First Amendment Defense to Trademark Infringement Claim: MTV Floribama Shore Does Not Infringe FLORA-BAMA Trademark

The First Amendment can be a defense to a trademark infringement claim when the accused work is an artistic work. There, in many cases, trademark rights must yield to the public interest in free expression protected by the First Amendment.

This is demonstrated in the case of MGFB Properties Inc. V. 495 Productions Holdings LLC, No. 21-13458 (11th Cir. 2022). In that case MGFB and its related entities sued 495 Productions and Viacom alleging that the title of the MTV Floribama Shore reality TV show infringed its FLORI-BAMA trademark.

The Plaintiffs operate the Flora-bama Lounge, Package and Oyster Bar on the Florida-Alabama boarder, and have done so since 1964. MGFB owns federal trademark registration no. 4,272,440 , for FLORA-BAMA for bar and restaurant services as well as several entertainment services including hosting social entertainment events, live musical performances, and competitions for fish throwing.

The defendants produced and aired a reality TV show titled MTV Floribama Shore. It was modeled on its prior reality show, Jersey Shore. With the MTV Floribama Shore show, the defendants wanted to highlight “young [S]outhern folks” who go to “shore houses” or “spend summers” on the Gulf of Mexico, extending from the Florida panhandle into Alabama and Mississippi.

1. The First Amendment Roger’s Test Applied

The Second Circuit’s Rogers test balances the trademark owner’s rights against the rights under the First Amendment in connection with artistic works. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). It provides that the title of an artistic work does not violate the trademark act, “[(1)] unless the title has no artistic relevance to the underlying work whatsoever, or, [(2)] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”

In the MGFB case, the court applied the Roger’s test finding that MTV’s use of Floribama was artistically relevant to the show. The court said:

“‘Floribama’ describes the subculture profiled in the series and the geographic area exemplified by the subculture. To break it down even further, the former part of ‘Floribama,’ i.e., ‘Flori,’ refers to Florida and the beach culture the series sought to capture, while the latter part, i.e., ‘bama,’ refers to Alabama and the Southern culture the series sought to capture. … ‘Floribama’ gave viewers ‘a very distinct sense of what part of the country and subculture the series was about.”

On this second part to the Roger’s test, the court found that title of MTV’s show was not explicitly misleading. The court said that the relevant question under this part is “whether (1) the secondary user overtly ‘marketed’ the protected work as ‘endorsed’ or ‘sponsored’ by the primary user or (2) ‘otherwise explicitly stated’ that the protected work was ‘affiliated’ with the primary user. ” And the court found no evidence of this. On the contrary, Viacom “chose a title that includes its own house mark (MTV) and the name of one of its iconic franchises (Shore).”

Therefore, Defendants’ use of Floribama in its television series title—MTV Floribama Shore—did not infringe the FLORA-BAMA trademark .

2. Some Confusion Is Allowed When First Amendment Applies

The court found MTV’s show title did not infringe even though MGFB presented some evidence that the title of the show caused confusion. MGFB conducted a survey that found that 34% of those surveyed had heard of the term “Flora-bama,” and half of that 34% identifying it as the Lounge. However, this was irrelevant because the evidence must relate to the nature of the defendant’s behavior under part 2 of the Rogers test, not the impact of the defendant’s use. Further, MGFB “submitted emails, letters, and declarations from their bartenders and regular musical acts stating that there have been multiple instances of confusion between the series and the Lounge.” Yet, this did not lead to a different result.

Transparency and Design Patents; Design Patent with Computer Generated Images Claims Only Opaque Design

The way that a design is presented in a design patent is critical. Design patent drawings are often line drawings. But photographs are also allowed. And some patents use computer generated images.

Yet, while photographs and computer generated images may provide more details than line drawings, they are likely to be more limiting. The more details in the design drawings the more possible differences a competitor could develop. Details in a design patent are a double edged sword, more details provide increased options for distinguishing prior art, but may result in more narrow protection as shown in the case below.

