May 29, 2015—After making (and remaking (and re-remaking)) movies, sequels, and prequels for nearly every comic book character in its library, it appears that DC Comics has finally found a new foe for its Batman franchise: music and fashion superstar Rihanna. The parties are squaring off at the Trademark Trial and Appeal Board over Rihanna’s application to register the mark ROBYN in connection with “on-line non-downloadable general feature magazines.”

Every villain needs an origin story, something to explain a character’s sinister past, or the source of their incredible super powers. Rihanna is no different, with an origin story stretching back to 1988, in the far away land of Barbados. It was here, in this mysterious and tropical paradise, where Rihanna was born. Her parents, having no reason to suspect any future life of villainy, named her “Robyn,” and from then. . . . Well, actually that’s the end of the story. That’s pretty much all you need to know.

DC Comics, on the other hand, is the owner of the Batman franchise, including copyrights and trademarks associated with all the secondary characters, including Catwoman, the Joker, Mr. Freeze, and, yes, Robin the Boy Wonder. DC Comics did not take kindly to Rihanna’s application and filed a Notice of Opposition.

The Notice of Opposition sets forth two claims: a likelihood of confusion with, and dilution of DC Comics’ prior rights in its ROBIN trademark. Unsurprisingly, the situation provides another example of the general public’s skepticism of the legal claims of a trademark owner. DC Comics believes that Rihanna’s use of ROBYN with online general feature magazines “is likely to cause confusion, cause mistake, or to deceive the public into the false belief that [Rhianna’s magazine is] sponsored or connected with [DC Comics.]” Meanwhile, a writer for the online magazine AV Club interprets this as stating that DC Comics is “worried that everyone is an idiot.”

The legal issues are relatively straight forward: the marks are phonetically identical and visually similar. Therefore, the crux of the case will depend upon the scope of common law rights that DC Comics can establish, and whether Rhianna’s magazine might be considered to fall under that same umbrella.

What is more interesting is that this case provides examples of a number of misconceptions regarding trademark law.  With no particular order, rhyme, or reason, here are four items to consider.

1. There is no right to use your name, at least not as a trademark. It doesn’t matter if your first name really is “Denny” or if your last name really is “McDonald.” Unfortunately, you have limited options for the name of your restaurant.
2. Fame is not infectious. Mere association with a famous mark does not prove that a different mark is famous. For example, even if TOMMY HILFIGER is a famous mark, this does not mean that the TH logo is a famous mark (H/T TTAB). Accordingly, DC Comics’ allegation of  Batman as “one of a rarified group of characters known and loved throughout the world,” even if proven, does not establish fame of the ROBIN mark.
3. Trademark law does not provide owners with ownership of that word. The fancy version of this rule is that trademark law does not provide a “right in gross” to a particular term. A plaintiff asserting a likelihood of confusion must still establish that the goods or services are related.
4. Merely having a registration, and even having commercial success, does not mean that there is a likelihood of confusion. The conceptual strength of the term and the extent of third-party use helps determine the scope of protection afforded to the plaintiff’s mark. Here, “robin” is not a fanciful term like “xerox.” Robin is a common first name. It is a common last name.  It is also one of the most common birds in North America. Apparently, when Robin isn’t busy fighting crime, he is busy serving up burgers, making chocolate eggs, and living a second life as a Swedish pop star (and a third life as a Finnish pop star). The DC Comics Robin isn’t even the only well-known fictional Robin (looking at you, Mr. Hood). The more exposure to third-party uses of ROBIN, the less likely consumers will mistakenly assume that other ROBIN (or ROBYN) marks have a connection to DC Comics. This is true regardless of how famous a mark may be.

Will DC Comics be successful in preventing Rihanna from capitalizing on the goodwill associated with the Robin character? Will the daring Rihanna escape the clutches of DC Comics with her application in tact? Will radio dramas finally make a comeback? Tune in next time to find out! (June 23rd, if there is no agreement to extend the time to answer.)

May 14, 2015—A good general business practice is to apply to register trademarks early. You’ll find out if there is an issue. You’ll have time to change rather than having to take everything off the shelf under the threat of a lawsuit. Yet a recent decision from the Trademark Trial and Appeal Board in New York Yankees Partnership v. IET Products and Services, Inc. presents a good example of when you’re better off avoiding the application process all together.  It also raises some interesting questions in light of the B&B Hardware ruling (doesn’t everything these days?)

