United States: IP Fridays – Episode 5 – Redskins, Nontradtitional Trademarks And Facebook Drones

Last Updated: July 8 2014
Article by Kenneth Suzan, Rolf Claessen and Elizabeth King

This is Elizabeth King of Conley Rose in Houston, TX and you are listening to IP Fridays.com.

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

RC: Thank you very much for tuning in to the 5th Episode of IP Fridays. We are very excited that we already have 1,000 downloads of MP3 files for our episodes. Thank you very much. We have exciting things to share today. We will hear about Facebook drones, we have an interview with Elizabeth King about nontraditional trademarks, and we will talk about the Redskins. We will talk about Redskins right now. Ken, can you tell us more about the Redskins?


KS: Rolf, the Washington Redskins began as a professional football team in the very early days of football, in the year 1932. The team registered its "Redskins" name as a trademark in the 1960s, and continues to use the name to this day on official team merchandise. However, many consider the name to be a derogatory and offensive reference to Native Americans. In spite of public backlash, the owner of the Redskins, Dan Snyder, has publicly stated his unwillingness to consider a change to the team's name. NFL Commissioner Roger Goodell, himself a childhood Redskins fan, has backed Snyder's decision.

The team has also faced resistance to its trademark rights in the Redskins name. Section 2(a) of the U.S. Trademark Act (15 U.S.C. § 1052(a)) disallows the registration of trademarks that "disparage . . . persons . . . institutions, or beliefs[,]" or "bring[s] them into contempt, or disrepute." Believing the Redskins name to be disparaging, a group of Native Americans in 1992 sought cancellation of the Redskins trademark in front of the Trademark Trial and Appeal Board (TTAB), the body of the Patent and Trademark Office (PTO) that handles trademark registration and challenges to trademarks. After seven years of litigation, TTAB found the trademark to be disparaging under the Trademark Act and cancelled its registration. A drawn-out appeals process followed, in which the challengers were eventually found to have delayed too long in bringing suit against the Redskins trademark.

Now, a second, younger group of Native American challengers has come forward, and the TTAB has once again decided the Redskins trademark should be canceled due to the disparaging nature of the "Redskins" term. The 81-page majority opinion, issued by TTAB on June 18, relied upon expert opinions and resolutions by Native American tribes to find that not only has the term "Redskins" retained its meaning as a name for a Native American individual, but that the "Redskins" name is collectively found disparaging and offensive by a "substantial composite" of Native Americans. The TTAB found the laches (delay) defense earlier relied upon by the Redskins to be inapplicable.

The Redskins can still continue to enforce their trademark pending appeal of the TTAB decision, which will likely be a lengthy process; the appeal of the earlier TTAB cancellation went on for a decade. If the cancellation is upheld on appeal, the Redskins may continue to use the mark on their merchandise—but they will have more difficulty preventing others from also marketing and selling merchandise with the Redskins name. The decision also addressed only the use the name itself and some old designs incorporating the name, and did not affect the current logo used by the team.

Whether this decision can convince the NFL and Dan Snyder to change the team's name remains to be seen, but opponents see further evidence of the need for a new team name in Washington. As Senate Majority Leader Harry Reid said in his reaction to the decision: "The writing is on the wall, on the wall in giant, blinking neon lights."

RC: Thank you very much Ken. This case got a lot of press so if you want to know more about this you can go to www.ipfridays.com/redskins or just visit the show notes for this episode.

Recently during the INTA meeting in Hong Kong, I met Elizabeth King who is really into nontraditional trademarks and I am very glad I was able to secure a timeslot in her very busy schedule for the following interview.


RC: I am sitting here with Elizabeth King of Conley Rose. She is a partner with the firm and I met her at the INTA meeting in Hong Kong. I am very happy that she is willing to give an interview for our podcast.

EK: Thank you for having me.

RC: Why don't you tell our listeners a little more about yourself?

