October 2013 Vol. 53, No. 1 ILLINOIS STATE BAR ASSOCIATION Intellectual Property The newsletter of the Illinois State Bar Association’s Section on Intellectual Property Law Trademark Trial and Appeal Board not flip INSIDE about the bird By Steven L. Baron and Natalie A. Harris Trademark Trial and Appeal Board not flip he Trademark Trial and Appeal Board holic beverages.5 Following the USPTO’s refusal, about the bird . 1 (“TTAB”) ruled hands down against the Luxuria appealed to the TTAB. maker of a beverage bottle that gives After the parties submitted their respective Torrent Wars: Copyright T 1 consumers the finger. On September 19, 2011, appeal briefs, Luxuria filed a remand request for trolls, legitimate IP rights, the TTAB affirmed the United States Patent and consideration of additional evidence.6 The al- and the need for new Trademark Office’s (“USPTO”) refusal to register a legedly late-breaking evidence included articles rules vetting evidence trademark application for “a bottle in the shape suggesting that the middle finger is losing its and to amend the of a hand with the middle finger extended up- shock value;7 can be used to express something Copyright Act . 1 wards” on the grounds that the proposed mark is as benign as excitement over new shoes8 and “immoral” or “scandalous” within the meaning of is often used “in a cheeky and fun manner, be- Breaches of privacy 2 15 U.S.C. § 1052(a). tween friends.”9 The TTAB determined that Luxu- and data—New risks, On March 12, 2008, Luxuria, s.r.o. (“Luxuria”), a ria failed to demonstrate “good cause” for the re- new insurance . 7 Czech company, filed an application based on its quested remand, in part because it was not clear 3 international registration depicting a beverage that the material was not previously available.10 Intellectual bottle flashing “the universal signal of discon- ImprobabilitiesTM . 8 tent”4 for beers and other alcoholic and nonalco- Continued on page 2 Upcoming CLE programs . 10 Torrent Wars: Copyright trolls, legitimate IP (Notice to librarians: The following issues were published in Volume 52 of this news- rights, and the need for new rules vetting letter during the fiscal year ending June 30, 2013: September, No. 1; December, No. 2; evidence and to amend the Copyright Act March, No. 3; May, No. 4; June, No. 5). By Jeffrey Antonelli torrent1 is a technical name for a new way often took a few minutes (sometimes an hour or If you're getting of sharing electronic files across the inter- more). Millions became familiar with the prog- this newsletter Anet. When the internet was young, people ress bar watching it countdown from 0 to 100% by postal mail were encouraged to “surf the web” and explore a complete. Then came Napster, a new software new way of sharing information across vast dis- program that allowed faster distribution of those and would tances and in remarkable time. An e-mail from electronic files, opening up the ability to quickly prefer electronic the United States to Europe could receive a reply share files with thousands or millions of others. delivery, just in a matter of minutes. Electronic files contain- Today, a program called BitTorrent is spurring ing a photograph, a document, or even a short a new wave of internet file sharing, and along send an e-mail to movie clip could be downloaded with the click Ann Boucher at of a mouse. Using a 56k modem connection this Answers on page 3 [email protected] Intellectual Property | October, Vol. 53, No. 1 Trademark Trial and Appeal Board not flip about the bird Intellectual Property Continued from page 1 The TTAB allowed Luxuria to file a second SCHLONG crocheted fabric covers for glass Published at least four times per year. request for remand supported by a showing water pipes and male penises.20 It seems the Annual subscription rate for ISBA of good cause, specifically recommending TTAB may not quite have its finger on the members: $25. an affidavit regarding Luxuria’s efforts -dur pulse of contemporary attitudes towards To subscribe, visit www.isba.org ■ ing prosecution to obtain the additional evi- scandal and immorality. or call 217-525-1760 dence.11 Luxuria did file a second request for __________ remand, but did not lift a finger with respect Mr. Baron, <[email protected]>, is a partner and Ms. Harris, <NHarris@Mandell- Office to providing details about the steps it took Illinois Bar Center to search for the evidence during prosecu- Menkes.com>, is an associate with the law firm of Mandell Menkes LLC. © Mandell Menkes LLC, 2013 424 S. Second Street tion. Accordingly, the TTAB denied Luxuria’s Springfield, IL 62701 12 request for remand. 