At issue were two applications, a standard character mark for the phrase THE HOUSE THAT JUICE BUILT along with a design logo of a syringe wearing an Uncle Sam hat (shown below, left). Both applications identified apparel and baseball caps. The New York Yankees opposed, asserting claims of likelihood of confusion, false association, and dilution by blurring based upon prior rights in the phrase THE HOUSE THAT RUTH BUILT along with the logo of a baseball bat wearing an Uncle Sam hat (shown below, right).

In case you’re not up to date on your slang, “juice” is hip way to reference steroids. So when you hear that an athlete is “juicing,” it’s likely a reference to allegations or admissions that the athlete has used steroids (although there’s an outside chance they recently purchased a new blender).  A discussion of the steroids problem in baseball could fill a number of pages (enough for a congressional report, perhaps). While the problem was rampant among players for all teams, some of the most well-known players during the steroid era played for the New York Yankees, including Roger Clemens, Andy Pettitte, Gary Sheffield, David Justice, Jose Canseco, Jason Giambi, and, most recently, Alex Rodriguez.

The applicant’s primary defense was that its marks were a parody of the Yankees logo and stadium nickname, and therefore were protected by Section 43(c)(3) of the Lanham Act, which provides that:

The following shall not be actionable as dilution by blurring . . . any fair use . . . of a famous mark by another person other than as a designation of source for the person’s own goods or services.”

The Board took this opportunity to clarify the case law regarding the use of the parody defense in Trademark Trial and Appeal Board proceedings. In the Board’s 2012 decision of Research in Motion Ltd. v. Defining Presence Marketing Group Inc., the Board had stated that it would “assess an alleged parody as part of the circumstances to be considered for determining whether the [opposer] has made out a claim for dilution by blurring.” In doing so, the Board relied upon the Fourth Circuit decision of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC.

The Board reasoned that because the Lanham Act’s fair use defense is limited to use “other than as a designation of source,” it would be “virtually impossible to conceive of a situation where a parody defense to a dilution claim can succeed in a case before the Board” (But you’re saying there’s a chance?).  As a result, the Board rejected the defense and found the applied-for marks to be likely to dilute the Yankees’ marks.

The case was submitted on brief on June 12, 2014, well before the B&B Hardware decision. Yet the Board did not issue its decision until nearly a year later on May 8, 2015, approximately a month and a half after the Supreme Court issued the B&B Hardware ruling. In light of this timing, the B&B decision may not have played a role in the outcome of this decision.

However, it is worth noting that the Board declined to reach the Yankees’ likelihood of confusion claim, instead issuing a ruling on the claim of dilution by blurring. It is often the reverse, because the evidentiary standards involved in a claim of a likelihood of confusion claim are easier to meet than the standards for a dilution claim. This is particularly true with respect to the evidentiary showing required to establish fame for dilution. In light of B&B Hardware, will the Board be more likely to abstain from reaching likelihood of confusion claims in the future?

Also, the Board seemed to make a concerted effort to identify the facts and issues which it did not consider in reaching its decision. The result is that if the Yankees sue the applicant for trademark infringement, the applicant need not be concerned about a preclusive ruling from the Board regarding likelihood of confusion or the applicability of the parody defense to the claim of dilution.

It appears that the Board may be taking care to provide clear guidance on the issues that were (and weren’t) decided.  While we’ve certainly been critical of the B&B decision on this blog, perhaps there is a silver lining after all.

May 8, 2015—An interesting battle ground may be brewing in light of the United States Supreme Court’s recent ruling in the B&B Hardware case which Duetsblog authors have previously commented on extensively.  Now that the Court has essentially expanded the scope of collateral estoppel applicable to trademark registration decisions made by the United States Patent and Trademark Office, a logical question is whether this expansion is going to apply to trademark registration decisions made in foreign jurisdictions.  There is legal support for the notion that judgments rendered in courts outside our fine nation can have collateral estoppel effect within the United States, but I am unaware of any authority applying collateral estoppel to trademark registration decisions made by foreign courts.