Think Green Ltd. sued Medela AG asserting that Medela’s breast pump infringed its design patent US D808,006 (the ‘006 Patent). Below is figure 9 (first/left) from the ‘006 patent and Medela’s pump (second/right).

Medela’s pump is transparent. The images of the ‘006 patent are computer generated images. Think Green argued that the ‘006 patent covered transparent objects. The court disagrees.

According to MPEP rules, surface shading lines are used to “indicate “character and contour,” including “to distinguish between any open and solid areas of the article.” On the other hand, the court notes that other “courts have held that when a patent fails to specify a limitation, in other words, when it is blank and does not include surface shading, the patentee is entitled to the broadest reasonable construction.” For example, in an older case from the 6th Circuit, that court found a blank surface without oblique lines could claim a transparent, translucent, or opaque surface, or both. Transmatic, Inc. v. Gulton Indus., Inc., 601 F.2d 904, 912-13 (6th Cir. 1979).

The court in the Think Green case concluded “an inventor intending to claim a generically opaque surface, and not any particular material type, would use a line drawing with a blank surface, free of anything but contour lines, thereby claiming both an opaque and transparent surface.” Therefore, the court found the ‘006 Patent computer generated images “must be interpreted to claim an opaque object to the exclusion of translucent or transparent objects.”

The court then found that Medela’s pump was not substantially the same as the design of the ‘006 Patent and did not infringe. The court said:

“Even if Medela’s product were exactly the same as Think Green’s design in all other aspects, the Court finds that an ordinary observer would not find the translucent object to be substantially the same as the opaque object. Opaque and translucent objects are categorically different such that they are “plainly dissimilar” and could not be confused by an ordinary observer. … Indeed, whether an object is opaque or translucent is one of the most obvious and prominent characteristics of any object.” Think Green Ltd. v. Medela AG, No. 21 C 5445, 2022 U.S. Dist. LEXIS 184040 (N.D. Ill. Oct. 7, 2022)

Now, compare the drawings of the ‘006 patent to the following drawings from two patents owned by Lego A/S.

The first drawing (left) from US Patent D951366 (‘366 patent) shows a toy building element presented in a traditional black and white line drawing. The second drawing (right) from US Patent D951365 (‘365 patent) is a photograph, showing the toy building element is transparent or at least translucent.

The ‘365 patent clearly covers a transparent or translucent toy building element, but probably does not cover an opaque product under the reasoning in the Think Green case.

But does the ‘366 patent cover transparent or translucent products? The reasoning in the Transmatic, Inc. and Think Green cases indicates it does.

Yet, the MPEP provides that “oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror.” MPEP 1503.02(II).

What is oblique line shading? The following is an example of oblique line shading for black and white line drawings showing transparent surfaces, from the USPTO Design Patent Application Guide:

.

Does the failure to use oblique line shading in line drawings limit the claimed design to opaque surfaces? A number of district courts have said no and followed Transmatic.

One court said: “the relevant section [1503.02(II)] of the MPEP only specifies that an inventor wishing to limit a particular surface to a transparent, translucent, or reflective material must indicate the surface through the use of oblique lines. It does not state that failure to include oblique lines necessarily excludes the use of a transparent surface.” Apple, Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2012 U.S. Dist. LEXIS 105125, at *24-25 (N.D. Cal. July 27, 2012). Other district courts have agreed in Water Tech., LLC v. Kokido Dev. Ltd., No. 4:17-cv-01906-AGF, 2019 U.S. Dist. LEXIS 42420, at *42-44 (E.D. Mo. Mar. 15, 2019) and Lifted Ltd., Ltd. Liab. Co. v. Novelty Inc., Civil Action No. 16-cv-03135-PAB-GPG, 2020 U.S. Dist. LEXIS 92102, at *19-20 (D. Colo. May 27, 2020).