EK: Well, thank you again for having me. I am a trademark lawyer in the United States. As you said, I am a shareholder with the Houston based intellectual property firm of Conley Rose. I have been practicing law for over 20 years and I dedicate my practice to trademarks. The last few years I've had a special interest and focus in nontraditional trademarks.

RC: So, tell our listeners a little bit more about nontraditional trademarks. What makes them different from regular trademarks, let's say?

EK: Well, they are very interesting I think to most trademark attorneys because when we think about trademarks we think about the words that you use to call for an item. For example, if you want a soft drink of a certain name, you might call for a COCA-COLA, or you may call for a PEPSI, depending on the brand you want. Nontraditional trademarks are basically anything that functions as a trademark but that isn't a word or a series of words or a design meaning like a logo on the packaging. A nontraditional mark can be actually the goods themselves – those are called product design marks. They can be packaging for the goods. Sometimes you can look at a nontraditional mark both as a product design and as packaging and you have to sort of decide which way you want to go with it. They can be colors. They can be a combination of colors. They can be shapes. They can be scents. They can be holograms. There are all sorts of various iterations of what we call nontraditional trademarks.

RC: So tell me more about what actually a nontraditional trademark is.

EK: Okay, yeah, that is a great question. So basically, when you think about trademarks, you usually think about the name that you use to call for a particular item of goods or services. For example, if you want a beverage you might say, "I want a Coke" or you may say, "I want a Pepsi" and that is generally how we think of trademarks being. So we usually think of them as words or combinations of words or logos. But what a nontraditional mark is is basically almost everything else. It can be a color, it can be a combination of colors, it can be a product design itself like the actual product itself functions as a trademark, it can be packaging for the product. Sometimes you have products that you could look at as either packaging or a product design and then you have to sort of decide which way you want to go. They can also be shapes. They can be motions. They can be sounds. They can be holograms. They just essentially have to meet the hurdle of not conferring what I would call an unfair competitive advantage against others and also functioning as a trademark meaning functioning as a source indicator.

RC: So if any of my applicants would like to file a nontraditional trademark in the U.S., what would you recommend? Can they have a broad scope of protection or should they file it with a narrow definition or what would be prudent if they want to enforce the trademark later on against competitors and when can they enforce it?

EK: Those are really very good questions and it's actually been a very important subject for me and my research and writing lately because my first piece of advice to any nontraditional mark holder is to not overreach. I think it is very important when you are drafting a nontraditional trademark application with the USPTO that you tightly define what you are seeking to protect. If you are seeking colors, I think you need to specify those colors with a color range. If you are seeking packaging or product design you need to be particularly careful, especially with the later, of showing enough evidence of what is called acquired distinctiveness as a mark because under U.S. law, product design can never be inherently distinctive.

The other thing you have to be very, very careful about, particularly if you own color trademarks, is that you need to be very, very circumspect in discerning between when another party's use of color is mere ornamentation, meaning they are just using these colors decoratively, versus when they are actually trying to infringe on your trademark rights. I think a perfect example of a case where frankly an application for trademark protection and the subsequently issued registration was far too broad was the original Christian Louboutin red soles registration and that registration was frankly unenforceable as issued. There was no narrowing of the color range in my view that was an important thing that should have happened and there was no contrast of the red sole with a different colored upper and further to that thought I strongly feel that when Yves Saint Laurent, which came out with one of its monochromatic color lines, which was not even really the same color red, started using it, my belief is that a lot could have been avoided in terms of litigation costs had there been a more careful assessment about whether or not that use of the color red by Yves Saint Laurent was in fact just ornamental. It is pretty clear from the facts of the case, in my view, that this wasn't an attempt to infringe on any trademark rights held by Christian Louboutin. This was merely a fashion designer in the industry using the color red as an ornamentation for one of their "
"Cruise" lines which they had done many, many times in the past and something that somebody in Christian Louboutin's position probably should have known.

