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?

KEN SUZAN'S DISCUSSION REGARDING THE WASHINGTON 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.

INTERVIEW BETWEEN ROLF AND ELIZABETH KING OF CONLEY ROSE IN HOUSTON, TX

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?

KEN SUZAN'S DISCUSSION REGARDING FACEBOOK DRONES

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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.