The drawings of design patent D556396 in the Water Tech case that were construed to encompass both opaque and transparent surfaces includes:

Why would Lego file for the ‘356 patent with photos of the transparent product if the line drawing version in the ‘366 patent is sufficient to cover transparent and opaque surfaces according to the cases above? There are at least a few reasons. First, if the prior art invalidates the broader line drawing version of the ‘366 patent, possibly the ‘365 patent would survive on the basis of the specifically claimed transparency (there is some uncertainty on this issue as well but see In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001)). Second, it appears the Federal Circuit has not ruled directly on whether line drawings cover transparent and opaque surfaces. Therefore, if the Federal Circuit would decide line drawings do not cover transparent surfaces or the law would otherwise change in this direction, Lego would be covered by the patent specifically showing transparency. Third, possibly it makes it easier marginally to succeed on a patent infringement case because the transparency in the design patent drawings makes them look more like the accused transparent product. In theory this last aspect should not matter if a judge instructs that the design patent covers transparent and opaque surfaces. Yet, it nevertheless may be marginally easier.

Appropriate line drawings provide a better chance of covering transparent surfaces as compared to photos or computer images of products with opaque surfaces. Yet, if transparent surfaces are important to the design, they can be specifically indicated in the drawings by the use of oblique line shading and accompanying text description or a photo showing a transparent product such as in Lego’s ‘365 patent above.

Design Patent Infringement Claim Over Skinny Razor Fails

Sharidan Stiles was selling her Stiles Razor, a disposable razor with a narrow blade, through Walmart. But the sales of her product were allegedly not meeting Walmart’s expectations. Walmart stopped selling Stiles Razor and began selling another narrow blade razor, the “Micro Razor,” provided by American International Industries. Silts sued Walmart and American for design patent infringement, among other claims.

Below are figures from the U.S. Design Patent D542,468 and photos of the accused Miro Razor.

The commonalities of a narrowed and angled head, a elongated handle, and a gripping surface, are factored out as functional. That leaves the ornamental aspects, about which the court says differ on the whole:

“First, the grip: in the American design, the grip is much wider than the handle, but in only one dimension, and the bulge has a diamond-like shape. In the Stiles design, by contrast, the grip is a cylinder with a constant radius, as described above. The American grip is also contoured and textured, whereas the Stiles grip is angular and smooth. Second, the end of the handle: the American design is rounded; the Stiles design is flat. Overall, these and other features give the American razor a flowing, contoured look and the Stiles Razor an angular, minimalistic look.”

Therefore, the court found that the Micro Razor did not infringe the patent.

Case: Stiles v. Walmart, Inc., No. 2:14-cv-02234-DAD-DMC, 2022 U.S. Dist. LEXIS 203768 (E.D. Cal. Nov. 7, 2022)

Injunction Limiting Use of Trademarks On Webpage Did Not Apply to Use in HTML Source Code

CDMPUsually, if you are ordered not to use a mark more than a certain number of times on a webpage, you’d be conservative and count uses of the mark that are visible on the webpage and the uses that are not visible but are in the HTML source code. Do you want to argue whether use of the mark in the HTML source code is not a use of the mark on the webpage because it’s not visible?

Seems better to avoid testing this distinction and prompting your opponent to move for sanctions. It is arguable that use of a mark in a HTML source keyword meta tag should not be infringement, since search engines probably ignore it and customers can’t normally see it, but sometimes a court says it is.

Enterprise Warehousing Solutions, Inc. (EWS), a test prep company, proceeded to test this distinction, whether intentionally or not.

Data Management Association International (“DAMA-I”), an exam and certification provider, sued EWS for trademark infringement. One of the certifications DAMA-I provides is the Certified Data Management Professional (“CDMP”) certification. To obtain the certification, a person must pass the Data Management Fundamentals Exam.

DAMA-I alleged that EWS was inappropriately using DAMA-I’s trademarks on EWS’s website and social media accounts when promoting its test prep course. The court entered a preliminary injunction against EWS. However, the court recognized the need, under nominative fair use, for EWS to use certain DAMA-I marks in a limited matter to describe EWS’s exam preparation course. Therefore the injunction allowed EWS to use certain of DAMA-I’s mark up to five times on any web page.