I expect this issue will come up sometime in the near future, and potentially in a case involving Skype and the European broadcasting company, Sky.  A European Court recently rejected Microsoft’s efforts to register the Skype mark  in Europe based on the conclusion that the mark was confusingly similar to Sky.  Microsoft has vowed to appeal the decision, but at least for now, there exists a judgment in a foreign court holding that there is confusing similarity between Skype and Sky.  Assuming this holding stands up, could Sky somehow attempt to transform this holding into an attack on Skype’s United States registration?

There are likely significant facts outside my knowledge that would affect the possibility of this happening.  Among other things, I don’t presently know the details of the European Court’s decision, I do not know what, if any, opposition was made by Sky to the U.S. registration of Skype, and I do not know the specific legal standard under which likelihood of confusion is judged in the European courts.  Nonetheless, the Supreme Court’s expansion of the collateral estoppel effect given to trademark registration decisions at least requires that this question be asked.

May 1, 2015—With hard pressed economic times, state and local governments have turned to new sources of revenue: intellectual property licensing. The City of New York has been in the game for decades, licensing use of its I ♥ NY symbol. San Francisco enforces its rights in the image of its BART transit pass. And Portland is the proud owner of an old sign with a reindeer.

Nobody likes being left out, especially Texas. So it shouldn’t have surprised anyone when the Texas General Land Office (“GLO”) asserted a claim of trademark infringement against the Alamo Brewing Brewing Co. and the Texian Brewing Co. (logos shown below).

The GLO claims that the the outline of the facade of the building is a “treasured symbol of Texas liberty” and its use, along with the word ALAMO, suggests an affiliation with the State and the historic Alamo location. In filings with the court, the GLO claims that the roof outline is famous and that “consumers anticipate that products bearing [these marks] are used by or with permission of the state.”

The GLO also owns a number of U.S. registrations for the marks THE ALAMO and THE ALAMO and Design, shown below:

What do you think? Famous? Distinctive? Or common Spanish colonial roof that reminds you more of Taco Bell than the State of Texas?

On a brief review, it is difficult for me to find the fame of the Alamo roofline mark. Maybe it is in the basement.

The GLO and the brewery reached a settlement recently, in which the parties agreed to a Consent Order and Final Judgment for the legal proceeding. This judgment and order issued yesterday, but the actual terms of the Settlement Agreement are confidential.

The GLO’s Commissioner has reportedly stated that companies are free to use the wording ALAMO, but cannot use the images or insignia of the Alamo, such as the roofline (good news for Alamo Rent a Car). In respect of the confidentiality terms, the Alamo Beer Company’s CEO Eugine Simor was quoted as stating that the “Alamo Beer Company is allowed to use the shape of The Alamo. I really can not say much more.”

In an apparent effort to convince other business to remove lines which look like roofs from their logos, the Press Secretary for the GLO released the following statement:

Alamo Brewing Company is the first commercial recipient of an official license to use the Alamo mark, for which they paid a substantial licensing fee. Any and all fees collected for use of the mark will be put in a dedicated fund for the Alamo. This matter was resolved amicably and the GLO is pleased to have come to mutually acceptable terms of agreement in this matter. (emphasis added)

It is interesting that after so many years, Alamo Brewing is the first commercial recipient of a license. While they may be the first to receive a license, it seems unlikely they were the only party to use the ALAMO mark or an image of the roofline. It’s possible that there may be enough third-party uses to show that the GLO’s marks are weak or entitled to narrow protection. But, then again, I have always heard that everything is bigger in Texas. Apparently that applies to the scope of protection for trademark rights, too.

April 27, 2015—What’s the first thing that comes to mind when I refer you to “the Slants?”  Is it a non-perpendicular or horizontal line?  Is it the news coverage of MSNBC or Fox News?  Is it a derogatory term for Asians?  Or, perhaps its “the first all-Asian American dance rock band in the world” whose efforts to trademark their band name, “The Slants,” were denied trademark registration under 15 U.S.C. 1052(a), which precludes the registration of consisting of or comprising “immoral, deceptive, or scandalous matter.”

