Trust the Process” Trademark for Shoes 

The Trademark Trial and Appeal Board (“TTAB”) affirmed the refusal to register Philadelphia 76ers star Joel Embiid’s trademark application for “Trust the Process” in connection with shoes in a precedential decision on May 26, 2021.  In the decision, the TTAB found that the mark is likely to cause confusion with Marcus Lemonis’ “Trust the Process” registered trademark for clothing.  Lemonis is the host of the CNBC show “The Profit,” and his trademark registration dates back to April 19, 2016. 

Section 2(d) of the Lanham Act prohibits registration of a trademark that is likely to cause confusion with a registered mark when used in connection with the goods or services of the applicant.  In determining whether there is a likelihood of confusion, the TTAB analyzes the thirteen DuPont factors – which assess things such as the similarity of the marks, goods, trade channels, and average purchaser, among other factors.  Here, the TTAB held that since the “Trust the Process” marks are identical in appearance in sound, it outweighs any difference the marks may have in commercial impression with respect to the meaning of the mark in the world of basketball versus the CNBC show “The Profit.”  

Embiid also tried to rely on his existing trademark registration for “The Process” in connection with apparel and clothing, which has existed alongside Lemonis’ mark for two years without instances of confusion, to show that the “Trust the Process” mark was also unlikely to create confusion.  The TTAB rejected this argument since the “The Process” mark has only been registered since 2019, is still susceptible to a cancellation proceeding, and there are meaningful differences between “The Process” and “Trust the Process.” 

Does this mean that Joel Embiid can no longer shout “trust the process” in news conferences and in his social media posts?  Not at all.  A trademark only protects the right to use a word or phrase in commerce in connection with specific goods or services.  Here, the issue was whether Joel Embiid could obtain a trademark registration for “Trust the Process” in connection with shoes.  Embiid already has a trademark registration for “The Process” in connection with apparel, and he has numerous pending trademark applications for “The Process” and “Trust the Process” in connection with a variety of goods and services, including phone cases, books, and basketball camps, to name a few. 

The major takeaway here is that no matter how famous or ubiquitous a phrase like “Trust the Process” may become, if you were not the first to use it in commerce for a specific set of goods and services, or if you did not file an intent-to-use trademark application before someone else began using the mark, you will most likely be denied a trademark registration for the mark. 

Questions? Let Eric know.

Eric Clendening

Eric 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.Cherry Hill, NJ, USA

What the %@#&? Supreme Court Strikes Down Ban on Immoral or Scandalous Trademarks

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The Supreme Court struck down the Lanham Act’s prohibition on registering “immoral or scandalous” trademarks in its recent decision in Iancu v. Brunetti. Erik Brunetti is an artist who created a clothing line that uses the trademark FUCT. When he sought to register the mark, the U.S. Patent and Trademark Office (“USPTO”) denied his application, citing the Lanham Act’s prohibition on registering trademarks that contain immoral or scandalous matter. It is not hard to imagine that the mark would bring to mind perhaps the most famous four-letter curse word in American culture. Brunetti appealed and argued that the prohibition violates the First Amendment.

The Supreme Court agreed with Brunetti and held that the Lanham Act’s prohibition on registering immoral or scandalous trademarks is unconstitutional because it discriminates on the basis of viewpoint. By way of example, the Court pointed out how the USPTO registered the mark “D.A.R.E. TO RESIST DRUGS AND VIOLENCE” but refused to register “BONG HITS 4 JESUS” because it “suggests that people should engage in an illegal activity [in connection with worship]” and since “Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use.”

The Supreme Court’s rationale follows the same line of thinking from its decision in Matal v. Tam, two years ago, when the Court held that the ban on registering marks that “disparage” any person living or dead was unconstitutional. In that case, the Court also held that if a trademark registration bar is viewpoint-based, then it is unconstitutional under the First Amendment.

Does this mean that American consumers are likely to see an influx of brand names containing lewd, sexually explicit, and profane slogans? Not necessarily. While the Lanham Act’s prohibition had prevented the registration of immoral or scandalous marks, there is nothing that previously prevented individuals or businesses from using immoral or scandalous marks in commerce and enforcing the mark against potential infringers. Registration simply provides trademark owners with additional, valuable benefits such as the legal presumption of national ownership of a trademark. In other words, the landscape for offensive marks being used in the marketplace is unlikely to change too much, but owners will have an easier time protecting and enforcing these types of marks.

Questions? Let Eric know.

Eric ClendeningEric 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.

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.

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