10608742_10202856137579939_587007998374245216_oFall has arrived, which means professional football is in full swing on and off the field. While on-field activities are geared toward physical dominance, victory and relentless pursuit of the Lombardi Trophy, an equally competitive set of battles wages off field in the world of trademarks.

The National Football League (NFL) constitutes 30 teams and one of the strongest brands in the world. Not only do teams protect their names — BEARS, BUCCANEERS, PACKERS — but also their slogans – WE ARE ALL PATRIOTS, AMERICA’S TEAM, and of course logos. The 2015 football season, full of on-field excitement and drama, also brings two trademark cases that deserve mention.

SUPERB OWL confusing with SUPER BOWL?


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iStock_000050275830_LargeHana Financial, Inc. v. Hana Bank is the final case we’ll discuss reviewing the recent Supreme Court decisions. This case involved review of a very specific issue, namely, whether “tacking” is a question of fact or law.

What is “Tacking”?

Under general principles of trademark law, the first party to use a mark generally has the superior rights. Technically, each time a party modifies a trademark, a new trademark is created and use of that mark relates only to that particular mark and not to any prior iterations of the mark.

However, the doctrine of “tacking” has evolved to allow trademark owners the ability to change their marks and still claim priority based on prior versions of a mark. Basically, a trademark owner may “tack” its use of an altered mark onto its use of the original, prior mark when both marks convey a “continuing commercial impression.” The determination of whether there is this “continuing commercial impression” involves an assessment of how consumers would perceive the original and altered forms of the marks as they appear in the marketplace. If the two would be considered as conveying this “continuing commercial impression,” then the rights in the mark would relate back to use of the original mark.

Facts of the Case


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TrademarkUnder the Lanham Act, before any trademark registration will issue, an application must first be published for opposition. This publication provides the public with an opportunity to challenge registration of a trademark by another party. An opposition action is an adversarial proceeding before the Trademark Trial and Appeal Board (TTAB) and though not generally as lengthy or formal as litigation in the courts, follows essentially the same process. While there are a number of bases for an opposition, the most common is based on an allegation from one party that the trademark of the other party is likely to be confused with its own. Oppositions involve pleadings, discovery, depositions, legal briefs and ultimately oral arguments in front of a panel of three administrative judges of the TTAB. This panel ultimately issues a written opinion and a decision as to whether the opposed mark is or is not entitled to registration.

An opposition action is very narrow, however, as it only relates to the question of whether a particular trademark is entitled to registration. Issues outside that (such as any actual infringement of a trademark or damages) are not addressed. Historically, those issues are addressed via trademark infringement litigation in federal court. There has always been a question, however, as to the impact of a TTAB decision regarding registrability of a given trademark in any other trademark litigation between the parties at issue. If the TTAB determines that A’s trademark is confusingly similar to B’s, does that automatically mean that A’s mark is confusingly similar to B’s in the courts? Per the recent B.B. Hardware v. Hargis Industries decision, the answer is potentially yes.

Facts of the Case


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4090049313_b3ae09a508_mMany people ask “Why do I need to register my trademark?” True, the owner of a mark will obtain some measure of common law rights by simply using a mark, but these rights are limited in scope when compared to the more important rights conferred by a Federal trademark registration.

Exclusivity Nationwide

One of the most important benefits of Federal registration is that a registration creates a legal presumption that you own that mark and have the exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in your registration. Therefore, a Federal registration confers exclusivity and for another party to claim otherwise and contend that a trademark owner does not have such rights requires a potentially significant showing.


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Flickr Diet BosEvery entrepreneur knows that a key piece of success is a strong and identifiable brand. Because much thought, effort and money goes into branding and so much success rests on it, it is important to ensure you can own, use, and protect that brand. This article addresses some basic intellectual property considerations entrepreneurs and startups should keep in mind from the beginning.

Copyright

Brand creation may involve a number of people including both employees and outside consultants such as ad agencies and designers. Their output, including potential product names, website copy, strategic reports, etc., is likely something they could claim copyright in. While these people can provide valuable creative input and direction, unless proper precautions are taken in the beginning, you might not end up owning what they create.
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