This was certainly not the first registration rejected on the “immoral” or “scandalous” subject matter bar, and its unlikely to be the last.  Those of you following trademark news have probably heard of the disputes surrounding the Washington Redskins, which DuetsBlog has previously discussed.  (See list here.)  However, while upholding the rejection of “The Slants” registration, one of the Judges on the Federal Circuit panel opined perhaps more strongly than ever before that there are real First Amendment problems with 1052(a)’s prohibitions.

Judge Kimberly Moore penned a lengthy “additional views” opinion nearly twice as long as the opinion affirming the rejection.  She made a compelling case that 1052(a) is unconstitutional at least as to the “immoral” or “scandalous” prongs and suggested the Federal Circuit revisit its precedent regarding the constitutionality of those provisions.  I encourage anyone interested in the topic to read the opinion, as I will not do it justice here.

There are certainly rational arguments to be made on both sides of this issue.  I, however, lean towards finding the provision unconstitutional, particularly as applied to the group  “The Slants,” who have adopted the name to “take ownership” of anti-Asian stereotypes.  The simple fact is that it becomes exceedingly difficult to make consistent and reasonable conclusions on the “immorality” of any marks.  Moreover, the entire purpose of the First Amendment is to allow ideas (no matter how offensive the may be) exposure to the “marketplace of ideas” so they can be rejected or accepted by society as a whole.  If we do not allow society to be exposed, then we’ve lost faith in the ideal that gave rise to the First Amendment in the first place, and we’ve simply engaged in censorship.

Breaking Update:  Just this morning, the Federal Circuit issued a sua sponte order vacating its prior decision and ordering the parties to brief for en banc review the question: “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?”  This could mean that the Federal Circuit is inclined to hold the “disparaging marks bar” is unconstitutional.  However, it could also be that the Court wants to eliminate any doubts about the law caused by Judge Moore’s lengthy “additional views” opinion.  In either event, this is likely to be a very important ruling on trademark registration that could have a very significant impact in the near future.

April 16, 2015—A world without trademark attorneys… frightening, isn’t it? (maybe more for me than for someone who isn’t a trademark attorney). It seems unlikely, but we may be inching closer to this apocalyptic scenario.

In Australia, a group of researchers, legal academics, and other organizations are collaborating on the creation of a computer program that they hope will remove the subjectivity from trademark infringement analysis. The goal is to develop a program which can calculate a similarity score between two marks. The score could be relied upon by businesses in choosing names and courts in determining trademark disputes.

This certainly isn’t the first time a computer has taken on tasks normally reserved for humans. IBM famously created computers that could beat world chess champions as well as win $1 million on Jeopardy!. Computers have also been able to discover laws of physics that took humans centuries to unearth. Oh, and don’t forget the more recent creation of a self-aware Mario.

But for all the trademark attorneys out there, please, take a deep breath. We’re not unnecessary (yet). In fact, most trademark attorneys would welcome the opportunity to remove some of the subjectivity in trademark analysis in order to be able to provide more certain advice to their clients. Unfortunately, removing all of the subjectivity is likely impossible.

Trademark infringement involves more than just the similarity of the marks themselves. The legal analysis involves balancing numerous factors. The type of goods or services sold is a major factor, and others include the channels of trade in which the products are sold, the sophistication of the consumers, the number of similar marks used on related goods or services, the intent of the defendant, and others. Thus far, the Australian project appears to be focused solely on the similarity of the marks.

Also, the scope of protection granted to a trademark can expand or contrast over time. The protection can even disappear entirely. We’ve lost a lot of good brands over the years to genericide, including every day words like aspirin, thermos, escalator, dry ice, cellophane and others. Even when trademark rights aren’t lost in their entirety, if similar marks are in use by third-parties without evidence of confusion, then the rights afforded to one owner may be more narrow.

If the project is successful, the computer program could serve as an additional resource for trademark attorneys. It could be a helpful tool in providing some objective assessment of risk that marks might be considered similar. If the “similarity score” is a 3 out of 100, it is likely a good choice. The score of 99 will hopefully be enough to deter your client from investing in its idea for Starbux coffee shops. But will businesses, lawyers, or courts really feel comfortable relying on a score of 60? Or 40? The program might help confirm the clear cases, but is unlikely to be helpful in the close calls, where objectivity is needed most.

