Since being founded in 1980, Abelman Frayne & Schwab has grown and established itself as a leading law firm specializing in the protection and enforcement of all forms of intellectual property in the United States and throughout the world. Our clients include major companies in virtually all areas of business, including apparel, alcoholic beverages, automotive, chemical, cosmetics, computers, electronics, entertainment, financial services, foods, hotel services, petroleum, pharmaceuticals, publishing, real estate, retail telecommunications, and toys. While many of our clients are Fortune 500 companies, we pride ourselves on being able to assist smaller companies and individuals in protecting and developing their intellectual property.
Alex Zinchuk joined Abelman Frayne & Schwab in 2005 as a patent agent. Prior to joining the firm, for 25 years Alex worked as a patent agent in several other patent law firms in Cleveland and in New York City. Alex concentrates his practice on patent prosecution in the mechanical and electrical fields.
Mr. Terranella specializes in U.S. and international trademark prosecution. Mr. Terranella is a member of the Trademark Office Practices Sub-committee of the International Trademark Association (INTA).
Frank Terranella joined the firm in 2000 as an associate attorney in the trademark department. Prior to joining the firm, Frank was a partner in a general practice firm for two years. One of his clients during this time was Ingersoll Rand, for whom he acted as trademark counsel. Prior to that, he was General Counsel of Blenheim Group, Inc., a trade show producer. During his five years there, Frank brought all trademark work in-house, registered scores of trademarks and advised on the proper use of trademarks in materials produced by the company.
Frank concentrates his practice on all aspects of U.S. trademark prosecution from search to registration to maintenance. He is very familiar with the workings of the USPTO and has assisted in solving trademark registration problems for many clients over the last 12 years.
Charlie Stein joined Abelman Frayne & Schwab in 2007 upon graduating law school. Prior to entering the intellectual property practice, he gained extensive experience as a licensed Professional Engineer in the electric utility, pulp and paper, and water and waste-water treatment industries.
Charlie concentrates his practice on patent prosecution, including U.S. and PCT applications and the management of foreign patent applications. He also has developed extensive experience in preparing opinions of counsel, including freedom to operate, noninfringement, and invalidity.
He has worked on matters involving a wide array of electrical and electro-mechanical technologies, including power converters, regenerative drives, static reactive power production, negative sequence current injection, wind turbine blade pitch, and low voltage ride through of turbine systems.
Theodore J. Pierson joined Abelman Frayne & Schwab in 2008 as an associate in the patent department. Prior to joining the firm, Mr. Pierson was an associate at a New Jersey law firm practicing in all areas of intellectual property prosecution and litigation.
Mr. Pierson largely devotes his practice to preparing and prosecuting patent applications in various fields of technology, with an emphasis in the mechanical arts and medical devices, including power tools, fitness equipment, catheters, ports, and tissue ablation devices. His experience includes all phases of domestic and foreign patent prosecution (including PCT prosecution).
Mr. Pierson has intellectual property litigation experience including discovery, legal research, and motion practice. He has represented clients in the federal courts within New Jersey. He has also been admitted to represent clients pro hac vice in courts located in other states, including federal courts in Virginia and Connecticut.
Mr. Pierson has prepared opinions of counsel for a variety of patent matters concerning infringement, validity, and patentability. He also has experience in performing due diligence on intellectual property portfolios for mergers and acquisitions.
Steven Hertzberg specializes in patent prosecution and related matters, including infringement investigations and opinions. Prior to entering the intellectual property practice, he gained extensive experience as an engineer in the aerospace and computer industries, and served as corporate counsel for ION Computer Systems, Inc..
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Erica Halstead joined Abelman Frayne & Schwab in 2008 as an associate attorney in the trademark department. Prior to joining the firm, Erica specialized in both foreign and domestic trademark practice at a NYC intellectual property boutique firm. Additionally, Ms. Halstead managed the trademark and copyright portfolio of an education-centric software company.
Erica concentrates her practice on U.S. trademark prosecution, policing, enforcement, clearance and counseling. This includes practice before the U.S. Trademark Trial and Appeal Board in both opposition and cancellation proceedings. Erica also has experience in negotiating and preparing Assignments, License and Co-existence Agreements.
