IP Law Chat : IP Law Chat -- Hendricks & Lewis, intellectual property, trademark, copyright and technology attorneys

In a collegiate battle over trademarks, the University of South Carolina suffered defeat at the hands of both the TTAB and the Federal Circuit while the University of Southern California walked away the victor.

The University of South Carolina sought registration of its Carolina Baseball Logo mark (pictured in the opinion linked below) composed of the interlocked letters "S" and "C" for "clothing, namely, hats, baseball uniforms, T-shirts and shorts."  The University of Southern California opposed the registration, claiming in part that it would create a likelihood of confusion with its registrations for the letters "SC" in standard character form and for a design mark composed of the interlocked letters "S" and "C" (also pictured in the opinion).

Showing that fighting spirit, South Carolina counterclaimed for cancellation of SoCal's registration of the letters "SC" in standard character form, claiming that the letters falsely suggested an association with the State of South Carolina.

The TTAB disagreed, concluding first that South Carolina lacked standing to bring the cancellation counterclaim and that even if it did have standing, summary judgment would still be granted in favor of SoCal because South Carolina failed to establish a genuine issue of fact as to whether the letters "SC" are "uniquely and unmistakably associated with the State of South Carolina.  In another defeat, the TTAB refused registration of South Carolina's mark, finding that it would create a likelihood of confusion with SoCal's registrations.

On appeal, South Carolina challenged the TTAB's likelihood of confusion conclusion only with respect to three factors:  the similarity of trade channels; the care exercised by consumers in purchasing the goods; and the absence of evidence of actual confusion.

Although the Federal Circuit did not agree with the TTAB's decision on all three of these factors (specifically with respect to the degree of care differing classes of consumers would exercise in making purchases), it ultimately concluded any error was harmless because the conclusion that the marks were legally identical and would appear on the same classes of goods in the same trade channels was sufficient to support a likelihood of confusion finding.

On the issue of standing, the Federal Circuit agreed with South Carolina that the TTAB had taken an unnecessarily limited view of standing because South Carolina only needed to show that it had a reasonable belief that it would be damaged by SoCal's registration and that it had a direct and personal stake in cancellation.  The Federal Circuit had no problem concluding that South Carolina could make that showing.

Victory was short-lived, however, because the Federal Circuit concluded that, although South Carolina had standing to assert its cancellation claim, the claim still failed because South Carolina had failed to show that there was a genuine issue for trial as to whether the letters "SC" uniquely pointed to the State of South Carolina.  Although South Carolina pointed to evidence demonstrating that the public associates the letters with the State, SoCal countered with evidence showing that "SC" refers to many other entities.  And South Carolina itself had, in the context of another issue, submitted evidence showing that at least 16 other universities and colleges represent themselves as "SC."

The cite is The University of South Carolina v. University of Southern California, No. 2009-1064 (Fed. Cir. Jan. 19, 2010) (non-precedential).

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Admittedly this case is not IP-related but it does involve an issue in which I have a particular interest.

On Wednesday, the Supreme Court issued a decision granting a stay of the order of the District Court for the Northern District of California permitting the live broadcast of a civil trial to five other federal courthouses in Seattle, Pasadena, Portland, San Francisco and Brooklyn.  The trial involves the constitutional challenge to California's Proposition 8, which amended the California Constitution to provide that only marriages between a man and a woman are valid or recognized in California.

The Supreme Court's decision gives a detailed description of the history of the District Court's order but ultimately granted the stay preventing the live broadcast of the trial to the federal courthouses on procedural grounds, concluding that the District Court failed to follow appropriate procedure when it amended its local rules to allow for the broadcast.  In deciding the matter on procedural grounds, the Court was quick to assert--in the second sentence of the opinion--that it was not expressing any view on the question of whether trials should be broadcast.  Nonetheless, opinions could differ on whether the tone of the Court's decision does in fact suggest or at least hint at a view on the question.

Justice Breyer, joined by Justice Stevens, Justice Ginsburg and Justice Sotomayor, dissented from the Court's decision arguing in part that the Court was departing from its own practice and was "micromanag[ing] district court administrative procedures in the most detailed way," and that the balance of the equities tipped heavily against issuing a stay.

The cite is Hollingsworth v. Perry, No. 09A648 (U.S. Jan. 13, 2010).

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SafeWorks, LLC, based in Tukwila, Washington, is the owner of several registered SPIDER marks for hoisting and suspended staging and scaffolding equipment.  Spydercrane.com, LLC, based in Arizona, is a crane distribution business that sells truck-mounted cranes.  SafeWorks has manufactured, sold and rented equipment under the SPIDER marks since 1947; Spydercrane began selling cranes under the Spydercrane name in 1999.

SafeWorks learned of Spydercrane after Spydercrane applied to register SPYDERCRANE with the PTO in 2008.  Thereafter, SafeWorks sued Spydercrane for trademark infringement and unfair competition under the Lanham Act and for a related claim under Washington state law.  Following an apparently unsuccessful summary judgment motion by SafeWorks, the matter was tried to the Court.