On the other hand, the program could be helpful where the other factors weigh in favor of one party. A high (or low) similarity score would present another piece of objective, factual evidence that could help in motions for summary judgment. It would also be a lot cheaper than hiring a linguistics expert to analyze the marks.

The software could also be utilized in-house or by marketing and advertising firms to analyze new name candidates prior to providing it to the decision makers. Providing the similarity score for those high risk names could help avoid emotional investment in a name that is all-but-assured to be turned down by legal. I don’t care what your selling, the name “Nike” is going to be an uphill battle that you’re better off avoiding.

The project is likely to provide some very helpful insight in the future. But I think I’ll come into work tomorrow, just in case.

April 1, 2015—While it’s a great song, Kenny Rogers’ classic The Gambler doesn’t provide much guidance on winning a game of poker.

Step 1: Know when to hold ’em
Step 2: Know when to fold ’em
Step 3: Know when to walk away
Step 4: Know when to run
Step 5: Never count your money at the table

You’re probably better off just watching the movie Rounders. What Kenny fails to explain anywhere in the song is which facts contribute to knowing whether to fold ’em or hold ’em. Or alternatively, whether to walk or run (step 5 is pretty unambiguous, though). If it was as simple as knowing when to hold or fold, poker would be a pretty boring game. Bluffing plays a major role, both knowing when to bluff and, perhaps more importantly, against whom to bluff.

Bluffing isn’t just a skill in poker, it is a skill in all types of negotiations, including negotiations of legal disputes (and for our purposes, trademark disputes). In some ways, the entire concept of “trademark bullying” is a bit like bluffing. The big company with a lot of money is bluffing with regard to the strength of the legal claim. The hope is that the smaller company will fold ’em. Even if the smaller company knows that they have a winning argument, they may not have the chips to ante up. But what happens when it is the smaller company bluffing the bigger company?

Well, one recent example involves Fox’s hit show Empire, which revolves around a Hip Hop record label named “Empire Entertainment.” The series premiered in January of 2015 and set all sorts of records a television show in the post-Netflix/DVR world. All great news for Fox. That is, until they received the dreaded cease and desist letter.

You see, there is a music label in the real world called Empire Distribution. They contacted Fox and demanded that Fox rename and provide Empire Distribution with payment in the form of millions of dollars (first 8, then 5) or, alternatively, provide Empire Distribution with free publicity by featuring the label’s artists as guest stars on the show. Fox chose to call their bluff, filing a declaratory judgment action.

But will Fox be successful? Assuming that the marks are confusingly similar, can there be infringement for use of a confusingly similar name as a fictional entity? A recent case from the Seventh Circuit suggests not. The case of Fortress Grand v. Warner Bros. involved a computer software company that marketed a program titled CLEAN SLATE, which movie buffs may recall is the name of the secret program in the recent Batman flick, The Dark Knight Rises. The district court dismissed the claim and the Seventh Circuit affirmed.

The facts may not be quite so clear with this clash of the Empires. After all, Warner Brothers never sold a CLEAN SLATE software program. However, Fox does offer tracks from the cast of Empire for download on iTunes. While that might help Empire Distribution, it may not be enough. After all, Fox isn’t actually operating a record label under the name Empire. And besides, “empire” isn’t exactly a fanciful mark. It is a commonly utilized English word. I  can remember a few movies with empire in the name, in particular, Empire Records (all about a record store) and Star Wars: the Empire Strikes Back (not about a record store). If I were a gambler, I think my money would be on Fox.

However, we’ll have to wait and see whether Empire Distribution decides to fight back. But as far as Fox goes, Empire was renewed for a second season. After the show’s success, I’m guessing they’re all-in.

March 27, 2015—You know that feeling when you’ve nearly crossed the finish line? You have done the work, put in the time, and the only step left is to run through the tape.

There can be similar moments with trademark applications, too. Admittedly, it may not be as exciting for other people, but I certainly enjoy it. But one situation frequently arises where there is just one small thing to take care of. The attorney (or owner) will get a call or an e-mail from the Examining Attorney with a brief introduction and then, “Everything appears to be in order with the application, we just need you to enter a disclaimer of the term _______.”

