Marta Paul spoke on recent developments in US trademark law at the August practice group lunch. Topics included the Supreme Court’s decision in Matal v. Tam on “disparaging” trademarks, as well as how the USPTO is handling similar parts of the trademark statute in the wake of the decision. More news from the USPTO included a new examination guideline on “merely informational matter” and recent cases from the TTAB. Finally, Marta discussed a recent precedential decision from the Court of Appeal for the Federal Circuit, In re I.AM.SYMBOLIC, LLC, involving likelihood of confusion and the effect of subject matter limitations in the identifications of goods or services used in trademark applications.

1. Practice Group Luncheon
August 2017

2. Matal v. Tam
(“The Slants” Decision)
• U.S. Supreme Court rules that the
“disparagement” clause is unconstitutional –
violates First Amendment
– Trademarks are not government speech
• “Scandalous and immoral” provision of the
Trademark Act is still intact
– In re Brunetti, currently suspended at the CAFC

3. USPTO Examination
Guideline
• Disparagement - Gone:
– TMEP provisions no longer apply
– Suspended applications will be removed from
suspension and examined under other grounds
– If rejected in the past, file a new application
• Scandalous – On Hold:
– TMEP sections still apply
– Suspensions will remain in place until CAFC
issues decision (In re Brunetti)

4. USPTO Examination Guideline
“Merely Informational Matter”
• **Cannot be overcome with acquired distinctiveness or amending to
the Supplemental Reg., similar treatment as generic refusal**
• (1) Matter that is used merely to convey information:
– Likely to also receive descriptiveness rejection
– Examples:
 SPECTRUM for illuminated switches
 WHY PAY MORE? for grocery services
 PASTEURZIED for face cream
• (2) Widely-used slogans / messages:
– DRIVE SAFELY, THINK GREEN, MADE IN THE USA, ONE
NATION UNDER GOD
• (3) Religious quotes:
– JOHN 3:16, THE LORD IS MY SHEPHERD I SHALL NOT WANT,
AN EYE FOR AN EYE

5. Third-party Evidence
in Ex Parte Cases
• Applicant’s evidence was persuasive:
– TOPDOC: descriptive of physician referral services
– Applicant submitted hundreds of 3rd-party registrations with “TOP”-
noun treated as suggestive, not descriptive
– TTAB reversed refusal – mark is suggestive
• Applicant’s evidence was not persuasive:
– FURNITUREBOBS rejected based on BOB’S DISCOUNT
FURNITURE
– Applicant submitted third-party registrations and actual uses of
“Bob” and “furniture”
– TTAB: In actuality, Applicant only cited to 5 uses of “Bob” and
“furniture” (without other significantly distinguishing elements)
– TTAB: evidence does not show “widespread and significant use”
enough to render the cited mark so weak that the public will be
able to distinguish between the marks

6. will.i.am
Black Eyed Peas
• Applied to register “I AM” for cosmetics, jewelry
– Limitation: “all associated with William Adams, professionally
known as will.i.am”
– Rejected based on prior registration for same mark / same goods
– TTAB: limitation is meaningless, confusion is likely
– CAFC affirms
• How does this compare to “affinity merchandise” court cases?
– Even when marks / goods are identical, the uses do not cause
confusion when the goods are “associated with” the source of
entertainment (ex: Survivor band v. Survivor show)
– Differences:
 Ex parte v. contested court case
 No evidence that he goes by “I AM”
 Protect prior registrant / avoid the issue