1. Phones: 217-525-1760 OR 800-252-8908 Luxuria filed its reply brief and attached www.isba.org the very same evidence it had sought to Editor make of record through its prior requests for Daniel Kegan remand.13 Luxuria crossed its fingers, hoping Kegan & Kegan, Ltd. the TTAB would turn a blind eye. However, 79 W. Monroe St., Ste. 1320 the TTAB caught Luxuria red-handed: “We 2. In re Luxuria s.r.o, 100 USPQ 2d 1146 (TTAB Chicago, IL 60603-4969 cannot help but note the convergence be- 2011). 3. According to the WIPO database for the Managing Editor/ tween applicant’s actions toward the Board Production 14 Madrid System for the International Registration and the message conveyed by its mark.” As of Marks, Luxuria’s mark (International Registra- Katie Underwood a result, the TTAB disregarded Luxuria’s entire tion No. 969241) is registered in Australia, Japan, [email protected] reply brief, including the attached evidence. Namibia, Norway and Zambia. The same mark Luxuria may have let an opportunity slip was refused registration in Belarus, China, Cuba, Intellectual Property through its fingers by failing to make its evi- Cypress, Morocco, Mozambique, Serbia, Russian Section Council Federation, Singapore, Turkey and the Ukraine. dence of record. The TTAB acknowledged Shannon AR Bond, Chair <http://www.wipo.int/romarin//detail.do?ID=0>. Joseph T. Nabor, Vice Chair that “[w]hether the mark consists of or com- 4. People v. Meyers, 352 Ill.App.3d 790, 794 (2nd Christopher J. McGeehan, Secretary prises scandalous matter must be deter- Dist. 2004). Charles L. Mudd, Jr., Ex-Officio 5. In re Luxuria, 100 USPQ 2d at 1146. mined from the standpoint of a substantial David M. Adler Yanling Jiang composite of the general public (although 6. In re Luxuria, 100 USPQ 2d at 1147. 7. TTAB Proceeding No. 79055664, Applicant’s Patrick Arnold, Jr. Daniel Kegan not necessarily a majority), and in the con- Request To Suspend and Remand Appeal For Con- Barbara B. Bressler Nicole E. Kopinski 15 text of contemporary attitudes.” Further- sideration of Additional Evidence, filed Nov. 30, Dennis F. Esford Adam BE Lied more, some evidence properly in the record 2009 at Ex. A (Martha Irvine, Is the Middle finger James G. Fahey Alan R. Singleton Deirdre A. Fox Eric R. Waltmire suggested that “the finger” “can be a strange, Losing Its Shock Value?, Columbian, Feb. 26, 2003). Eugene F. Friedman Alan M. Zulanas friendly greeting for some” and that the 8. Id. at Ex. B (Ira P. Robbins, Digitus Impudicus: The Middle Finger and the Law, 41 U.C. Davis L. Rev. Rachel McDermott, Staff Liaison gesture can be found in film, television and 1403, 1407-8 (2008)). 16 Bridget C. Duignan, Board Liaison political contexts. Luxuria may have laid 9. Id at p.3 and Ex. C. Joseph T. Nabor, CLE Coordinator its finger on critical evidence demonstrating 10. In re Luxuria, 100 USPQ 2d 1147. Deirdre A. Fox, CLE Coordinator 11. Id. the changing nature of the general public’s Lewis F. Matuszewich, CLE Committee Liaison perception of “the bird,” but its procedural 12. Id. 13. Id. misstep cooked the goose. 14. Id. at 1148, fn 3. The TTAB concluded that the gesture 15. Id. at 1148 (citing In re Boulevard Ent., Inc., depicted by Luxuria’s mark is the visual 334 F. 3d 1336 (Fed. Cir. 2003)). Disclaimer: This newsletter is for subscribers’ per- equivalent of the extremely offensive exple- 16. Id. at 1150. sonal use only; redistribution is prohibited. Copyright 17. Id at 1151. Illinois State Bar Association. Statements or expressions tive “f*** you,” and noted that “[j]ust as these of opinion appearing herein are those of the authors 18. U.S. Serial No. 85322631 words would be considered scandalous and and not necessarily those of the Association or Editors, 19. U.S. Serial No. 3621024 and likewise the publication of any advertisement is not immoral if used as a trademark. .the visual to be construed as an endorsement of the product or depiction of these words by the finger ges- service offered unless it is specifically stated in the ad 20. The mark consists of the that there is such approval or endorsement. ture shown in applicant’s mark is equally Articles are prepared as an educational service to 17 stylized text “BongSchlong protector.” The word scandalous and immoral.” The TTAB’s deci- members of ISBA. They should not be relied upon as a “protector” appears under the letters “Schlong” in sion to point the finger at Luxuria appears substitute for individual legal research. “BongSchlong.” The stem of the letter “B” is made The articles in this newsletter are not intended to be particularly arbitrary in light of USPTO re- from a phallus symbol. (U.S. Serial No. 85344882). used and may not be relied on for penalty avoidance. cords reflecting live registrations for FUK U Postmaster: Please send address changes to the 18 19 Illinois State Bar Association, 424 S.