DAMA-I found that EWS was using DAMA-I marks in EWS’s website source code, which was not visible on the rendered web pages. By counting the use of the marks in the source code, DAMA-I assert EWS exceeded the prohibition on using DAMA-I’s marks more than five time on any web page.

But earlier in briefing on the preliminary injunction motion the parties did not address use of marks in HTML source code or metatags. Instead they focused on the content on EWS’s web pages. The court found that “Nowhere in the preliminary injunction order did the Court mention marks invisible to the consumer.” So the court found that the use of marks in HTML source code (which was not visible when the webpage was normally displayed) fell outside of the scope of the preliminary injunction.

This could have gone the other way. So, check for any source code use of third marks that are not visible on the rendered webpage. And the conservative route is to remove those uses.

Cite: Data Mgmt. Ass’n Int’l v. Enter. Warehousing Sols., Inc, No. 20 C 04711, 2022 U.S. Dist. LEXIS 204942 (N.D. Ill. Nov. 10, 2022).

Overcoming Trademark Registration Refusal: The Refusal Lacks Supporting Evidence

EPIGENEWhen a trademark application is refused registration based on a likelihood of confusion with a prior registration, the examining attorney of the USPTO must support that refusal with evidence. If it is not, the refusal can be reversed by the Trademark Trial and Appeals Board (Board) as demonstrated in the following case.

Genebook LLC applied to register EPIGENE for the goods of “electronic database in the field of genes recorded on computer media.” The application was refused based on two prior registrations for the same mark EPIGENE. The goods listed in the prior registrations for EPIGENE where (1) Diagnostic preparations for medical purposes, and (2) Apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing.

The examining attorney needed to support the refusal with evidence that the goods in the registrations and the goods in Genebook’s application were related in some manner and/or that the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. But the Board found the evidence was lacking and reversed the refusal.

1. Similarity of the Goods

The examining attorney cited website evidence from numerous DNA testing companies to try to show that the goods where related. However, the Board said there was “no evidence in the record that any of these companies offer an ‘electronic database in the field of genes recorded on computer media’ with search and retrieval capability to their customers.” The DNA testing companies offered printed reports . Yet, the Board said, “While these printed reports ‘may’ be created via access to an electronic database, we have no basis for finding that these reports are themselves ‘databases’ as that term is defined and understood in this field.” Further, the sellers of genetic testing equipment did not offer gene databases or information from gene databases in connection with their products.

Therefore, there was a gap in evidence between the goods of the prior registrations and the applicant’s goods.

Further, the examining attorney can show the goods are related by showing they “have complementary uses, that they are often used together or that they are otherwise bought by the same purchasers for the same or related purposes, such that confusion would be likely if the goods were marketed under the same mark.” Yet, the Board found that there was little evidence of this.

2. Channels of Trade

The Board acknowledged the principle that “In the absence of meaningful limitations in either the application or the cited registrations, [we] properly presume[] that the [respective] goods travel through all usual channels of trade and are offered to all normal potential purchasers.” However the Board found that this presumption is “not a substitute for proof, which is absent here.”

As a result of the lack of evidence showing similarity of the goods or overlapping channels of trade, the Board reversed the refusal and allowed the application to proceed toward registration.

Identifying a lack of evidence supporting a trademark registration refusal is one possible path to overcoming a refusal and achieving registration.

Case: In re Genebook LLC, Serial No. 90269018 (TTAB Oct. 26, 2022).

Model Numbers and Designations as Trademarks

A product model, style, or grade designation can be protected as a trademark. But, as with other trademarks, the designation must be used as a trademark. To illustrate this point, let’s look at the Trademark Trial and Appeal Board (TTAB) decision in In Re Hydro-Gear Limited Partnership, No. 87641657 (TTAB 2020).

