THE 4TH CIRCUIT AUTHORIZES A HEADS I WIN, TAILS YOU LOSE ATTORNEYS’ FEE AWARD IN CERTAIN TRADEMARK APPEALS
The Fourth Circuit Court of Appeals’ recent ruling on attorneys fees in Shammas v. Focarino, No. 14-1191 (April 23, 2015), will, unless overturned by the Supreme Court, make the “direct” appeal to federal district of an administrative ruling by the Patent and Trademark Office impractical in most cases, rendering the statute authorizing such appeals a dead letter, and in turn narrowing the options companies have in challenging denials of trademark registration and patents. More broadly, the case is troubling for finding the authority to award attorneys’ fees in a statute that does not use the words “attorneys’ fees” but instead merely authorizes an award of “expenses.”
In Shammas, the Plaintiff was denied registration of a trademark by the U.S. Patent and Trademark Office (“PTO”). Rather than appealing the denial to the Court of Appeals for the Federal Circuit, Shammas opted for the alternative allowed by 15 U.S.C. § 1071, which is to file a civil action against the PTO in district court. This proceeding is a standalone, “de novo,” civil action, not an administrative appeal. The statute makes clear that filing a civil action challenging the denial of trademark registration by the PTO is an alternative to an administrative appeal, and that neither alternative is more favored by law than the other.
July 20, 2015
An Ohio-based logistics company finds itself in litigation over its use of a logo similar to the logo of luxury automaker, Jaguar. Panther Premium Logistics recently updated its logo to include a leaping feline that resembles the familiar leaping jaguar that adorns car hoods and other parts of Jaguar automobiles. Images of the two companies’ logos are available here . According to its website, Panther Premium Logistics was founded in 1992, and “is one of the largest premium logistics companies in the world. [Panther] provide[s] door-to-door transportation solutions for more than 11,000 customers worldwide, including Fortune 500 corporations, government agencies and blue-chip transportation service providers.”
July 15, 2015
In 2008 and 2009, drug use among professional athletes was a big story. The “Mitchell Report,” released in late 2007, exposed widespread steroid use in baseball and had become infamous. In February 2009, Sports Illustrated had broken the news that the New York Yankees’ third baseman, Alex Rodriguez, tested positive for steroids back in 2003. Even Michael Phelps was under scrutiny, because it came out in January 2009 that he had smoked marijuana (although no one successfully argued that his drug use likely had an enhancing effect on his legendary Olympic performances). Late night television had no shortage of material. Jokesters abounded, and some even tried to take their comedy to the United States Patent and Trademark Office. Indeed, in April 2009, the New York Yankees had to oppose the attempted registration of “The House that Juice Built,” a play on the famous “House that Ruth Built,” as well as a spoof of the Yankees’ logo that replaced the baseball bat with a syringe (see http://ttabvue.uspto.gov/ttabvue/v?pno=91189692&pty=OPP&eno=86). The Yankees argued that the registrations diluted its famous marks; the registrant (a New York corporation called “IET Products and Services”) argued that it was playing clean because the “House that Juice Built” and its logo were fair-use parody. Five years later, the Trademark Trial and Appeal Board (“TTAB”) has finally declared a winner. According to the TTAB, there may be a parody defense in court, but not at the registration phase.
June 15, 2015