Our weekly SoCal IP Institute meeting on Monday, September 8, 2014 will be a discussion of a recent trademark decision and a recent decision on patentable subject matter from the District of Delaware. Brief synopses of the cases appear below. Panda Kroll, Esq., will lead the discussion on the trademark case.
Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 (TTAB June 18, 2014) (available here), involves a case of what constitutes disparaging trademarks. The marks at issue were REDSKINETTES (typeset word(s)), REDSKINS (typeset word(s)), THE REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (typeset word(s)), and THE REDSKINS (drawing which includes word(s) in stylized form). The registrations for the marks above were issued in 1990, 1978, 1974, 1974, 1974, and 1967 respectively.
The Board applied a two-step analysis in finding that the marks were disparaging. The steps are: “a. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?” and “b. Is the meaning of the marks one that may disparage Native Americans?” The Board found that the Pro Football, Inc.’s alleged honorable intent and manner of use do not contribute to the determination of whether the term is disparaging. The record established that at least thirty percent of Native Americans found REDSKINS used in connection with Pro Football, Inc.’s services to be disparaging at the time they were registered. The Board found this number to be substantial.
Walker Digital, LLC, v. Google, No.: 11-318-LPS (D. Del. 9/3/2014) (available here). The plaintiff sued Google for infringing two of its patents related to facilitating employment searches. Google filed a motion for summary judgment asserting that the patents were invalid under 35 U.S.C. 101. The district court held the patents invalid.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 8, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.