February 2, 2022
Domain Name Registration Game, Vox Strikes out at Federal Circuit
Vox, the domain registry operator for the .SUCKS generic top-level domain ("gTLD") for Internet websites, and home to websites such as “life.sucks” or “divorce.sucks,” ultimately lost its battle to register .SUCKS as a service mark. Vox attempted to register .SUCKS for "[d]omain name registration services featuring the gTLD in the mark" as well as "registration of domain names for identification of users on a global computer network featuring the gTLD in the mark." The trademark office rejected the application on the ground that, when used in connection with the identified services, it fails to function as a mark. The decision was affirmed by the Trademark Trial and Appeal Board (“TTAB” or “Board”), finding that consumers will view .SUCKS as only a non-source identifying part of a domain name, rather than a mark.
In In Re: Vox Populi Registry LTD., 25 F.4th 1348 (Fed. Cir. 2022), the Federal Circuit further affirmed the rejection finding that Vox is using .SUCKS as a product — i.e., domain name ending in .SUCKS, not a source identifier. The court relied on third party usage of .SUCKS to refer to a product being sold to the public rather than a identifier of Vox’s services, specifically noting online articles and Vox’s domain name registrars. The court does note that the mark may become registrable if Vox is later able to show acquired distinctiveness.
February 24, 2022
First Amendment trumps Trademark Registration Bar
Steve Elster appealed the TTAB’s refusal of his application for TRUMP TOO SMALL for use on T-shirts. The Board’s decision was based on a registration bar of the Lanham Act, specifically section 2(c), and its finding that the mark included the surname of a living individual, President Donald J. Trump, without his consent.
In In re Elster, 26 F.4th 1328 (Fed. Cir. 2022), the Federal Circuit Court reversed this decision and opined on constitutionally protected speech in registering a mark identifying by name and criticizing a public figure. Trademarks are private speech, entitled to First Amendment protection, and such protection is not lost if the speech is sold or commercialized rather than given away freely. The court found that, as a political figure, President Trump, has no right of privacy protecting him or her from critical speech by another, unless it is false information published with actual malice (ie, knowingly or with reckless disregard). Finding no such facts, the government had neither a substantial nor compelling interest to limit Elster’s freedom of speech in expressing criticism of a public figure. Further, the government cannot require consent for the registration of the mark because right of publicity cannot shield public figures from criticism. The court warned that public figures would… “use that power to suppress criticism, and thus permanently remove a valuable source of information about their identity from the marketplace.”
June 1, 2022
Expired but not Retired, Federal Circuit affirms Successors to an Expired Registration may preempt a New Registration
In Tiger Lily Ventures LTD. v. Barclays Capital Inc., Barclays PLC, No. 2021-1107, 2021-1228 (Fed. Cir. 2022), the Federal Circuit considered whether the TTAB properly precluded Tiger Lily (TL) from pursuing Lehman Brothers marks filed years after the bankruptcy of the investment bank and whether Barclays, a successor to Lehman’s preexisting marks, could properly pursue a new application for the mark. The Federal Circuit affirmed the TTAB decision holding that TL’s application did not have priority over Barclays, even though TL filed before Barclays. The Federal Circuit reasoned that although Barclays’ Lehman Brothers registrations had expired, TL admitted the mark was still in continuous use through a license back to Lehman and through Barclays own use.
The Federal Circuit also affirmed that there was a likelihood of confusion between TL’s application and Barclays’ mark based on the identical nature of the marks, TL’s marketing tactics, and prior instances of financial service firms using their marks for food and beverages to promote their services. Additionally, the Federal Circuit affirmed that Barclays showed a bona fide intent to use its applied for mark. The Federal Circuit determined that since Barclays continuously used the Lehman Brothers marks up to the time of application and had the capacity to continue use of the mark, its application met the required showing for an intent-to-use application.
June 29, 2022
Territorial Reach of US Trademark Stunted by Federal Circuit
In Meenaxi Enter. v. Coca-Cola Co., 38 F.4th 1067 (Fed. Cir. 2022), an Edison, NJ based beverage company, Meenaxi Enterprises, registered two marks, THUMS UP and LIMCA, in the US in 2012, and have been using the marks since 2008. Recognizing that these US marks were identical to their Indian marks, Coca-Cola brought cancellation proceedings asserting that Meenaxi was using the marks to misrepresent the source of the goods. Coca-Cola claimed Indian American consumers would be familiar with their famous Thums Up and Limca brands that have been in the Indian market for decades. Coca-Cola further asserts that Meenaxi is attempting to ride on the coattails of Coca-Cola’s foreign success and confuse Indian-American consumers as to the source of the beverages. The Federal Circuit disagreed and overturned the lower court’s ruling in favor of the soda giant stating it was partly based on a “stereotyped speculation.” Coca-Cola failed to show any lost sales in the US based on Meenaxi’s marks, thus the Federal Circuit held they had no standing to challenge the registrations.
This case creates a circuit split to be potentially heard by the Supreme Court. The split is between the Federal Circuit and the Fourth Circuit, which ruled in 2016 that a plaintiff had standing to sue a defendant in US Courts for using the plaintiff’s Mexican brand names. See Belmora Ltd. Liab. Co. v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016).