by Dennis Crouch
The Federal Circuit’s recent decision in Chestek v. Vidal opened the door to extensive USPTO rulemaking that entirely avoids the notice and comment process required by the Administrative Procedure Act (APA). In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024). Chestek has now filed her petition for writ of certiorari to the U.S. Supreme Court asking: Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).
By Dennis Crouch
In re Charger Ventures, — F.4th. —, 22-1094 (Fed. Cir. 2023)
In this trademark case, the Federal Circuit affirmed a decision by the Trademark Trial and Appeal Board (TTAB) denying registration of the mark SPARK LIVING for residential real estate, based upon the prior registration of SPARK for commercial real estate. The prior registration is tied to Spark Co-working spaces that started in Baltimore and have now expanded to several other cities.
Charger presented several arguments centering on the du Point factors used to determine whether a proposed mark “so resemble a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or to deceive.” Section 2(d).
An interesting discussion in the case focuses on the weakness of the prior mark. Although the tribunals agreed that it was potentially weak, it is still a registered mark and therefore subject to protection. Further, Charger’s trademark application proceeding is not a proper arena for challenging the validity of a trademark held by someone else. This is especially true here since the owner of the prior mark did not file an opposition.
A second, interesting aspect of the decision focuses on the “LIVING” portion of the proposed mark. That word is generic with regard to residential housing and, in addition, the applicant had disclaimed the word. Still, likelihood of confusion question should focus on comparing the entire proposed mark. The applicant argued that the TTAB had improperly given no weight to the LIVING portion. But, the appellate court affirmed, holding that the Office was correct to focus attention on the dominant portion of the mark. Here, the TTAB had quickly considered the impact of LIVING, but concluded that it offered no meaningful distinction.
Finally, the appellate court agreed that there was no reason to distinguish between commercial and residential real estate.
Throughout its entire review, the court appeared to agree with the TTABs conclusions, but noted that it would give deference to TTAB factual conclusions so long as supported by substantial evidence.
The Court did find one error by the TTAB, but concluded that it was harmless. In particular, the lower tribunal had failed to expressly indicate what weight it accorded to each of the du Point factors. Although the TTAB decision lacked clarity on this point, the appellate panel concluded it could sufficiently discern the agency’s path of reasoning.
Refusal Affirmed.
Reddit: Anyone can start a subreddit, and back in 2012 Jaime Rogozinski started r/WallStreetBets. Over the years, the site attracted millions of subscribers talking about aggressive trading strategies; providing middle-school humor; and pumping-up various stocks (e.g., GameStop).
In 2020, Reddit removed Rogozinski from his role controlling the subreddit as moderator, concluding that he was “attempting to monetize a community.” Rogozinski had published a book titled WallStreetBets and also filed trademark registration application for the mark WALLSTREETBETS, with him as the owner. Of course, lots of folks are monetizing their subreddits, but I have not heard of others registering a TM on the subreddit name. Immediately after removing Rogozinski from control, Reddit filed competing registration applications for the same mark and continues to control the subreddit. Opposition proceedings are now pending before the TTAB.
Reddit claims control and ownership because the subreddit is on its site and under its control; Rogozinsky argues that he did all the work building the brand for himself – not for Reddit. The issues in this case are interesting because they are similar to those being debated with regard to AI ownership and attribution. Here, the difference is that we have a corporate owner rather than an AI. And, although both the company and Rogozinsky had input in the creation — what really made this valuable is the input and connection to millions of users. Similarly, AI works well only if it has good input data — typically obtained by scooping up and examined up so many copyrighted works and user data.
In addition to the opposition proceedings, Rogozinski has now sued Reddit in Federal Court, asserting infringement of his unregistered WallStreetBets mark; infringement of his registered mark WSB; as well as violations of contract, rights of publicity, and duty of good faith and fair dealing. James R. Lawrence, III is representing the plaintiff.
Should be interesting.
by Dennis Cxrouch
In re Lizzo LLC (TTAB 2023)
In a new precedential opinion, the TTAB has sided with the musical artist Lizzo — agreeing to register her mark “100% THAT BITCH” for use on apparel. The Trademark Examining Attorney had refused registration on “failure-to-function” — concluding that the phrase was a commonplace expression used to express a well-recognized sentiment.
The phrase comes from Lizzo’s 2017 song Truth Hurts (remade in 2019) that has become a viral sleeper hit. The original line in the song is “I just took a DNA test, turns out I’m 100% that bitch.” But Lizzo herself did not create the phrase. Rather, Lizzo apparently saw a social media meme about being 100% that bitch and then added it to her song. The examining attorney concluded that “evidence that consumers may associate the phrase with the famous singer/song because it was a lyric in the singer’s song does not entitle the applicant as a singer-songwriter to appropriate for itself exclusive use of the phrase.”
On appeal, the TTAB reversed the refusal. Unlike patents and copyrights, trademark law is not designed to reward the creative endeavor of invention or authorship. Rather, trademark is designed as a consume-protection and market-function tool and so focuses on consumer perception. Here, the evidence suggests that the mark is being used in an ornamental fashion (rather than as simply words) and that ordinary consumers associate the mark with Lizzo. Even though she didn’t create the words – she is the one who made them popular and transformed the “lesser known phrase to more memorable status.” On those grounds, the TTAB concluded that the mark is registrable and thus reversed the denial.
A few years ago the mark would have also been rejected as scandalous, but that issue has been off the table since the Supreme Court’s FUCT decision.
Read the TTAB Decision here: Lizzo TTAB Decision
