Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a follow up to Takeaway No. 1 from last week, the jury trial by Zoom reached a verdict of willful patent infringement and a damages award of $4 million. Are Zoom jury trials going to take hold, or will they be temporary?

2. The Ninth Circuit Court of Appeals recently issued an opinion affirming the grant of summary judgment to a defendant accused of infringing the trademark “LETTUCE TURNIP THE BEET.” The district court found, and the Ninth Circuit agreed, that the plaintiff’s phrase did not serve a source identifying function, but rather, it was primarily aesthetic. Thus, the alleged trademark (which had actually been registered by the USPTO) was aesthetically functional and failed to serve as a trademark that could support a trademark infringement claim. It is a bit curious that the Ninth Circuit had to resort to aesthetic functionality for a phrase that simply did not function as a trademark, or was merely ornamental. The takeaway, however, is that trademarks need to be source-identifying, and sometimes slogans and catchy phrases, in and of themselves, and depending on the surrounding branding, are not clearly source-identifying.

3. In keeping with the subject of purported trademarks that are deemed to fail to function as trademarks, the Trademark Trial and Appeal Board (TTAB) recently issued an opinion affirming a trademark Examining Attorney’s refusal to register TEAM JESUS for apparel and other items. The gravamen of the TTAB’s decision was that the phrase TEAM JESUS was merely ornamental, and commonly used by others in an ornamental or catch phrase-type sense, such that the phrase could not function as a trademark for apparel. One noteworthy feature of the TTAB’s decision was that a specimen submitted showed TEAM JESUS being used inside the collar of a T-shirt as more of an indication of branding. The TTAB, however, did not find that this showed a trademark usage. The takeaway here is that, with the USPTO generally tightening up on specimens and allegations of use, it may be more difficult going forward to register borderline “marks” that may have been registered in the not-so-distant past. The guidance of solid trademark counsel is needed.