In that case, Hydro-Gear applied to register ZT-1800 for land vehicle parts, namely, transaxles. Hydr-Gear submitted specimens showing use of ZT-1800, including the following:

The problem is that ZT-1800 at the right of the highlighted portion in the image above does not stand out like a trademark. Can you tell its a trademark on that label? No. It blends in with the surrounding text.

The TTAB said, the mark, ZT-1800, in the specimens appeared “in nondescript block lettering, which is displayed on the same line and in the same size, font style, and boldness as the other wording or lettering in that part of the specimen.” Further, the TTAB noted that the mark “appears in a font size much smaller than most of the other elements on the shipping label….in a manner more befitting information matter, such as in this case a model number, rather than an indicator of source.”

The TTAB said that “It is well settled that terms used merely as model, style, or grade designations are not registrable as a trademark because they do not serve to identify and distinguish one party’s goods from similar goods manufactured and/or sold by others.” The key word in that sentence is merely.

This is because in another case, the TTAB said, “Depending upon the nature and manner of use, it is possible for an alphanumeric designation, which functions only in part to designate model or grade, to be inherently distinctive, and hence not require a showing of secondary meaning in order to be protected as a trademark.” Neapco Inc v. Dana Corp., 12 U.S.P.Q.2D (BNA) 1746, 1748 (TTAB 1989). Therefore, the manner that the model or grade is used and presented impacts whether it will be deemed a protectable trademark or merely a model, style, or grade designation.

The mark at issue in the Neapco case was “5-280X” for “Couplings, Specifically Universal Joint Couplings for Use in Drive Lines for Vehicles.” We don’t have the example uses from that case, but a later renewal filing included the following specimen portion:

In this example, you can see that the mark “5-280X” is the largest text on the right-side label (apart from the “Spicer” on the box to the left). The 5-280X mark is featured at the top of the label. When you compare the 5-280X mark on this label to the use of ZT-1800 on the label in the Hydro-Gear case, 5-280X is more prominent.

While the specimen showing the 5-280X mark above was accepted by the USPTO, more could be done to better position the 5-280X mark as a trademark. It could be presented in a different font and/or color from the surrounding text. It could be provided with a color or other emphasis like the red line under “Spicer” on the box. It’s orientation could be altered, like the angled appearance of “Spicer.” No particular mode of emphasis is required, but the key is to make the mark stand out.

Ask this: When I look at the use of the model, style, or grade designation, does it standout like a trademark? Also, would a customer recognize this as a trademark? If not, or if in doubt, add more emphasis.

Protecting Unregistered Descriptive Trademarks in the Seventh Circuit: Acquired Distinctiveness

When attempting to enforce or assert an unregistered descriptive mark, a trademark owner generally needs to show acquired distinctiveness (a.k.a. secondary meaning). Why?

First, the default position is that merely descriptive terms are not likely to be seen as a source indicator (i.e. the function of a trademark) to consumers. Courts have described this in a number of ways including that descriptive terms “are a poor means of distinguishing one source of services from another.” M.B.H. Enters. v. Woky, Inc., 633 F.2d 50, 54 (7th Cir. 1980).

Second, when a merely descriptive term is not seen as a source indicator by customers, such terms should be available for use by competitors to describe their goods or services. Id.

However, a merely descriptive term can become protectable when the relevant purchasing public comes to recognize the term as a source indicator rather than merely descriptive. Therefore, a term has acquired distinctiveness (or secondary meaning) were consumers think of the term not as descriptive, but as the name of the product or service. Packman v. Chi. Tribune Co., 267 F.3d 628, 638 (7th Cir. 2001).

Stated another way, acquired distinctiveness is found where there is “a mental association in the buyers’ minds between the alleged mark and a single source of the product [or service].” Echo Travel, Inc. v. Travel Assocs., 870 F.2d 1264, 1266 (7th Cir. 1989).

