IP Newsflash

The U.S. Supreme Court denied New Millennium Sports, S.L.U.’s (New Millennium) writ to review the Federal Circuit’s holding overturning a decision by the Trademark Trial and Appeal Board (TTAB). New Millennium is a Spanish company that owns a trademark with an animal paw print element and the word “KELME” in connection with sports clothing. In 2009, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA (Jack Wolfskin) applied for a trademark with a paw print design in connection with clothing. New Millennium filed an opposition against Jack Wolfskin in 2010.

The U.S. Supreme Court denied New Millennium Sports, S.L.U.’s (New Millennium) writ to review the Federal Circuit’s holding overturning a decision by the Trademark Trial and Appeal Board (TTAB). New Millennium is a Spanish company that owns a trademark with an animal paw print element and the word “KELME” in connection with sports clothing. In 2009, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA (Jack Wolfskin) applied for a trademark with a paw print design in connection with clothing. New Millennium filed an opposition against Jack Wolfskin in 2010.

Nieves & Nieves, in an effort to sell cosmetics, jewelry, bedding and apparel, submitted applications to register the marks PRINCESS KATE and ROYAL KATE. In two opinions issued on January 30, 2015, the Trademark Trial and Appeal Board (TTAB) affirmed the trademark examining attorney’s refusal to issue the marks PRINCESS KATE and ROYAL KATE because the marks falsely suggest a connection with Catherine, Duchess of Cambridge, also known as Kate Middleton. In its analysis, the board reviewed whether the evidence in the record satisfies the following four­part test: (1) whether applicant’s marks PRINCESS/ROYAL KATE are the same as or a close approximation of Kate Middleton’s previously used name or identity; (2) whether applicant’s marks PRINCESS/ROYAL KATE would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to Kate Middleton; (3) whether Kate Middleton is not connected with the goods that will be sold by applicant under its mark; and (4) whether Kate Middleton’s name or identity is of sufficient fame or reputation that when applicant’s marks are used on applicant’s goods, a connection with Kate Middleton would be presumed. The board affirmed that the record supported denial of the marks following the four­part test.

In a landmark decision by the Trademark Trial and Appeal Board, the panel cancelled six of the team’s trademarks ruling that the name is disparaging to Native Americans pursuant to Section 2(a), 15 U.S.C. § 1052(a) which prevents the registration of marks 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.” The Board’s ruling addressed six uses of the name REDSKINS during the time period of 1967 to 1990. Although the decision only addresses the statutory right to register the trademarks rather than the actual use of the trademarks, it may create serious impediments to enforcing trademark protection in a commercial context. The owner of the trademarks, Pro­Football, Inc., attempted to argue laches and lack of substantial evidence of disparagement. The Board rebuffed Pro­Football’s laches defense based primarily upon public policy issues and determined that a finding of disparagement requires a two­step inquiry from the date of registration of the involved marks: