Monthly Archives: September, 2015

Make Sure There Is Evidence Of A Bona Fide Intent To Use Before Filing That Intent-To-Use Application!

In the recent case of MZ Berger & Co. v. Swatch AG, the US Court of Appeals for the Federal Circuit affirmed a decision by Trademark Trial and Appeal Board (TTAB) to sustain an opposition to MZ Berger’s intent-to-use application for the trademark “iWatch.”  By way of background, an intent-to-use application allows an applicant to essentially reserve a trademark so long as it has a “bona fide intent to use” the trademark in the future.  The issue that has arisen in numerous cases over the years is what exactly is required to establish the requisite bona fide intent to use.

In the MZ Berger case, the evidence showed that MZ Berger only had an “aspiration” to reserve trademark rights in the iWatch name in case in decided to develop an associated watch.  MZ Berger had never sold watches before, and there was no evidence that MZ Berger had ever taken any steps towards developing a watch product.  The Federal Circuit therefore concluded that there was no evidence of a bona fide intent-to-use the iWatch mark.

The take-away from the MZ Berger case is that a mere subjective intent to use a trademark in the future is not a sufficient basis to establish a bona fide intent to use.  Instead, if an intent-to-use application is challenged, the applicant must be able to produce objective evidence showing that concrete steps had been taken as of the date the application was filed to start commercializing the product or service to be marketed and sold using the proposed mark.

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Three Cheers for the Wood Flooring! Recent Cases Confirm Copyright Protection for Cheerleader Uniforms and Wood Flooring Pattern.

Two recent cases show that the bar to obtain copyright protection is very low, and that designs on a variety of media can qualify for copyright protection if the design is not functional and demonstrates a minimal level of creativity:

Varsity Brands v. Star Athletica:  The issue in the Varsity Brands case was whether the decorative designs on cheerleading uniforms were eligible for copyright protection.  By way of background, the Copyright Act does not provide copyright protection for the functional aspects of clothing but it is possible to obtain copyright protection for purely decorative features of clothing.  Where to draw the line between these two bedrock principles of copyright law in the fashion design context has perplexed many courts over the years.

In the Varsity Brands case, the Sixth Circuit Court of Appeals held that the decorative elements of a cheerleading uniform (such as chevrons, stripes, etc.) could be “identified separately from, and are capable of existing independently of, the utilitarian aspects of [the] uniforms” and consequently that the graphic designs on cheerleading uniforms are copyrightable subject matter if sufficiently creative.  The court’s holding in such regard is an application of the copyright doctrine known as the “separability” doctrine.

In so holding, the Sixth Circuit was careful to distinguish between fabric design and dress design.  Fabric design covers designs printed on a finished garment and have been treated by the courts as features that are not functional and therefore are subject to copyright protection.  Dress design graphically sets forth the shape, style, cut and dimensions for converting fabric into a finished garment and has been held to be functional and thus not capable of copyright protection.

Home Legend LLC v. Mannington Mills, Inc.:  The issue in the Home Legend case was whether a two-dimensional laminate flooring design qualified for copyright protection.  By way of background, laminate flooring consists of three functional layers.  Laminate flooring manufacturers then add a decorative layer called “décor paper” which places two-dimensional artwork on top of the laminate flooring.

The decorative layer at issue in the Home Legend case was a layer that simulated the distressed look of a maple floor after years of wear and tear.  The Eleventh Circuit Court of Appeals held that the design was separable from the flooring itself (another application of the separability doctrine) and displayed a sufficiently minimum level of creativity to “hurdle the low bar of copyright originality.”

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