Ralph joined Abelman Frayne & Schwab in 2008 as an associate attorney. Prior to joining the firm, Ralph was concurrently a sole practitioner and counsel for Reveo, Inc., and between 2001 and 2006 exclusively IP counsel and Vice President for Reveo, Inc., where he managed a large, technically diverse patent portfolio.
Ralph’s practice concentrates on patent preparation, prosecution and counseling, in the areas of chemical engineering, chemistry and petrochemical processing systems and controls.
Ralph has patent related experience in various technical fields, including chemical processing, electrochemical cells and components, semiconductor processing, liquid crystal devices, mechanical devices, agricultural systems, biotechnology, encoding security systems, computer software, and various consumer products.
Victoria Coleman joined Abelman Frayne & Schwab in 2011 as an associate attorney in the litigation group. Prior to joining the firm, Victoria was an Assistant District Attorney at the Bronx District Attorney’s Office in the Investigations Division where she prosecuted, among other things counterfeit, piracy and fraud crimes. She also participated in a global forum on anti-counterfeiting strategies at the United States Patent Trademark Office.
Victoria’s practice is focused on litigation cases involving patent, trademark, trade secret and copyright issues on both the plaintiff and defense side. As a member of the litigation group she strategizes to determine the best, most efficient method to obtain optimal results for clients. Victoria is involved in fact gathering, drafting pleadings, electronic discovery and preparing for trial and depositions. Victoria also assists in counseling clients to developing an IP protection program and determine the best way to protect their IP internationally.
Lori Cohen joined Abelman Frayne & Schwab in 1997 where she was an associate through 2002. After a hiatus, Lori returned to the firm in 2007. Prior to joining the firm in 1977, Lori was in house trademark counsel at Jordache Enterprises, Inc. where she was responsible for procuring, maintaining and enforcing rights in the well known Jordache trademarks throughout the world. Lori has also been associated with Hale and Dorr, now Wilmer Hale & Gibbons, where she practiced domestic and international trademark prosecution in industries including pharmaceuticals, wearing apparel, and technology.
Jay Cinamon joined Abelman Frayne & Schwab in 1986 after 20 years as a Senior Patent Attorney at International Paper Company. Jay is experienced in the preparation and prosecution of chemical, pharmaceutical, mechanical and design patent applications before the U.S. Patent and Trademark Office, the European Patent Office and various foreign patent offices, inter parties proceedings in the USPTO, and the preparation of infringement and validity opinions.
Aimee Allen primarily specializes in litigation and transactional work on commercial trademark matters, principally TTAB opposition and cancellation proceedings and USPTO trademark prosecution. She has additional expertise in copyright law and licensing for artists and arts organizations in music, photography, film, visual arts and related fields, as well as experience with the music industry licensing, publishing, and recording contracts.
Davis Toren is a contributor to the Encyclopedia of Patent Law and Law for Executives and Patentrecht In den USA, in addition to contributing articles to a variety of U.S. and German legal publications. Mr. Toren taught law at Newark College of Engineering and has lectured extensively, primarily in Germany, on intellectual property. He is fluent in German, Swedish, Danish, Norwegian and Hebrew.
Tom Spath joined Abelman Frayne & Schwab in 1995 as Of Counsel to continue the patent and trademark practice specialties he developed over the prior 25 years as a partner in two other intellectual property specialty firms in NYC.
Tom’s current practice is focused on patent preparation and prosecution in the U.S. Patent and Trademark Office, and in international practice in numerous jurisdictions including the EPO, China, and Japan.
Robert B. Smith’s practice specializes in patent prosecution, litigation, and counseling, primarily in mechanical and electrical engineering, advanced materials, and computer related technologies. He also has extensive experience in technology acquisition, opinion work, licensing, and trade secret litigation. In addition to district court litigation, he has argued a number of cases before the Court of Appeals for the Federal Circuit with a very high rate of success.
Mr. Smith’s practice has involved patents on communications satellites, tennis racquets and other sporting goods, microprocessor-based control systems, computer software, remote monitoring and control networks, medical devices, automobile engines and hybrid power plants, automobile transmissions, VVVF AC motor controls, automobile security devices, “smart” credit cards and credit card cryptography, plasma physics, elevators, razors, optics, diamond manufacture, aircraft jet engines, power plant equipment, optics, footwear, road paving machinery, hardware, tools, catalyst filters,telephone switching and communications equipment, optical devices for use in projector equipment, business methods, and wind turbines, as well as other areas.