How do we know when this mental association exists? Courts in the Seventh Circuit consider a number of acquired distinctiveness factors, including:

  • (a) direct consumer testimony;
  • (b) consumer surveys;
  • (c) exclusivity, length, and manner of use;
  • (d) amount and manner of advertising;
  • (e) amount of sales and number of customers;
  • (f) established place in the market; and,
  • (g) proof of intentional copying.

[Echo Travel, Inc. v. Travel Assocs., 870 F.2d 1264, 1267 (7th Cir. 1989); Baig v. Coca-Cola Co., 607 F. App’x 557, 560 (7th Cir. 2015).]

Factors (a) and (b) are considered direct evidence while the remaining factors are circumstantial evidence. Direct evidence involves asking customers whether they recognize the term at issue as a source of a product and recording the results.

The factors concerning circumstantial evidence consider facts that could indicate the customers recognize the term as a source indicator. For example, long, exclusive and consistent use of a mark, under factor (c), weighs in favor of finding recognition. Further, a lot of advertising, sales, customers, and a prominent place in the market leans, under factors (d), (e), and (f), weights in favor of finding recognition.

For example, in the Echo Travel case, the court found that the plaintiff Echo Travel did not show acquired distinctiveness in a picture-mark, comprising a beach scene. Echo provided no admissible direct consumer evidence and no survey. The length of use of the picture-mark was one season comprising the fall of 1985 to the winter 1986, which did not weigh in favor of Echo. Echo’s advertising of 25,000 posters at 200 campuses was some evidence, but not enough where the court characterized it as providing “little probative light.”

Regarding sales, Echo ran 10,000 trips in Daytona Beach in the spring of 1986 resulting in about $2 million in sales. But the court criticized Echo for not providing its sales volumes prior to and after the 1985-86 season, and thus, “there is no way to measure whether the beach scene poster [mark] impacted its sales volume.” The court also found there was a lack of evidence that Echo has an establish place in the market and there was no proof of intentional copying.

In contrast, in Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1086-87 (7th Cir. 1988) the court found the plaintiff had shown a better than negligible chance of establishing secondary meaning in “International Kennel Club” sufficient for a preliminary injunction. While the plaintiff did not provide a survey, the court found that the amount and manner of advertising and the length and manner of use of the mark was sufficient. The plaintiff advertised in publications of interest to dog fanciers. It advertised in Chicago newspapers and magazines where its dogs shows are held. It mailed out mailings to its mailing list of 15,000 prior to each of its shows.

The plaintiff spent $60,000 in advertising and public relations expenses in its most recent fiscal year, representing 42 percent of the club’s expenses. Further it gained extensive free publicity. Moreover, it received letters and phone calls asking about defendant’s accused product, indicating that when dog fanciers see the “International Kennel Club” name, they think of the plaintiff. Last the plaintiff operated and used the International Kennel Club mark for over 50 years.

The requirement to show secondary meaning (acquired distinctiveness) for an unregistered descriptive mark is an additional burden (and expense) for a trademark owner. Consider the effort required put on evidence for each of the acquired distinctiveness factors above.

If the trademark owner is heavily invested in proceeding with a unregistered descriptive mark, it may need to bear that burden. But when choosing a mark, consider choosing a stronger mark to avoid the need to show acquired distinctiveness.

The Difference Between an Assignment and a License of a Patent

The transfer of rights in a patent generally fall into two categories: an assignment and a license. The transfer is usually accomplished by an agreement.

Whether the agreement at issue is an assignment or a license matters because generally an assignee can sue for infringement alone, while a licensee of less than substantially all of the patent rights cannot sue for infringement alone without the patent owner.

A patent grants the owner certain rights, such as the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States. 35 U.S.C. § 154(a)(1) 

Usually, an assignment transfers all of the rights* of one party in a patent to the recipient (the assignee). Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875 (Fed. Cir. 1991); 35 USC 261. Also, a transfer of substantially all of the patent rights can be considered an assignment for the purposes of standing to sue for infringement. A transfer of less than substantially all of the rights, is a mere license. It is the content and legal effect of the agreement that determines whether it is an assignment or license, not its title.

