Category Archives: Trademarks

Ramey & Schwaller is pleased to announce that Joby Hughes has joined the firm!

On February 1, 2016, Joby Hughes joined Ramey & Schwaller as of-counsel.  Joby A. Hughes is recognized as one of the “Top 250 Patent Strategists in the World,” as selected by IAM Magazine. His primary intellectual property focus includes patents, trade secrets, trademarks / trade dress, and copyrights. As a lawyer, entrepreneur and inventor, Joby’s legal, technical and business expertise is both broad and deep resulting in a legal practice that includes all aspects of intellectual property diligence, development, capture, management, licensing, transactions, litigation and dispute resolution as well as technology development, commercialization and deployment. He has successfully tried patent, trademark, trade dress, copyright, trade secret, and commercial litigation arising out of licenses and other technology-related agreements. Joby has originated unique processes for identifying and quantifying the risks and rewards facing intellectual property owners resulting in IP risk management techniques that have been institutionalized within the Lloyd’s of London insurance market and adopted as industry standards for patent enforcement entities across the United States.  A link to his profile is at: http://rameyfirm.com/joby-a-hughes/

“The Firm is proud to have someone with Joby’s experience on board to help and guide firm strategy in providing superior services to our client,” said Bill Ramey.

Ramey & Schwaller is a full-service intellectual property law firm working with a national client base from our Houston, Texas, office. We are dedicated to enhancing client results through efficient practice management, innovative technologies and the use of skilled professionals.

Congratulations Texas A&M Engineering Extension Service

Ramey & Browning wishes to congratulate its client Texas A&M Engineering Extension Service on the issuance of the following U.S. Trademarks: U.S. Trademark 85-968,984 for “TEEX TESTED”; 86-165,021 for “TEEX Brayton Fire Training Field”; 86-165,063 “Texas Fire Training school”; 86-092,158 for “TEEX TESTED” + graphic; 86-165,242 for “NATIONAL CYBERSECURITY PREPAREDNESS CONSORTIUM”; 86-165,098 “NATIONAL EMERGENCY RESPONSE AND RESCUE TRAINING CENTER”; and 86-165,184 “NATIONAL DOMESTIC PREPAREDNESS CONSORTIUM”.

Washington Redskins Trademarks Cancelled as Disparaging to Native Americans

The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office has cancelled the Redskins trademark registration.  The decision can be found here at http://ttabvue.uspto.gov/ttabvue/ under Proceeding No. 92046185.  A petition was filed in August 2006 by six Native Americans (Amanda Blackhorse, Marcus Briggs, Phillip Gover, Shquanebin Lone-Bentley, Jillian Pappan, and Courtney Tsotigh) to cancel six trademarks owned by Pro Football, Inc.  Pro Football, Inc. does business as The Washington Redskins.[1] Proceedings in Blackhorse et al. v. Pro Football, Inc. were suspended pending the outcome of the Harjo v. Pro-Football, Inc. case, infra.[2]  The proceedings resumed in March 2010.[3]

The marks were REDSKINETTES (typeset word(s)), REDSKINS (typeset word(s)), THE REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (typeset word(s)), and THE REDSKINS (drawing which includes word(s) in stylized form).[4] The registrations for the marks above were issued in 1990, 1978, 1974, 1974, 1974, and 1967 respectively.[5]

In its decision, the TTAB stated “these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a).”[6]

The Board applied a two-step analysis in finding that the marks were disparaging.  The steps are: “a. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?” and “b. Is the meaning of the marks one that may disparage Native Americans?”[7] The Board found that the Pro Football, Inc.’s alleged honorable intent and manner of use do not contribute to the determination of whether the term is disparaging.[8] The record established that at least thirty percent of Native Americans found REDSKINS used in connection with Pro Football, Inc.’s services to be disparaging at the time they were registered.[9] The Board found this number to be substantial.[10]

The Board found that Pro Football’s laches defense does not apply 1) when plaintiffs simply comprise one or more members of a group to which the disparagement relates and 2) where a broader public policy is concerned.[11]