Prior to joining Abelman Frayne & Schwab in 2009, Mr. Smith was a partner at the IP firm Brumbaugh, Graves, Donohue & Raymond. He subsequently practiced for 10 years at White & Case, and 10 years at Skadden, Arps, Slate Meagher & Flom.
Melvin Ortner has extensive experience in advising businesses and transactional matters including licensing, distribution, sourcing, real estate, and commercial agreements. Mel is experienced in advertising law and has successfully defended his clients’ promotional programs before the Federal Trade Commission. He also represents executives in employment and separation agreements.
Before joining Abelman Frayne & Schwab in 2003, Mel was the Vice President and Chief Counsel of Sara Lee Branded Apparel. Prior to that he was the Vice President and General Counsel of Playtex Apparel. In these capacities Mel was responsible for the management of high profile litigations. Today he serves on the board of directors of several corporations.
In the civic arena, Mel served two terms as an elected Trustee in the Village of Great Neck, where he also served as Deputy Major and Chairman of the Planning Board.
Jerry Dainow maintains a practice in all fields of intellectual property law with an emphasis on prosecution, licensing and counseling. He has been involved in diverse technical and commercial areas including medical and dental devices, complex mechanical and structural engineering, manufacturing equipment, engines, toys, appliances, designs and trademarks.
Jennifer Waitman joined Abelman Frayne & Schwab in 1998 as an associate attorney in the trademark department. Jennifer concentrates her practice on international trademark prosecution, litigation, cancellation and opposition procedures, counterfeit goods prosecution and the management of trademark portfolios. Her international trademark experience includes drafting of settlement and license agreements and analysis of trademark clearance reports.
Victor Tannenbaum is a founding member of the firm and specializes in licensing and distribution agreements, assignments, contracts, mergers and acquisitions, and changes in ownership, all with respect to intellectual property on a worldwide basis.
Julie Seyler joined Abelman Frayne & Schwab in 1988 as an associate attorney in the trademark department. Prior to joining the firm, Julie was an attorney with the United States Trademark Office, prosecuting trademark applications as well as preparing briefs and oral arguments before the Trademark Trial and Appeal Board.
Julie concentrates her practice on trademark counseling, prosecution and and inter party proceedings before the Trademark Trial and Appeal Board. Her experiences includes analyzing the registrability of trademarks, preparing oppositions and cancellations and following such cases through to final briefs and oral arguments before the TTAB.
Michael Schwab has been with the firm since 1997 and is a partner. Mr. Schwab specializes in trademark and copyright counseling, litigation and counseling on regulatory and other issues in the beverage alcohol, dietary supplement and food industries. His practice includes all aspects of a domestic and international trademark practice, including advising, searching the availability of marks, filing and prosecuting trademark applications, handling contested oppositions, cancellations and litigations, managing worldwide trademark portfolios, enforcing trademark rights, including gray market goods, anti-counterfeiting, and monitoring and preventing infringing third party trademarks, internet and related domain name use and advertising compliance.
Mr. Schwab also negotiates, drafts and interprets license and other agreements, monitors licensee compliance and manages intellectual property due diligence in connection with corporate mergers and acquisitions.
In the beverage alcohol, dietary supplement and food fields Mr. Schwab counsels clients on a wide variety of issues including federal, state, local and international regulatory compliance, international and domestic distribution agreements, federal alcoholic beverage label approval and state brand registrations, advertising compliance, trade practices and customs and international trade matters.
Jeffrey Schwab is a founding member of the firm. He is a patent attorney specializing in intellectual property litigation, licensing, Alternative Dispute Resolution (“ADR”), and advertising law. Mr. Schwab has written various articles on intellectual property licensing and has been a guest lecturer on intellectual property protection at major corporations, universities and bar associations. He was Chairman of the New York Intellectual Property Law Association subcommittee on ADR for 3 years. He has been lead counsel in a number of jury cases resulting in multi-million dollar awards for the Firm’s clients. He is an AV rated attorney by Martindale Hubbell, and have been selected for listing for 2013 Top-Rated Lawyers in Intellectual Property by American Lawyer Media and Martindale Hubbell.