In the Vaupel case, the court found the agreement at issue there transferred substantially all of the rights in the patent, where the seller retained the following rights: “1) a veto right on sublicensing by Vaupel; 2) the right to obtain patents on the invention in other countries; 3) a reversionary right to the patent in the event of bankruptcy or termination of production by Vaupel; and 4) a right to receive infringement damages.” Therefore, despite the seller retaining these rights, the agreement at issue was considered an assignment.

In contrast, in Sicom Sys. v. Agilent Techs., Inc., 427 F.3d 971, 978-979 (Fed. Cir. 2005), Canada licensed the patent at issue to plaintiff Sicom. The court found the license did not transfer substantially all of the rights, where Canada reserved the right to use the patented technology itself, to veto Sicom’s reassignment of its rights, and to sue for non-commercial infringement. Canada also retained legal title to the patent.

The line between a transfer of substantially all of the rights and less than substantially all of the rights is gray. Ignoring this issue and simplifying it, an assignment usually transfers everything (including legal title) whereas a license grants less than all of the rights and reserves rights to the person or entity granting the license.

*The Supreme Court has also said that the transfer of an undivided portion or share of a patent can also be an assignment, but then assignor and assignee must act together to sue for infringement. Waterman v. Mackenzie, 138 U.S. 252 (1891).

Don’t Bother Speculating in Trademarks: COVID-19 VAX and CORONAVAX Trademark Apps Likely To Fail

A company named And Still, LLC filed trademark applications to register COVID-19 VAX and CORONAVAX for vaccines.

The Boston Business Journal reported that the trademark applicant planned to sell the the trademarks to a company that makes a coronavirus vaccine.

If this is true, it is very unlikely to work.

There is No Market For Speculating in Unused Trademarks

First, there is no market for unused trademarks. As I’ve written before, it is a common misconception that filing a trademark application grants rights in a trademark without actually using the trademark.

Trademark rights are acquired by using the trademark in conjunction with the sale/providing of goods or services. An intent-to-use trademark application can be filed before a trademark is used with products or services, but only if there is a demonstrated bona fide intent–at the time the application is filed–to use the trademark with the goods/services described in the application.  M.Z. Berger & Co., Inc. v. Swatch AG, No. 2014-1219 (Fed. Cir. June 4, 2015).

Here, if And Still, LLC didn’t have an intent sell vaccines itself (or in some cases through an affiliated/controlled company) under the marks at the time the trademark applications were filed, the trademark applications are likely subject attack on this basis. Intent to sell the marks, without use, won’t work.

Descriptive Marks Require Acquired Distinctiveness

Second, a mark that is merely descriptive of the goods/services and has not acquired distinctness in the marketplace will be refused registration the primary register.

In 2019, the TTAB affirmed the refusal to register ZIKAVAX and ZICAVAC for vaccine formulations because each mark was descriptive.

Bharat Biotech International Limited applied to register these marks in 2017 following the epidemic caused by the Zika virus.

The TTAB found that misspelling of zika as ZICA did nothing to make ZICA non-descriptive. It also found that evidence showed that the VAX and VAC were common abbreviations for vaccine.

The TTAB concluded that “the proposed marks immediately describe the goods as Zika vaccines, because [t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.”

Here, the COVID-19 VAX and CORONAVAX is likely to meet the same fate at the ZIKAVAX trademark application, a refusal as descriptive.

Descriptiveness refusals can be overcome by showing the mark at issue has become associated with a single source in the market place. This market recognition is known as acquired distinctiveness or secondary meaning. But that is unlikely here at this stage because the applications are intent-to-use applications. Intent-to-use applications tend to indicate that applicant has not yet used the mark. And without use, there is unlikely to be a marketplace association.

