Third Circuit Rules “McCarthy Test” Determines Ownership of Unregistered Trademarks

The Third Circuit has held that where a manufacturer and its exclusive distributor have no written contract designating which party owns an unregistered trademark, the “McCarthy test,” rather than the “first use test,” should be used to decide ownership.

Covertech Fabricating, Inc. is a Canadian manufacturer of protective packaging and reflective insulation.  TVM Building Products, Inc. distributes specialty building materials.  For over fifteen years, Covertech sold numerous reflective insulation products under its rFOIL mark, which is registered in the United States.  The rFOIL brands include ULTRA NT RADIANT BARRIER and ULTRA CONCRETE UNDERPAD.  Covertech registered the ULTRA mark in Canada in 2010.     Continue reading

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“GOOGLE” Survives Attempted Genericide

On May 16, 2017, the Ninth Circuit affirmed Google Inc.’s summary judgment win in a lawsuit that sought to cancel the GOOGLE mark on the ground it has become generic.

In early 2012, David Elliot registered 763 domain names that included the word “google.”  Google filed and won a UDRP proceeding that found the domains had been registered in bad faith, and ordered transfer of the domains to Google.  Elliot then filed suit in district court, petitioning to cancel the GOOGLE trademark on the ground that the word “google” is primarily understood by the public as a generic term used to describe the act of internet searching.  At summary judgment, Google argued that Elliot had failed to present sufficient evidence to support such a finding.  Elliot, on the other hand, argued that the majority of the relevant public uses “google” as a verb, and verb use constitutes generic use as a matter of law.  The district court sided with Google. Continue reading

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Supreme Court Rules “Disparagement Clause” of the Lanham Act Unconstitutional

On June 19, 2017, the Supreme Court ruled that the 70-year-old federal ban on offensive trademarks is unconstitutional.

The “disparagement clause” of the Lanham Act prohibits registration of trademarks “which may disparage . . . or bring . . . into contempt or disrepute” any “persons, living or dead, institutions, beliefs, or national symbols.”  Simon Tam sought federal trademark registration for THE SLANTS, the name of his Portland-based Asian-American band.  The name, according to Tam, was an attempt to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity.  Citing the disparagement clause, the Examining Attorney refused registration on the basis that “there is . . . a substantial composite of persons who find the term in the applied-for mark offensive.”  Tam appealed, and the Federal Circuit reversed, finding the disparagement clause unconstitutional under the First Amendment.  The government appealed, and the Supreme Court has now affirmed. Continue reading

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