This is not the first time a group of Native Americans have filed a petition to cancel the Redskin marks. In Harjo v. Pro Football, a petition for cancellation was filed in 1992.  The Board held that the marks were disparaging to Native Americans when registered and ordered the registrations cancelled.[12]  Pro Football, Inc. appealed to the U.S. District Court for the District of Columbia.  The District Court reversed the Board on the grounds of laches and a lack of substantial evidence supporting the finding of disparagement.[13]  The Appeals Court remanded the case to the District Court regarding one of the Native American’s claims was barred by laches.[14]  The District Court found that the claim was barred by laches.[15] The issue of whether there was substantial evidence supporting the finding of disparagement was left unresolved.[16]  Upon another appeal, the Appeals Court affirmed the decision of the District Court on laches in 2009.[17]

The TTAB’s decision only affects the right of Pro Football, Inc. to have a federal registration on the marks listed above.  It does not have jurisdiction to prevent Pro Football, Inc. from using the marks.  However, without a trademark registration, Pro Football, Inc. cannot file a suit in federal court for trademark infringement or stop infringing goods bearing the marks from entering the United States.

The TTAB’s decision to cancel the marks can be appealed to the U.S. District Court for the Eastern District of Virginia or the Court of Appeals for the Federal Circuit due to a venue change in the America Invents Act.[18]  Pro Football, Inc. is allowed to keep its registrations during the appeal process.  In the event an Appeals Court affirms the TTAB decision to cancel the marks in question, Pro Football, Inc. may still assert common law trademark rights for the marks.

 

[1] Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 at 1-4 (June 18, 2014).

[2] Id. at 7 (June 18, 2014).

[3] Id.

[4] Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 at 2-4 (June 18, 2014); U.S. Trademark Registration Nos. 1606810, 1085092, 987127, 986668, 978824, and 836122 respectively.

[5] Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 at 2-4 (June 18, 2014).

[6] Id. at 2 (June 18, 2014).

[7] Id. at 15 (June 18, 2014).

[8] Id. at 23-24 (June 18, 2014).

[9] Id. at 71-72 (June 18, 2014).

[10] Id. at 71-72 (June 18, 2014).

[11] Id. at 74-76 (June 18, 2014).

[12] Id. at 5 (June 18, 2014) citing Harjo v. Pro Football, Inc., 30 USPQ2d 1828, 1833 (TTAB 1994) and 50 USPQ2d 1705, 1710 (TTAB 1999).

[13] Id. at 5 (June 18, 2014) citing Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96 (D.D.C. 2003).

[14] Id. at 6 (June 18, 2014) citing Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.D. Cir. 2005).

[15] Id. at 6 (June 18, 2014) citing Pro-Football, Inc. v. Harjo, 567 F. Supp.2d 46 (D.D.C. 2008).

[16] Id. at 6 (June 18, 2014).

[17] Id. at 6 (June 18, 2014) citing Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009).

[18] Id. at 74 (June 18, 2014).

Opposer Texas Children’s Hospital Prevails at TTAB over Applicant U.T. Physicians

On June 16, 2014, the Trademark Trial and Appeal Board handed Ramey & Browning client Texas Children’s Hospital a decisive win when the opposition of U.T. Physicians trademark application for Texas Fetal Center was sustained over Texas Children’s Hospital’s Trademark for Texas Children’s Fetal Center.  The opposition was terminated in TCH’s favor when U.T. Physicians abandoned its attempt to register its trademark for the Texas Fetal Center.

Ramey & Browning wins trademark opposition for Texas Children’s Hospital

Ramey & Browning client Texas Children’s Hospital prevailed on Friday against U.T. Physicians and Children’s Memorial Hermann Hospital in its bid to prevent the trademark registration of Texas Fetal Center citing confusion with its trademark on Texas Children’s Fetal Center in Opposition No. 91/207,428. U.T. Physicians et al voluntarily abandoned their attempted registration of Texas Fetal Center terminating the Opposition in favor of Texas Children’s hospital. William Ramey of Ramey & Browning was lead counsel for Texas Children’s Hospital and quoted as saying, “The Opposition terminating in favor of Texas Children’s Hospital is a good result as it will prevent any patient confusion between the names.”

Ramey & Browning, PLLC is a full-service Intellectual Property and trial law firm located in the Museum District, just outside of downtown Houston.