Caridad Piñeiro Scordato joined Abelman Frayne & Schwab in 1980 as a clerk, attended law school at night and then worked as an attorney for a number of years before becoming a partner of the Firm in 1994.
Caridad specializes in international trademarks, computer and new media law, publishing and literary law, and international litigation. She has represented a broad range of clients in the pharmaceutical, entertainment, publishing, automotive, alcoholic beverage and food industries.
In the area of publishing and literary law, Caridad brings the unique experience and insights of being a New York Times and USA Today bestselling author, with knowledge of the inner workings of the industry.
As the Firm’s Managing Partner for IT, Caridad also has hands-on knowledge and experience in the computer and new media law areas.
Caridad is fluent in Spanish and has a working knowledge of Italian, French and Portuguese. With those language skills she has assisted clients in a number of important overseas due diligence, litigations, and negotiations.
Marie Anne Mastrovito joined Abelman Frayne & Schwab in 1999 as an associate attorney in the trademark department. Prior to joining the firm, Marie Anne was a Trademark Examining Attorney with the United States Patent and Trademark Office and served as a Staff Attorney with the law firm of Jones Day Reavis and Pogue assisting in unfair competition litigation.
Marie Anne concentrates her practice in the field of trademark prosecution and the representation of clients in Opposition and Cancellations actions and ex parte appeals before the U.S. Trademark Trial and Appeal Board. In addition, Marie Anne has represented clients in successful appeals to the United States Court of Appeals for the Federal Circuit.
Marie Anne is also experienced in trademark clearance and investigations, preparing cease and desist letters, drafting and negotiating coexistence agreements, and assignment of marks.
Peter Lynfield joined the firm in 1980. He has been a partner since 1986. Peter concentrates his practice on U.S. and International trademark, copyright, unfair competition and related matters counseling and litigation.
He has advised clients in various industries, including automotive products, pharmaceuticals, veterinary pharmaceuticals and products, fragrances and cosmetics, beverages, real estate development, pet food music labels and groups, charitable fundraising, food additives, television and film production, personal care products, international human rights organizations and health care facilities.
Peter’s practice includes representing clients in the selection and adoption of trademarks in all countries; searching, availability, registrability and related opinions; preparation, filing and prosecution of trademark applications in all countries of the world; oppositions, litigations and related actions involving trademarks, copyrights, trade dress, unfair competition, dilution and counterfeiting worldwide.
His practice also includes negotiating and drafting license agreements related to all forms of intellectual property; conducting due diligence, opinions and negotiating agreements in connection with the IP aspects of acquisitions, such as purchase and sales agreements, license agreements, IP security agreements, assignments; recordal of assignments and security agreements worldwide; acquiring domain names through negotiations and alternative dispute resolution procedures; advising clients on issues relating to compliance with U.S. sanctions administered by the Office of Foreign Assets Control.
Norman Hanson joined Abelman Frayne & Schwab in 2011 as a partner. Prior to joining the firm, for 12 years Norman was a partner at Fulbright & Jaworski, a partner at Felfe & Lynch for 6 years and an associate for 8 years, and an associate at Cooper & Dunham for 2 years.
Norman’s practice focuses on patent prosecution, interferences, and counseling, in the areas of biotechnology, biochemistry, chemistry, and pharmaceuticals.
He has drafted over 400 patent applications, and has served as lead or associate counsel in approximately 15 interferences. His litigation experience includes deposition practice in the biotechnological and chemical arts, document review and preparation of pleadings. He has argued before the Court of Appeals for the Federal Circuit and was prevailing counsel in Bosies v. Benedict, 27 F. 3d 539 (1994), and In re Gangadharam, 889 F. 2d 1011 (1989).
Anthony DiFilippi joined Abelman Frayne & Schwab in 1995 as an associate attorney in the litigation department. Anthony concentrates his practice on patent, trademark and copyright litigation and counseling. His litigation experience includes analyzing patents and technical issues, preparing pleadings and briefs, taking and defending depositions of fact witnesses, assisting technical experts in their preparation of expert reports, conducting and defending depositions of expert witnesses, and examining witnesses at trial.
