While COVID-19 rightfully dominates news coverage and Henderson, Franklin has been providing our clients with information, updates and links to resources to help get through this, we also recognize that the mundane is sometimes just as important. Thus, in a world without Major League Baseball, the NBA, NHL, NASCAR or F1, we offer our own unique sports coverage, with an intellectual property slant.

Tom Brady Leaves Boston, Files Trademarks Applications

After 20 storied years with the New England Patriots, Tom Brady turned his back on the franchise, his fans and six Lombardi Trophies to sign with the Tampa Bay Buccaneers. This is undoubtedly a bitter pill for New England fans to swallow, who will now have to get used to mediocre football. (Patriot fans, please see Chicago Bears for guidance).

On the other hand, with his place in the Hall of Fame secure, Brady was looking for new challenges. Specifically, it appears, the challenge of brand extension. Almost as soon as the ink dried on his new contract with Tampa Bay, Brady’s management, TEB Capital Management, Inc., filed applications to register the trademarks TOMPA BAY and TAMPA BRADY with the United States Patent and Trademark Office. The trademark applications identify the goods the mark will appear on, specifically all the clothing, hats and footwear that Tampa Bay fans are rushing out (at least online!) to buy. Time will tell whether Brady can repeat his on-field success with Tampa Bay, but it is certain that his off-field brand strengthening moves will allow him to throw from a deep pocket.

Nature Boy Down for the Count
Continue Reading The Sports Page

COVID-19 has disrupted businesses and has wrought havoc with timelines and deadlines. Likely, it will continue to do so. Many government agencies, such as the IRS as we reported here, are reacting to COVID-19 by extending deadlines. For those with intellectual property-related deadlines in the near term, the United States Patent and Trademark Office (“USPTO”) has recently made some policy changes in response to COVID-19.

Remote Appearances

While work goes on inside the USPTO, the building is closed to the public and any in-person business.  All previously scheduled meetings or hearings before the Trademark Trial and Appeal Board (“TTAB”) or Patent Trial and Appeal Board (“PTAB”) are to take place by video or teleconference.

Deadlines

With regard to deadlines to respond to USPTO actions, inquiries or other deadlines, those are set by statute and rule and the failure to timely respond to a deadline results in an abandonment of the underlying trademark or patent application or registration.


Continue Reading COVID-19 Impact on USPTO Deadlines

Under the Lanham Act, (15 U.S.C. 1051, et seq.), a trademark owner can bring suit against any entity that infringes its trademark.

Among the recoverable damages are disgorgement of the infringer’s profits from the sale of infringing goods, 15 U.S.C. 1117(a). However, where the infringement constitutes counterfeiting, those damages can be trebled or the trademark owner can elect to recover statutory damages, amounting to potentially $2 million per mark infringed, 15 U.S.C. 1117(b), 1117(c).

The Sale of Counterfeit Goods


Continue Reading Holding Landlords Liable for Trademark Infringement by Tenant

Trademark filings are public records. The United States Patent and Trademark Office database contains names and addresses of owners of trademark applications and registrations. A disturbing trend that has reached epidemic proportion is the use of that data by third parties trying to scam trademark owners. If you own a trademark registration and receive any

Trademark protection is available to any individual or entity who uses a trademark in the United States. Since 2015, an average of 400,000 trademark applications have been filed with the United States Patent and Trademark Office (USPTO) each year. According to USPTO data, about 25% of those are filed by non-United States entities and individuals. Effective August 3, 2019 a new Rule will go into effect at the USPTO that changes how those parties must interact with the USPTO.

Who does this impact?

The Rule applies to non-United States parties, including all businesses that have a principal place of businesses (i.e. headquarters) outside the United States, as well as all individuals with non-US permanent addresses. Foreign nationals with residence in the United States or businesses with significant enough contact and business in United States are not impacted.


Continue Reading New Trademark Rules Aimed at Foreign Trademark Owners

In 1991, artist and designer Erik Brunetti launched a clothing line. In 2017, Brunetti filed an application with the United States Patent and Trademark Office (USPTO) to register the trademark representing this brand—FUCT (“Friends U Can’t Trust”). The USPTO refused registration of the mark because the Federal statute governing trademarks—the Lanham Act—prohibited registration of any trademark that

consists of or compromises immoral or scandalous matter.”

Too Scandalous to Trademark?

Reviewing the FUCT application, the USPTO applied its general test of for those marks that might be considered as comprised of immoral or scandalous matter. That is, whether a substantial composite of the general public would find a trademark shocking to the sense of truth, decency or propriety or whether the mark would give offense to conscious or moral feelings. Against this, the USPTO concluded the FUCT mark was totally vulgar, highly offensive and had “decidedly negative sexual connotations.” Therefore, the Lanham Act prohibited registration and Brunetti’s application was refused.

First Amendment Lawsuit


Continue Reading F Word ®

It is almost that time of year — football season is approaching and with the anticipation of tailgating and touchdowns comes, of course, talk of trademarks. For years, the Washington Redskins have been fighting battles regarding their REDSKINS trademark. The issues have created much controversy due to the purported negative connotation the REDSKINS term gives

pro-basketball-team-1594634_1920(1)While we have written on this topic in the past, because the NCAA Basketball Tournament is an annual event and the NCAA gets more aggressive each year, this information bears repeating. Because businesses sometimes tie promotions to the Tournament and use it as a marketing activity, they should be careful how they do so.

The Problem


Continue Reading Don’t Foul Out with MARCH MADNESS Marketing

Eagles_in_concert_September_2014(To the tune of Hotel California)

Once in Northern Virginia, a trademark was filed
A Mexican company a long list compiled
Cosmetics and phone cases, purses, hair gel and shoes
The list went on for six classes, just what did they have to lose?

During examination, a disclaimer was sought
The applicant gladly complied, any fear of refusal was for naught.

Then the mark was published, but the Eagles they did see
Their lawyers got involved
Said you can’t use this for free

Registering HOTEL CALIFORNIA
Such a lovely try (such a lovely try) Such a lovely cry
Don’t even try to use HOTEL CALIFORNIA
For any goods (for any goods) in our neighborhoods….

What Can That “Song” Possibly Mean?


Continue Reading Litigating it up at the HOTEL CALIFORNIA

BrexitBy a slim margin, the United Kingdom voted to leave the European Union (EU) last week. Via the European Union Trademark System and the European Patent Convention a trademark or patent owner had the ability to secure protection across all EU member states by a single, unified registration. Of course, EU protection extended only to EU member states. So, with the UK on the way out of the EU, questions arise as to what protection will the owner of an EU right have in the UK once the BREXIT is complete? For companies that do business in Europe, this could have an impact on European Intellectual Property rights. Smart companies should start considering European options now.

Short Term

It will take at least two years for the UK to officially and fully withdraw from the EU. Until that time, all EU treaties and laws will continue to apply. So, for the near term, there does not appear to be any significant impact.

Long Term


Continue Reading BREXIT: What does it mean to your Intellectual Property in Europe?