In its Memorandum Opinion finding for Spydercrane on all of SafeWorks' claims, the District Court concluded that the "most important [Sleekcraft] factors" for judging the likelihood of confusion between the parties' marks favored Spydercrane.

In SafeWorks' favor, the Court found that the SPIDER marks were suggestive and were very strong with respect to lifting, hoisting, safety and suspended access equipment.  Nevertheless, the Court found that the "strength of the mark" factor favored Spydercrane.  The Court found that the parties' goods were sold in separate and distinct markets to divergent classes of customers despite the fact that their goods could be broadly described as "products that are used to lift things."  In addition, the Court noted the prevalence of the use of the terms "spider" and "spyder" in "the commercial world," although it is not clear that the Court took into consideration the specific goods or services with which these marks were used.

Also in SafeWorks' favor, the Court concluded, with some hesitation, that the similarity of marks favored a likelihood of confusion finding given "some parallels" between the parties' products and the use of Spider/Spyder in the names.

The Court found that the remaining factors favored Spydercrane or were neutral.  The Court found that the parties' products, when considered more particularly than merely items used to lift things, were functionally different and were sold to different classes of purchasers (again when examined more precisely than merely those customers affiliated with the construction industry).  Thus, the proximity of the goods factor favored a finding of no likelihood of confusion.  For somewhat similar reasons, the Court also found that the parties' marketing channels were not convergent and therefore did not support a finding of a likelihood of confusion.  Lastly, the Court found that both the degree of care that customers would take with respect to purchase (or rental) of the parties' products and the lack of evidence supporting the existence of an intent to deceive weighed against a finding of a likelihood of confusion.

Thus, taken together, the weight of the factors supported a finding that there was no likelihood of confusion in the marketplace between SafeWorks' SPIDER marks and Spydercrane's SPYDERCRANE mark and the Court found in favor of Defendant Spydercrane.

The cite is SafeWorks, LLC v. Spydercrane.com, LLC, No. 08-00922 (W.D. Wash. Dec. 7, 2009).

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Michael Sones filed an intent-to-use application for the mark "ONE NATION UNDER GOD" for charity bracelets.  After the PTO issued a notice of allowance, Sones submitted his Statement of Use along with a specimen of use consisting of two pages from a website bearing the title "Beaches Chapel School Store."  Under this title, there appeared a listing for "ONE NATION UNDER GOD™ CHARITY BRACELET" followed by further text stating "ONE NATION UNDER GOD™ CHARITY BRACELET CHOICE OF BLUE OR RED $2.00 EACH."  Next to the description appeared a shaded box that stated "Photo not availble [sic]."  The specimen further showed a "shopping cart" functionality for online ordering.

The PTO rejected Sones' Statement of Use stating that the specimen did "not show a picture of the goods in close proximity to the mark."  Sones submitted argument in rebuttal but did not submit a picture of the charity bracelets or any new textual description.  The PTO then issued a final office action affirming the rejection.  The TTAB affirmed the decision stating that "it is readily apparent that [the webpages] do not include a picture of the goods."

On the same day that the TTAB's decision affirming the rejection was mailed, Sones filed a use-based application to register the same mark for charity bracelets.  He submitted a website specimen showing a picture of the bracelet but the alleged use in commerce date was later than that of Sones' original intent-to-use application.

On appeal, the Federal Circuit first disposed of any claim by the PTO that it was not proposing a bright-line rule requiring a picture for every website specimen of use, concluding that "the PTO's position has been consistent from prosecution up to oral argument in this appeal: a website specimen of use must have a picture of the goods."

The Federal Circuit then examined the origin of the PTO's "rule" from the case of Lands' End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992).  That case involved a specimen of use from a mail order catalog for the mark "KETCH" for purses.  The submitted specimen consisted of a catalog page showing a picture of a purse, a description and the term "KETCH."  The court in Lands' End concluded that the use of the term with the picture of the purse and the corresponding description was a sufficient display associated with the goods.

The PTO interpreted Lands' End to require that a catalog specimen include a picture of the relevant goods (among other requirements) and created a new section addressing that requirement in the trademark examining manual for "catalogs as specimens."  In addition, the Federal Circuit examined the cases demonstrating that the PTO had applied this interpretation of Lands' End to website specimens, including "a rigid requirement for a picture."

The Federal Circuit read Lands' End differently, however, concluding that the case did not state that a picture is mandatory or that such a requirement applied to website specimens.  Nor could the Federal Circuit find any basis for a picture requirement in trademark law or policy.  Thus, the Court concluded that

a picture is not a mandatory requirement for a website-based specimen of use, and that the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is "associated" with the goods and services as an indicator of source.

The Federal Circuit therefore remanded the case for the PTO to consider Sones' specimen of use in light of the appropriate standard.

Circuit Judge Newman dissented from the decision contending that Sones had rendered the issue moot by filing the second, use-based application for the same mark for the same goods and submitting a specimen that included a picture.

The cite is In re Michael Sones, No. 2009-1140 (Fed. Cir. Dec. 23, 2009) and includes a photo of the website specimen submitted by Sones.

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