So what does all this mean or what is the takeaway from all of this? Well, once that case went up to the Second Circuit in New York, the Court basically modified the original Louboutin registration to say that well at a minimum you are going to need to have this red contrast with this other color upper on the shoe. Once the registration was modified, the Second Circuit didn't get to the issue of what in U.S. law is called the functionality doctrine. They basically said we don't need to decide whether or not you having a registration on the single color red in the fashion industry is giving you an unfair competitive advantage which would be concluded under Section 2(e)(5) of the U.S Trademark Act. We don't need to decide that because based on the modification of the registration we've just done, we find no confusing similarity between your mark and Yves Saint Laurent's so therefore there is no confusion as a matter of law and we don't need to even get to this other issue of functionality.

At the end of the day, how could it have been different? Well, in my view, it could have been different if the registration itself were very tightly drafted and the mark had been very tightly described within the original application so that it would be very clear that there is not any overreaching as to what is being claimed as a protectable mark.

The second thing is I think a little bit more deliberation. If you happen to, in my view, have the wonderful fortune of actually having an enforceable nontraditional mark, which is very, very difficult to develop, but if you have actually developed one, I think the most important thing you can do as a mark holder is to be very deliberative and circumspect about in what instances you are going to seek to enforce those trademark rights versus whether they are a direct competitor or if they are just offering their goods and trades in the same trade channel because what happens and what Courts don't like is when you become overly aggressive with a nontraditional mark and you try to say okay well I own these two or three colors and now no one in my industry can ever use these colors together or they are infringing. Well that's really not necessarily true. There are going to be times when another person's use is completely okay because it is just ornamentation and they are not attempting to confuse the public into believing they are you. So you have to sort of, in my view, you take a step back if you own a nontraditional mark and you have to look at someone else's usage, particularly if it is color. I mean, this is particularly the case in the instances of single colors or multiple colors and you have to look at that other party's use and really think forward about whether or not it looks like you are being unfair in trying to corner all uses of color whether they are ornamental or not because there are going to be some cases where someone is clearly trying to pass themselves off as you and they are adopting your colors as part of that plan and in that instance yes having that federal registration for your colors is great because you can shut that infringing use down. But in other instances, it is going to be very clear that there is no attempt to infringe, that there is no intent whatsoever, and there is no infringement and that this usage is merely ornamentation and in that case, obviously, the right thing to do is to keep your head down and your mouth shut and move forward and that is quite honestly responsible trademark practicing.

The reason I think that this sort of underlying strategy is so important in the U.S. is because much like Europe we have a fundamental aversion to the idea of people owning nontraditional trademarks. Under U.S. law, we want people to be able to copy designs. We want people to be able to freely use color and other aspects of ornamentation. We have the patent law which will convey exclusivity for 20 years or whatever, if it is a design patent a little less than that, but that exclusivity ends at a finite period of time and then that invention goes into the public domain. But trademarks never expire. So, if you have an nontraditional trademark, and it is in fact a valid nontraditional trademark, that never expires so what that means is that forever under U.S. law, no one can make that, for example, product design– ever – and so as a result of that it is very, very difficult to prove that by you having the exclusive right to that design or that color or whatever it is, sound, that you are not unfairly hindering competition. It is ok if your trademark, whether a product design, packaging, color, or shape or whatever it is, it is ok if it gives you a competitive advantage, it cannot give you an unfair competitive advantage. It cannot be cheaper to make. It cannot make your product or your services of higher quality. It cannot be easier to use. It cannot affect the quality of the item of the services in a way that benefits you vis-à-vis the competition. If any of those things are in place, then you are going to be precluded from trademark protection as a matter of law regardless of whether or not your product design, your packaging or whatever actually functions as a trademark.

RC: So you are saying nontraditional trademarks with an unfair advantage for the holders, can they be compared to generic marks?

