The Redskins Lose Again (Off the Field)
A federal District Court affirmed the Trademark Trial and Appeal Board’s (TTAB) ruling that “Redskins” cannot be registered as a trademark for use in connection with a professional football team, because the marks were found to be disparaging to Native Americans at the time they were registered.
The Washington Redskins football team first obtained a federal registration for its “Redskins” team name in the 1960’s. For the last 20 years, its registrations have been challenged by a group of American Indians claiming the mark is disparaging. Earlier this year, the TTAB ruled that the “Redskins” mark violates Lanham Act Section 2(a), which prohibits registration of “disparaging” marks.
In this appeal, the Redskins argued that the federal government’s ban on registering offensive trademarks is unconstitutional. The district court held that cancelling a trademark registration does not violate the First Amendment because the cancellation does not burden, restrict or prohibit the team’s ability to continue to use the mark. Thus, the court held that the TTAB ruling should stand.
The Washington Redskins will likely file another appeal.
Pro-Football Inc. v. Amanda Blackhorse et al., case no. 1:14-cv-01043 (U.S. District Court. E.D. VA, July 8, 2015).
Federal Circuit Finds Errors in the TTAB’s Analysis of the Marks Regarding PEACE and LOVE
Juice Generation filed a service mark application for the following design mark for use in connection with juice bar services:
GS Enterprises opposed registration of the Juice Generation trademark on the grounds of a likelihood of confusion with the following four registered service marks, all registered for restaurant services:
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PEACE & LOVE
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ALL YOU NEED IS PEACE & LOVE |
The Trademark Trial and Appeal Board (“TTAB”) held that the similarity of the marks, services, trade channels, buyers and purchasing conditions weighed in favor of finding likelihood of confusion between the marks and sustained the opposition. Juice Generation appealed the decision to the Federal Circuit.
When comparing the marks, the TTAB found the words “PEACE LOVE AND JUICE” to be the dominant feature in Juice Generation’s mark, rather than the design. The TTAB also found that, of those words, “PEACE LOVE” were the most dominant. The TTAB then compared “PEACE LOVE” to “PEACE & LOVE,” which is the entirety of GS’s mark and, not surprisingly, found them to be nearly identical. The TTAB discounted the evidence submitted by Juice Generation showing a number of third party marks containing “Peace” and “Love” to support its argument that that GS did not have a strong mark and was not entitled to a broad scope of protection.
The Federal Circuit concluded that the TTAB’s analysis inadequately considered the strength of GS Enterprise’s marks. In particular, the court found that the TTAB improperly discounted the evidence of numerous third-party registrations and common law uses of marks containing “PEACE & LOVE,” as well as the suggestiveness or potential descriptiveness of the phrase “PEACE & LOVE.” The Federal Circuit also found the TTAB erred in insisting on specifics as to the third–party use of those marks and in not considering the evidence that third-party use and registrations indicate the phrase is weak in the food service industry.
The Federal Circuit concluded that the TTAB improperly dissected the applicant’s mark by considering only the “PEACE LOVE” component of the mark, without considering the impact that the mark as a whole (i.e. PEACE LOVE AND JUICE and Design) would have on the meaning or connotation to the purchasing public. Thus, it vacated the TTAB’s finding of a likelihood of confusion and remanded the issue back to the TTAB for further proceedings.
Juice Generation, Inc., v. GS Enterprises, LLC, case no. 14-1853 (Fed. Cir. July 20, 2015).