Trademark and Wine/Beer end of the year update for 2016

By Debby Winters

For the past two years I have reported on a blog post by the folks at “Trademark & Copyright Law” in which they discussed the year in terms of two important things: Trademarks and Adult Beverages. The 2016 Guide is now out.

Notable among the cases mentioned is the one about the ATLAS BEER battle between Chicago and DC from 2015.  It seems as though the Chicago Atlas changed its name to BURNT CITY Brewing. 

There’s also a dispute between Bad Spaniel and Jack Daniels where the bottles look remarkably similar but the court held that the bottle trade dress and design are non-functional.

Take a look at the list and see if you recognize anything. Let me know if you find these trademarks confusing or infringing! At least, after looking at the list, you will have some talking points for your next holiday party, as I bet most of your friends are not as savvy when it comes to Trademarks and Adult Beverages as you’ll be after going through this list!

Here’s to Trademarks and Adult Beverages!

Happy Holidays 2016!

Intellectual Property Involving the NFL

By Debby Winters

“Are you ready for some football®?” ABC Sports, Inc. trademarked that phrase back in 1998 for the entertainment services for their television sports programs featuring football games. That’s not by any means, the limit to trademarking power in the world of football, NFL, or Superbowl. The NFL has roughly 500 phrases trademarked that relate to its football games, including the term “Super Bowl.” Those word were registered in 1969.  A search for the words “super bowl” with the US Trademark Office shows around 90 phrases attempted at registration. Most of these have been blocked by the NFL saying there would be customer confusion with its trademark registered original “Super Bowl.”

As we get ready for the big game on Sunday between the Carolina Panthers and the Denver Broncos, I thought it would be a good time to review some intellectual property involving the NFL. I have blogged about various aspects over the years, including 2012’s first internet streaming of the game, use of athletes names and images for video games, tattoos that athletes sport,  more than once about the cancellation of the Washington Redskins trademark, and whether it was immoral or scandalous. There was also a blog about trademarks owned by the NFL that including Stephen Colbert’s famous “Superb Owl” reference.  [I know, I miss his too! ]  I don’t limit my IP blog in the world of sports to just football, I’ve included the basketball craze of March Madness, and the related sport of picking and choosing a good beer.
While I have my own favorite story for the year 2015- that of former University of Georgia standout and Philadelphia Eagles Safety Terry Hoage and his legal victory for his vineyards, I’ll save that for another day. I’m just going to point you to an interesting look at The Sue-per Bowl Shuffle, a look at NFL-related IP litigation.

I’ll leave you with a few words to think about:  Carolina Panthers – dab on & keep pounding the Denver Broncos! Happy Super Bowl® 50!

 

 

 

What does it mean to be immoral or scandalous?

By Debby Winters

There is an absolute bar to the registration of “immoral or scandalous matter” according to Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a).  To the U.S. Patent and Trademark Office (USPTO) immoral or scandalous might mean something different from what it means to you or me.   Additionally, although the two words “immoral” and “scandalous” may have somewhat different connotations, case-law has included immoral matter in the same category as scandalous matter.

“Scandalous” was defined as “shocking to the sense of propriety, offensive to the conscience or moral feelings, or calling out for condemnation” when  used to describe a mark that was trying to obtain trademark protection. This mark consisted of a photograph of a nude, reclining man and woman, kissing, and embracing. The mark was used for a “newsletter devoted to social and interpersonal relationship topics and social club services.”  The statutory language “scandalous” has also been considered to encompass matter that is “vulgar.” Vulgar matter has been defined as “lacking in taste, indelicate, morally crude.”

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, especially where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word, for example in the proposed marks 1-800-JACK-OFF and JACK OFF. These were held as scandalous simply based on their dictionary meanings.  Folks have tried to get around that with creative spelling, but there is no use in trying, because marks such as FUK or SH*T have not passed the USPTO on the same vulgar/scandalous basis.  The Trademark Office won’t be fooled and it will it be lenient.

How about a “nutty’ variation for a name of a beer? Does that sound vulgar or scandalous to you? Certainly not at first glance it doesn’t.  After all, beer can sometimes be described as having a nutty flavor.  Well, recently Engine 15 Brewing Co filed to register the name of one of a beer, NUT SACK DOUBLE BROWN ALE.  Its trademark registration was initially refused based on the examiner’s determination that the mark was immoral or scandalous because “nut sack,” which the examiner equated the mark to is slang for a part of the male anatomy.  The examiner found the mark NUT SACK DOUBLE BROWN ALE would be perceived as “offensive to a substantial composite of the general public.”  Thus, the application was refused registration under Section 2(a) of the Trademark Act, the section that prohibits registration of immoral or scandalous marks.  Engine 15 appealed that ruling and they won.  The Trademark Trial and Appeal Board (TTAB) considered the prevalent use of the term “nut” and “nutty” in connection with beer flavor profiles and found that target consumers with “contemporary attitudes” would see the attempt at humor rather than being offended.  The TTAB also threw in a “Christian Grey/50 Shades” reference, noting that determinations of whether marks are too scandalous to be registered “involve various shades of grey.”  Witty of them, right?  As an aside, the mark FIFTY SHADES OF GREY has been registered for adult sexual aids as well as other related products.

Background: In case you haven’t kept up with recent immoral or scandalous trademark issues, several marks owned by the Washington Redskins football team were ordered to be cancelled based on determinations that REDSKINS is an offensive and disparaging term to Native Americans. The Washington Redskins are appealing the decision to the United States Court of Appeals for the Fourth Circuit in Virginia.  In a bold tactic, the appeal brief from the Redskins cites a slew of other registrations issued by the USPTO that contain terms that are racist or offensive but have been allowed to be registered. This tactic challenges the government’s ability to strip them of their registrations based on the free speech protections of the First Amendment to the Constitution.

Let me know in the comments if you think NUT SACK is immoral or scandalous.