For our weekly SoCal IP Institute meeting on Monday, January 8, 2018, we will discuss the following cases:
In Re Brunetti, (CAFC, December 15, 2017) (available here). Applicant tried to register the mark FUCT for clothing. The Examining attorney refused registration and the TTAB affirmed the refusal based on § 2(a) of the Lanham Act (baring registration of marks that “comprises immoral, deceptive, or scandalous matter”). On appeal, the CAFC found § 2(a) unconstitutional. Although the CAFC found the term FUCT was indeed “immoral” under the statute, the statute still violated the first amendment. The CAFC also rejected the government’s argument that trademarks were a form of government subsidy. In a concurring opinion Justice Dyke suggested the trademark office should use a standard closer to criminal law that penalizes the mailing of “obscene, lewd, lascivious, indecent, filthy or vile” materials. The rest of the court disagreed, saying following such a standard would rewrite the statute.
Allstate Insurance Co. v. Kia Motors, (C.D Cal, December 22, 2017) (available here). Allstate registered the mark DRIVE WISE for a program offering drivers better coverage if they drove responsibly. Kia registered the mark DRIVEWISE for sensor technology they put into their cars, Allstate moved for a permanent injunction stopping Kia from using the mark. At trial the court entered judgment in favor of Kia. The court found Allstate’s mark had weak marketplace recognition. Additionally, the court found the likelihood of confusion between the marks was greatly reduced because both companies had highly recognizable house marks.
All are invited to join us on January 8, 2017, 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 Elisha Manzur by 9 am Monday morning.