Ten Points Every Lawyer Should Know About Intellectual Property

Top Ten Tips

1. Business entity selection – As attorneys, you know that the business entity your client has directly impacts their personal liability. If your client comes to you with IP, counsel them to consider entity formation.

A third party may be able to reach personal assets which have nothing to do with the business.
Ensure the separation of your personal assets from the assets of the business entity – including intellectual property rights.

2. Learn the Basics of IP. Bone up on intellectual property rights, even if you just read some books on the subject. Knowledge is power.

3. Trademark usage/registration – Have your clients analyze their business to determine what valuable trademarks they have. While trademark rights are common law rights and thus exist even if the mark is not registered, registration provides several advantages.

4. Consideration of third party intellectual property rights – When naming a line of products or designing a logo, be wary of making a choice similar to names and logos already in use.

5. Use nondisclosure agreements. Counsel your clients to use NDAs. Typical NDAs contractually obligate signatories to refrain from disclosing confidential information without the disclosing party’s expressed consent.

6. Enforcement of intellectual property rights/Don’t Sit on your rights – Once your client’s business owns the rights to intellectual property, it is important to consider enforcing them, especially trademarks.

7. Have your client fully develop their idea. Take the time to fully develop the idea before launching it into the universe of IP lawyers. When you come to the table with an idea that has been well researched, your client greatly increase the odds of attracting investors or getting lending institutions on your side.

8. Do not overestimate your position. Just because your client thinks there’s no competition out there for their business, don’t use that as an argument not to spend the money to protect your idea or obtain necessary opinions.

9. Rely on legal protection. It is impossible to keep an idea under lock and key all of the time. The good news is that the court system is increasingly recognizing the value of intellectual property and is taking steps to protect your rights of ownership.

10. Be patient. Realize that it takes time to license a patent or obtain a patent, copyright or trademark. In the meantime, you can continue to build and grow your idea under the radar.

 

Apple’s $98 Billion Trademark Becomes World’s #1 Trademark

According to a company (Interbrand) that annually ranks top trademarks, Apple has passed Coca-Cola as the world’s #1 trademark.  The company’s press release can be found here.  For the past 13 years, Coca-Cola had been ranked as the top trademark.   Now, Coca-Cola’s trademark is valued at $93 Billion, while Apple’s trademark is valued at $98 Billion.

This annual report shows the magnitude of value that trademarks can develop.  Companies often invest significant time and resources in developing and protecting their trademarks.  However, even for small companies with limited resources, when developing trademarks, those companies some consider factors that help determine a trademark’s strength.  Otherwise, a company may later find it difficult to switch from a weak trademark to a stronger one, after the public has already begun to associate the company’s products or services with a particular mark.

USPTO October Independent Inventor Conference

USPTO (Alexandria facility)

The United States Patent and Trademark Office (USPTO) will host its 18th Annual Independent Inventor Conference on October 11-12, 2013, at the USPTO headquarters in Alexandria, Virginia.  A pre-conference workshop will be held the evening of Thursday, October 10.

The conference will address intellectual property (IP) topics relevant to inventors and small businesses.  Attendees can meet senior USPTO experts and participate in panels and breakout sessions addressing specific IP topics relevant to modern inventors and small business owners.

USPTO officials and experts will provide practical information regarding patents, trademarks, and other IP.  Successful business owners and inventors will relate their personal experiences of bringing their ideas to market. Government, legal, and business development entities representatives will discuss commercial best practices resources offered by their organizations.

The location is USPTO Campus, Madison North Auditorium, 600 Dulany St., Alexandria, VA 22314.  Directions, meeting agenda and RSVP details can be found here.

 

Vulgar Trademarks Cannot Be Federally Registered

In a recent opinion, the Federal Circuit Court of Appeals affirmed the U.S. Patent and Trademark Office’s refusal to register a trademark because the mark was vulgar.   The law has long prohibited federal registration of immoral or scandalous trademarks.  The Court noted that scandalousness can be proven by establishing that a trademark is vulgar.  Although the Court noted that what is immoral or scandalous has evolved over time,  in the case before it (In re Marsha Fox),  the Court concluded that one of the meanings of the trademark was clearly vulgar  and, thus, while Fox was free to use her mark in commerce, she would not be allowed to federally register the mark.