There’s also the option to place a descriptive mark on the supplemental register. But that’s if the marks are not generic. Also, a registration on the supplemental register does not provide a presumption that the registrant owns the mark.

Further, even if the marks where registered on the supplemental register, the marks would still need acquired distinctness for enforcement, which appears unlikely at this time.

Cite: In re Bharat Biotech International Limited, Serial Nos. 87570858 and 87570862 (TTAB 2019) (Refusing ZIKAVAX and ZICAVAC as descriptive of vaccine formulations).

Trademark Due Diligence in Corporate Transactions

At least one trademark is often involved in a sale, merger, asset purchase, or similar corporate transaction of a business. Below are some of the steps that a buyer might undertake to investigate a seller’s rights in trademarks involved in corporate transactions.

1. Proper Original Owner

A trademark application, and the resulting trademark registration, filed in the name of the wrong owner may be void and invalid. See TMEP § 803.06. Some errors in the manner the applicant was listed in the original application can be corrected, but some cannot. See TMEP 1201.02(c). Therefore, it is important to check whether the original applicant of the trademark registration was correct and properly identified on the application.

For many applications, a copy of the original trademark application can be found in the USPTO’s Trademark Status & Document Retrieval (TSDR) system.

If the trademark registration is void for being filed in the name of an uncorrectably wrong entity, then the trademark registration’s value may be discounted, and consideration should be made of filing a new trademark application.

2. Proper Chain of Title

Once it is established that the trademark registration arose from an application naming the correct owner, then the next item to review is the chain of ownership from the original applicant to the current owner. Each assignment and transfer of the registration of the underlying trademark should be reviewed to ensure a proper chain of title to the current owner of the trademark registration.

Ideally all of the assignments and transfers should have been recorded (but sometimes they are not) at the USPTO so that a search of title can be made at the USPTO’s Electronic Trademark Assignment System (ETAS). If gaps, errors, or unreleased security interests in the chain of title exist, they can be remedied before closing.

3. Assignments Include Associated Goodwill of the Business

A trademark cannot be assigned/sold alone (known as a “naked assignment” or a “assignment in gross”) without the goodwill of the business associated with the mark. U.S. Trademark law provides, “A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.” 15 USC 1060.

A naked assignment is invalid. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 956 (7th Cir. 1992) (“the transfer of a trademark apart from the good will of the business which it represents is an invalid ‘naked’ or ‘in gross’ assignment, which passes no rights to the assignee”).

Therefore, each assignment in the chain of title from the original trademark registration owner should be reviewed to ensure that it contains a recitation that the goodwill of the business associated with the mark was transferred with the trademark to the assignee.

4. Currently Accurate Description of Goods/Services in Registration

Overtime businesses can add and/or drop products and services. It is ideal for the description of goods and services in a trademark registration to accurately and completely cover the goods and services that are now offered under the corresponding trademark. The older the trademark registration is, the more chance that change in conditions have arisen so that the description of goods and/or services in trademark registration(s) is out of alignment with the current goods and services.

If the registration(s) do not cover some of the currently offered goods or services, a new trademark application can be filed on the same mark covering the goods/services not covered by the current registration(s) (since a trademark registration cannot be amended to add goods or services).

If the current registration list goods/services not currently offered and not planned to be offered in the future, at the time for renewal of the registration, the description can be changed to remove goods/services no longer offered.

5. Unregistered Trademarks Specifically Listed

While the above points are directed to trademarks that are registered, unregistered trademarks should also be considered. Trademark rights can arise from use of a trademark in connection with goods/services, without any registration. For example, the Lanham Act protects unregistered distinctive trademarks used in commerce. 15 USC 1125(a).

Therefore, a trademark transfer document should identify unregistered trademarks that are being transferred, in addition to registered marks. Further, the goods and services corresponding to each unregistered mark should ideally also be identified in the transfer document.

These are some steps that a buyer can perform in a corporate transaction involving trademark registrations.

Note: reference to trademarks in this post also includes service marks.