That’s it! Just need to say “Okay” and your mark will be published and, if no third-party objects, you’re on the fast track to having a shiny new trademark registration.

After successfully navigating the application process, you may just want to say “Okay” so you can finally run through that tape. But before you do, make sure you understand the fine print.

Under Section 6 of the Lanham Act, the Trademark Office may require a disclaimer of any “unregistrable component” of an otherwise registrable mark. The disclaimer will appear on the Certificate of Registration. For example, if you’ve registered the mark BOONDOGGLE RESTAURANT for restaurant services, disclaiming RESTAURANT, the Certificate will state “No claim is made to the exclusive right to use ‘RESTAURANT’, apart from the mark as shown.” As a result, the owner makes a statement of public record that this portion of the mark is merely descriptive.

This can make it difficult to enforce rights in trademark against third-party marks who share that disclaimed term. If you attempt to enforce your trademark against a third-party, they’ll be able to quickly determine if you have disclaimed any portion of the mark. If you have, that may provide the third-party with a reasonable basis to kindly ask that you check the sturdiness of that sand over there.

While it is not impossible, there must be some other element of the mark that is similar to your mark. For example, Purina Dog Food (owned by Nestle S.A.)  successfully opposed registration of the mark WAGGIN’ STRIPS (disclaiming STRIPS) based upon their prior rights in the mark BEGGIN’ STRIPS (disclaiming STRIPS). In addition to sharing the disclaimed term STRIPS, the marks also shared a similar structure and similar sound and therefore the Board found a likelihood of confusion (decision available here).

Disclaimer practice makes sense for our Boondoggle Restaurant. The term RESTAURANT has no source identifying function in relation to restaurant services; it is generic. In these situations, agreeing to the disclaimer is simple and easy.

However, disclaimers are also required for descriptive terms. And, as we’ve discussed, there is a fine line dividing descriptive wording from suggestive wording. The determination is also very subjective. While a term may be descriptive to one Examining Attorney, a different Examining Attorney might consider the term suggestive without a second thought. Like all people, Examining Attorneys are not infallible. The Examining Attorney might misunderstand your goods or services, could be having an off day, or maybe they have a heightened opinion of what qualifies as a descriptive term. Regardless, once you enter that disclaimer, it is there in the public record and can’t be swept under the rug.

Accordingly, the next time you receive a disclaimer request, take a second before you run through the tape. Ask yourself whether the term really is descriptive. Would you be comfortable with your competitors using the term? Why did you choose it? Is there a reasonable basis to assert that the term is suggestive?

Rather than take the easy way out, it may be worthwhile to invest in the time to prepare a response to the office action, arguing against the disclaimer. While it may add some extra cost on the front end, failing to explore this option can harm the strength of your trademark, which you may regret down the road.

March 20, 2015—It’s the end of March which can mean only one thing: March Madness!  For many sports fans, this is easily the “most wonderful time of the year” –Christmas, Halloween, New Year’s, Thanksgiving, Fourth of July–all rolled into one.  There’s drama that doesn’t involve an intoxicated relative, excitement superior to detonating small, legal explosives, and gratefulness that often exceeds the feigned appreciation for a large and overly indulgent meal.  March Madness, like many annual or other periodic events (think Olympics) is also a time of revival.  Personalities that have slipped from our collective consciousness suddenly find new life as advertising personalities, guest stars, or documentary subjects.

This March Madness, I’m giving my first inaugural Lazarus award to the one, the only, Christian Laettner.  Laettner’s primary–if not only–claim to fame is The Shot.  (Video here.)  After the shot, Laettner went on to a marginally successful NBA career, while racking up a good deal of “bad will” along the way.  (My favorite is the “loser…, loser…., winner” story).  Since the late 90’s, Laettner has been largely an after thought (or a “no thought”) in an otherwise saturated sports media marketplace.

But all that has changed in 2015.  For reasons still not apparent (perhaps he needs the cash), Laettner is making a public resurgence.  First, there was the ESPN Films 30 for 30: I Hate Christian Laettner, which, despite its title, actually engenders some respect or at least understanding for one of sports’ most famous villains.  Then there are the dryly hilarious “AT&T March Madness Legends” commercials starring Laettner, Shaquille O’Neal, Dr. J, and Clyde Drexler, all of which make Laettner appear funny and likable (which he may very well be).  This exposure seems to have Laettner’s stock rising.