Anthony Coppola joined Abelman Frayne & Schwab in 1996 and concentrates his practice in patent, trademark and copyright litigation, patent prosecution, intellectual property licensing, and transactional matters. He has successfully litigated cases in the areas of patent infringement, trademark infringement, theft of trade secrets, trademark counterfeiting and product liability in various jurisdictions throughout the United States.
Anthony’s technical background has allowed him to analyze clients’ technologies and establish their freedom to operate. He has prepared comprehensive opinions of counsel and successfully negotiated favorable licenses and settlements in numerous patent and trademark disputes.
Joseph Catanzaro is experienced in all aspects of Intellectual Property and specializes in patent practice, including preparing, filing and prosecuting patent applications, appeals, interferences and related Patent office matters; preparing, filing and prosecuting international patent applications; patentability, right-to-use and due diligence investigations and opinions; patent licensing and related matters.
Ned Branthover is the author of “Federal Dilution Act: Famous Marks Get Greater Protection”, Japanese Trademark Journal and has lectured on Developments in Trade Dress Protection Since Two Pesos v. Taco Cubana to the Westchester & Fairfield Corporate Counsel Association, 1995. He has also been a lecturer on trademark matters at the INTA Annual Meetings 1996-1999.
Michael Aschen practices intellectual property litigation and counseling. Michael devotes the majority of his time to litigating cases before the U.S. district courts. His litigation experience includes analyzing patents and technical issues, preparing pleadings and briefs, taking and defending depositions of fact witnesses, assisting technical experts in their preparation of expert reports, conducting and defending depositions of expert witnesses, and bench and jury trials.
Michael has litigation experience in wide array of industries including entertainment, television, automotive, professional sports, petroleum, consumer products, apparel, jewelry, Internet, alcoholic beverages, publishing, finance, printing, telecommunications, magnetics, pet products, semiconductors, fertilizers, industrial piping, hardware, and retail.
Michael has also argued numerous appeals before the United States Courts of Appeal for the Second, Sixth, Ninth, Eleventh and Federal Circuits.
Michael provides clients with counseling regarding the development of patent portfolios, has prepared opinions of counsel, identified and resolved potential infringement disputes, and counseled clients regarding licensing opportunities.
Larry Abelman is a founding member of the firm. Mr. Abelman is well known for his expertise in international and domestic trademark protection and litigation, licensing and distributorship agreements, entertainment and media law.
Since Abelman Frayne & Schwab was founded in 1980, the Firm has grown and established itself as a leader, both in the United States and overseas, in the protection and enforcement of all forms of intellectual property. Our clients include major corporations in virtually all industries, including apparel, alcoholic beverages, automotive, chemical, cosmetics, computers, electronics, entertainment, financial services, foods, hotel services, petroleum, pharmaceuticals, publishing, real estate, retail, telecommunications, and toys. For more information on the Firm’s areas of expertise, please click on the Practice Areas link in the menu bar above.
Our attorneys have wide ranging experience in many specialties including patents, trademarks, copyrights, licensing, contracts, mergers and acquisitions, entertainment, new media law, and Internet law. For more information on our attorneys, their areas of expertise, and contact information, please click on the Attorneys link in the menu bar above.Home
On May 24, 1938, the United States Patent Office issued a patent which many of us have cursed on occasion – U.S. Patent No. 2,118,318 for a Coin Controlled Parking Meter – to Carl C. McGee of Oklahoma City, Oklahoma.
The invention for the parking meter was designed for “measuring the time of occupancy or use of parking or other space, for the use of which it is desirous an incidental charge be made upon a time basis.” One or more coins were to be inserted, and a signal would indicate when a predetermined period of time after that had elapsed. (In this patent description, this time signal was designed to disappear from view when time expired.) The coin remained in an operative position until a clockwork spring was properly wound to drive the mechanism. The display was graduated to show time remaining.
Make some Intellectual Property History this week!By: Anthony A. Coppola, partner Abelman, Frayne & Schwab
Michael J. Schwab, Esq.