EK: Well, very, very rarely can they. The only time a product design or another type of nontraditional mark that is alleged to be a mark by a mark holder would be similar to generic is when that particular design does not function as a trademark. But actually this is a very big misconception in the law which is that generics are similar to nontraditional marks that are precluded from protection under Section 2(e)(5) of the Act which is called the Functionality Doctrine and actually nothing could be further from the truth. The reason that that is a false analogy is because generic terms fail to operate as trademarks as a matter of fact. If you hear it, you do not think of it as a source indicator. In contrast, a nontraditional mark that is barred under the Functionality Doctrine, many times may operate as an indicator of source but it is precluded from trademark protection as a matter of law. So it may very well be recognized as a mark but because it confers an unfair competitive advantage to the mark holder, they get no protection as a matter of law. So that is one of the misconceptions between those two concepts that is out there that I think quite honestly further conflates the issue in this very esoteric area of the law.

RC: Thank you very much. This is very interesting for our listeners. Not only the listeners outside the U.S. but maybe even the listeners inside the U.S. Thank you very much.

EK: Well, thank you very much for having me.

Next we want to give you more information about the recent developments with Facebook drones. Ken, can you fill in our listeners?


KS: Rolf, Facebook, the multi-billion dollar social networking conglomerate, is branching out into uncharted territory, both metaphorically and literally. The Menlo Park, California-based company recently filed a trademark application with the United States Patent and Trademark Office to register its name in connection with unmanned aerial vehicles (UAVs), more commonly known as drones. The application is very short and simple; it merely provides that the name "FACEBOOK," in plain type, will be somehow used in connection with drones. The application is filed on an "Intent to Use" basis, meaning that Facebook does not yet have the trademark in use on the drones. The application also specifies that the "FACEBOOK" name will be used in connection with a Class 12 good, which includes all vehicles that travel by land, air, or water.

The trademark application raises many more questions than it answers: Is Facebook really creating an army of drones with their trademark emblazoned on the side? Will these drones be watching our every move? And when will the drones start filling the skies?

However, this trademark application is likely connected to drones intended not for surveillance, but instead to spread Internet access throughout the world. In March of 2014, Facebook purchased a United Kingdom company named Ascenta that specializes in producing solar-powered drone aircraft. Mark Zuckerberg, Facebook founder and CEO, revealed at that time that Facebook plans to use the Ascenta unmanned aircraft as part of a larger scheme to provide broadband Internet connections in rural areas, in conjunction with satellites and lasers. This Facebook push for rural Internet connectivity is facing direct competition from a similar Google project, as Google recently purchased a competing drone maker and has publicized its "Project Loon" program that uses balloons to spread Internet access.

With a push for rural customers and name brand recognition in previously Internet-deprived locations, it would make sense for Facebook to want to brand its drones appropriately. One report has shown that only 16% of Africans have used the Internet in the past year, compared to 75% of Europeans. Facebook may want to be careful though: recent reports on U.S. military drone use shows that over 400 drones have crashed since 2001.

RC: If you want to learn more about this issue and read a recent article in the press, you can follow the link at www.ipfridays.com/facebookdrones .

KS: That's it for this episode. If you liked what you heard, please show us your love by visiting ipfridays.com/love and tweet a link to this show. We would be so grateful if you would do that. It would help us to get the word out. Also, please subscribe to our podcast at ipfridays.com or on iTunes or Stitcher.com. If you have a question or want to be featured in one of the upcoming episodes, please send us your feedback at ipfridays.com/feedback. Also, please leave us a review on iTunes. You can go to ipfridays.com/itunes and it will take you right to the correct page on iTunes. If you want to get mentioned on this podcast or even have comments within the next episode, please leave us your voicemail at ipfridays.com/voicemail.

You have been listening to an episode of ipfridays.com. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms. None of the content should be considered legal advice. The IP Fridays podcast should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents of this podcast are intended for general informational purposes only and you are urged to consult your own lawyer on any specific legal questions. As always, consult a lawyer or patent or trademark attorney.

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