March Madness is an opportunity for upsets, Cinderella stories, and unexpected surprises.  From a branding perspective, I think Christian Laettner has satisfied all three this March Madness season.  So congratulations to Christian Laettner on this momentous award!

March 11, 2015—In December, the Supreme Court heard oral arguments in B&B Hardware v. Hargis Industries. The case addresses the level of deference to be given to decisions from the Trademark Trial and Appeal Board, if any. We’ve discussed the issue a number of times at DuetsBlog. I’d love to provide you with breaking news, but still no ruling yet.

However, the Fifth Circuit provided us with an interesting decision regarding potential liability for use of trademarks as part of gripe sites. A gripe site is a broad term that essentially means a website created for one purpose, to criticize a company or individual. Many of these gripe sites utilize the trademark of the target of the criticism both on the website and as part of the URL. The target’s first impulse is usually to send a letter to get the website taken down. However, as former and founding Duetsblogger Dan Kelly reasoned, pursuing these website owners can cause more harm than good. On Monday, the Fifth Circuit provided a good example of why brand owners should be cautious in pursing gripe sites.

Clark Baker is an investigator with the Office of Medical and Scientific Justice (“OMSJ”). If you’re like me, you’ve never heard of either Mr. Baker or the OMSJ. The OMSJ identifies itself as an investigation agency which runs the HIV Innocence Group. According to the website, the group assists defendants who have been charged with HIV related crimes by exposing the failures and inadequacies of “HIV junk science.”

Unsurprisingly, not everybody agrees with some of the beliefs and statements of the OMSJ. Among these critics is Jeffrey Todd Deshong. Mr. Deshong runs the website HIV Innocence Group Truth, where Mr. Deshong critiques Mr. Baker, the OMSJ, and the opinions and scientific theories they utilize. The website incorporates the entirety of the OMSJ’s mark, but adds the word “truth” to the end. Equally unsurprising, the OMSJ does not like Mr. Deshong’s website and filed a federal complaint alleging trademark infringement on July 9, 2013.

The District Court for the Northern District of Texas granted the Defendant’s Motion to Dismiss on June 30, 2014 (order available here, h/t to Public Citizen). While many gripe site defendants prevail on First Amendment grounds, the court here ruled that the plaintiff failed to allege any facts that could support a claim for trademark infringement.

The court relied upon the Fourth Circuit’s decision in Lamparello v. Falwell, 420 F.3d 309, 313, for the proposition that:

when dealing with domain names, a court must evaluate an allegedly infringing domain name in conjunction with the content of the website identified by the domain name.

The court examined the allegations of the complaint, noting that (1) the websites do not look like each other; (2) Deshong’s website does not advertise any product or service: and (3) the sole purpose of the website is to criticize Baker and the OMSJ. The court concluded that none of the factual allegations could be construed as alleging that a person, upon viewing the content, could be confused as to the source of the website. The Fifth Circuit affirmed the district court’s opinion without additional analysis.

But what does this have to do with B&B Hardware? Substantively, not much. But what if Deshong had applied for a trademark for HIV INNOCENCE GROUP TRUTH in connection with “providing a website featuring information on HIV?” And what if OMSJ opposed, citing prior rights in the mark HIV INNOCENCE GROUP in connection with “providing a website featuring information on HIV?”

This hypothetical demonstrates the problems that could arise if Trademark Trial and Appeal Board decisions are considered conclusive as to the issue of a likelihood of confusion. Unlike a district court, the Board would not consider the content of the website unless it was referenced in the identification of services. It is likely that the plaintiff prevails in this hypothetical. However, in the district court, not only did the defendant win, but he won on a 12(b)(6) motion to dismiss. This isn’t due to a mistake made by either the Board or the district court, but instead the limited nature of the jurisdiction, legal issues, and discovery for proceedings before the Board.

Unfortunately, we’ll have to wait to see how B&B Hardware plays out, but there may be a few more gripe sites to discuss depending on the outcome.