On April 20, 2015 a three judge panel of the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Trademark Trial and Appeal Board’s (“TTAB”) decision refusing to register the mark THE SLANTS for “entertainment in the nature of live performances by a musical band” on the grounds that the mark violated Section 2(a) of the Lanham Act (“Section 2(a)”) because it was disparaging of people of Asian descent. In re Simon Shiao Tam, Appeal No. 2014-1203 (Fed. Cir. April 20, 2015). However, on April 27, 2015 the CAFC issued an order vacating its opinion and ordering an en banc hearing on the following issue: “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?”
The CAFC’s decision to vacate was likely spurred by the separate opinion Circuit Judge Kimberly A. Moore added to the panel’s decision. In 24 pages of “additional views” Judge Moore suggested that it was time for the CAFC to re-examine the precedent upholding the constitutionality of Section 2(a). Judge Moore’s analysis appears to be the spark that ignited the CAFC’s re-examination of the constitutionality of this section of the Lanham Act which opponents have argued empowers the Trademark Office to suppress protected commercial speech.
Section 2(a) provides that the Trademark Office may refuse to register a mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . .” 15 U.S.C. § 1052(a). The TTAB applies the following two part test to determine if a mark is disparaging: (1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to other elements in the mark, the nature of the goods and services, and the manner in which the mark is used in the marketplace, in connection with the goods or services; and (2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
In 2010, Simon Shiao Tam, the “front man” for the Asian-American dance band called The Slants, filed an application to register THE SLANTS for “entertainment, namely live performances by a musical band.” The application was refused on the basis that the mark was disparaging to people of Asian descent. Tam appealed, but did not file a brief and the appeal was dismissed.
In 2011 Tam filed a second application for the identical mark for nearly identical services. Relying on evidence gathered in relation to Tam’s earlier application the Trademark Office rejected the second application also on the basis that THE SLANTS is disparaging. The TTAB affirmed the rejection. Referring to the band’s website which displayed the mark next to a depiction of an Asian woman and utilized rising sun and dragon imagery as well as to a statement by Tam that he selected the mark to “own” the stereotype it represents, the TTAB found it “abundantly clear” that THE SLANTS would be perceived as referring to people of Asian descent. Citing dictionary definitions and evidence of individuals and groups in the Asian community who objected to Tams’ use of the word “slant,” the TTAB also found the mark to be disparaging to a substantial composite of people of Asian descent.
Tam appealed to the CAFC arguing the TTAB erred in finding the mark THE SLANTS disparaging and challenging the constitutionality of Section 2(a). Specifically, Tam claimed that Section 2(a) is unconstitutional because it restricts protected speech, is vague and that the TTAB’s two-part disparagement test violated his right to due process and equal protection. The CAFC rejected all of Tam’s arguments and affirmed the TTAB’s decision.
First, the court concluded that that there was substantial evidence to support the TTAB’s finding that THE SLANTS referred to people of Asian descent and that the term is “disparaging to a substantial composite” of people of Asian descent. Therefore, the TTAB did not err in finding THE SLANTS to be disparaging.
With respect to the constitutionality of Section 2(a), the CAFC, citing In re McGinley, 660 F2d 481 (C.C.P.A. 1981), held that because a refusal to register a mark does not affect an applicant’s right to use the mark “[n]o conduct is prescribed and no tangible form of expression is suppressed.” Therefore, Tam’s First Amendment rights were not abridged by the refusal to register his mark. The CAFC also ruled that Section 2(a) was not unconstitutionally vague because the TTAB’s two-part disparagement test is “sufficiently precise” to allow the standard to be applied fairly. With respect to due process the CAFC found that Tam’s rights were not infringed despite the registration of other trademarks containing disparaging terms because Tam had a fair opportunity to prosecute and appeal the rejection of his application. Further the rejection confirmed the Trademark Office’s practice of evaluating each application on its own merit. An error made in another application cannot justify the improper registration of another application. Finally, CAFC rejected Tam’s equal protection argument finding that Tam’s registration was rejected not because of his race, but because THE SLANTS was used in a disparaging manner. A trademark refusal does not violate equal protection where there are nondiscriminatory reasons for denying the registration.
In a separate addendum to the opinion Judge Moore expressed her belief that it is time for the CAFC “to revisit McGinley’s holding on the constitutionality of Section 2(a)’s prohibition against registration of marks deemed disparaging.” Noting that the McGinley decision has been widely criticized and that “First Amendment jurisprudence on the ‘unconstitutional conditions’ doctrine and the protection accorded to commercial speech has evolved significantly” since the decision was issued, Judge Moore opined that ”the time has come to give” the issue of the constitutionality of Section 2(a) the “consideration it is due.”
There are three requirements for finding a violation of the First Amendment. These are (i) the speech at issue must be protected speech; (ii) there must be governmental action that abridges that speech; and (iii) the abridgment must be unconstitutional when analyzed under the appropriate legal framework. Judge Moore’s analysis of these factors suggests Section 2(a)’s prohibition against registration of disparaging marks violates the First Amendment.
First, Judge Moore concludes that a trademark is a form of protected commercial speech. It identifies the source of a product or service and provides commercial information to consumers. While it is true that some trademarks are used solely as a source identifier, that it is not the case with THE SLANTS. Tam selected the name “to ‘reclaim’ and ‘take ownership’ of Asian stereotypes.” “With their lyrics, performances, and band name, Mr. Tam and The Slants weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment.”
Second, Judge Moore argues that Section 2(a) abridges protected commercial speech. While a refusal to register does not affect an applicant’s right to use a trademark, it does deny the applicant access to the significant benefits provided by registration. Citing the recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Ind., Inc., Judge Moore noted that “[r]egistration is significant” and “confers important legal rights and benefits on trademark owners who register their marks.” These benefits, which are not available in the absence of a federal registration, “are numerous, and include both substantive and procedural rights.” “Section 2(a)’s content-based restrictions on registerability were adopted to reduce use of trademarks the government deemed unsuitable (such as those that disparage) – no doubt a chilling effect on speech.”
Further, Judge Moore notes that Section 2(a) has never been analyzed under the “unconstitutional conditions” doctrine. Under this doctrine the government may not deny a benefit to a person on a basis that infringes a constitutionally protected interests such as free speech. A federal registration of a trademark confers valuable benefits on the owner and, pursuant to Section 2(a) the government conditions those benefits on the choice of the mark. Since Section 2(a) allows the government to deny benefits on the basis of the applicant’s constitutionally protected speech, the “unconstitutional doctrine” applies to an analysis of the section. “The government cannot hinge the benefits of federal trademark registration on constitutionally protected speech – here, the applicant’s selection of a suitable mark – unless the government’s action pass constitutional scrutiny.”
Judge Moore then found that Section 2(a) did not pass constitutional scrutiny when analyzed under the framework used to determine the constitutionality of restrictions on commercial speech. In Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557 (1980) the Supreme Court established the test for reviewing the constitutionality of restrictions on commercial speech including that the regulation must advance a substantial government interest. Judge Moore, after reviewing a number of possible interests the government may have in refusing to register a mark deemed disparaging, could not identify “any substantial interest that would justify the [Trademark Office’s] refusal to register disparaging marks.”
Judge Moore presents compelling arguments challenging the constitutionality of a refusal to register a trademark on the basis that a mark is disparaging. She has apparently persuaded a number of her colleagues on the CAFC that the issue deserves the full attention of the court. Could her analysis provide the road map that leads to an end to trademarks being refused registration on the basis that they are disparaging?
We are monitoring the case and will provide updates as developments occur.
The U.S. Supreme Court has ruled that a decision of the Trademark Trial and Appeal Board (“TTAB”) on likelihood of confusion may preclude re-litigation of the issue in a later filed suit in a district court for trademark infringement, but only if the issues before the TTAB and district court are “materially the same.” B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352 (U.S. Mar 24, 2015). This decision may expand the scope of trademark opposition and cancellation proceedings since a TTAB decision on likelihood of confusion could now dictate whether a district court should enjoin the use of a trademark.
Issue preclusion is the doctrine that prevents a party from re-litigating an issue that has already been decided. “When an issue of fact or law is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim.” Restatement (Second) of Judgments §27. B&B Hardware concerned the application of issue preclusion in a trademark administrative context.
A trademark opposition or cancellation proceeding before the TTAB is similar to a litigation in federal district court, but the case is decided on the papers. Although deposition testimony may be presented, live witnesses do not appear before the TTAB. In addition, the only relief available is the refusal or cancellation of a trademark registration. The TTAB cannot enjoin the use of a trademark or award monetary damages. Likelihood of confusion is the test used by both the TTAB to grant or deny a trademark registration and a district court to determine trademark infringement. Unlike a district court the TTAB generally reviews the issue of likelihood of confusion in the abstract based on how the parties define their goods in their trademark applications and registrations and not how the trademarks are actually used in the marketplace.
Hargis Industries filed an application to register the trademark SEALTITE for metal screws used in the construction of buildings. B&B Hardware, which owns a registration for SEALTIGHT for fasteners adopted for use in the aerospace industry, opposed Hargis’ application on the basis of likelihood of confusion. The TTAB sustained the opposition and refused Hargis’ application. Hargis did not appeal the refusal.
B&B then sued Hargis for trademark infringement in federal district court and argued that issue preclusion applied to the TTAB’s finding on likelihood of confusion and that since the issue was conclusively decided it could not be re-litigated in the district court. The district court disagreed finding that only decisions from constitutionally authorized courts and not administrative agencies can have preclusive effect. The Court of Appeals for the Eighth Circuit also ruled in favor Hargis, but for a different reason. The Eighth Circuit found preclusion was not appropriate since the TTAB and district courts utilize different criteria to determine likelihood of confusion.
The Supreme Court reversed. Justice Alito, writing for the majority, found that even though the TTAB generally considers likelihood of confusion in the abstract and not based on how the marks are actually used in the market place, there is no absolute rule preventing a TTAB decision from having preclusive effect on a district court. The Court remanded the case to the Eighth Circuit directing it to apply the following rule: “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.”
This decision could significantly alter the manner in which trademark opposition and cancellation proceedings are litigated before the TTAB. A party to an opposition who wants to try to gain the benefit of issue preclusion in a later filed infringement action may attempt to proffer significantly more evidence of the actual use of their trademark in the marketplace to ensure the issue of likelihood of confusion as decided by the TTAB is “materially the same” as the issue would be decided by a district court. This may increase the burden on the TTAB, but streamline later filed infringement actions. Further, a party losing in an opposition proceeding may have added incentive to appeal the issue to a district court, rather than risking the same results in an infringement action. Parties can no longer assume that an infringement action will be a do over.
The firm is pleased to announce the publication of A Practitioner’s Guide to Patent Litigation in Germany, Japan and the United States (Hart Publishing 2015) co-authored by founding Partner Jeffrey Schwab. The book provides a comparative overview on patent law and patent litigation proceedings in Germany/Europe, Japan and the United States. The systematic presentation of the legal systems including comprehensive references reveals differences and similarities. Jeff authored the United States portion of the book.
Our Partner Greg Shatan has been elected President of the Intellectual Property Constituency of ICANN. The Intellectual Property Constituency represents the views and interests of intellectual property owners worldwide in the ICANN “global multistakeholder community” and works to ensure that IP owners’ views are reflected in domain name policy and implementation adopted by ICANN. ICANN is the non-profit corporation charged with management and policy implementation for the worldwide Domain Name System (DNS). IPC membership includes leading international and national intellectual property organizations, as well as brandowners, content owners and distributors, and law firms from around the world.
Domain name issues continue to be of great importance to the intellectual property community and the public. ICANN is overseeing the roll-out of over 1500 new top level domains (TLDs) (such as .blog, .bank, and .nyc) fundamentally changing the landscape of the Internet, and in turn, changing brand protection and exploitation strategies for trademark owners. ICANN is also in the midst of managing a major change in the governance of the Internet, as the U.S. government will be relinquishing its oversight of certain critical technical Internet functions (the “IANA functions”). Greg is also playing a key role in the “IANA transition,” representing the interests of commercial stakeholders worldwide in negotiating this historic changeover.
Greg’s practice includes a significant emphasis on Internet and domain name matters of all types, as well as intellectual property and technology transactions, and IP aspects of major corporate transactions. He also advises clients on the management, protection and enforcement of trademark and domain name portfolios. He can be reached at 212-885-9253 or firstname.lastname@example.org.