Monthly Archives: November 2021

Amateur Se

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On November 8, 2021, Al McZeal filed in the Central District of California (2:21-cv-07093-SVW-RAO), a 134 page complaint in with 13 counts against Amazon, Best Buy, Orion Labs, its lawyer and his law firm, and 10,000 unnamed Does, alleging infringement of McZeal’s registered trademark on (Reg. No. 5303249) on SMART WALKIE TALKIE, for smart walkie talkies.

Orion’s lawyers’ offense is raising the descriptiveness of McZeal’s trademark, both as an attack on the validity of McZeal’s registration, and as a defense (15 USC 1115(b)(4) to the descriptive use of the term. Mr. McZeal mentions “fraud” at least 222 times throughout his filing. It does seem that the lawyers’ position (thoughtfully attached to the Complaint” is at a minimum is well-reasoned, and seems likely correct. A member of the bar should be able to assert a reasonable defenses, with fear of being sued for fraud.

Mr. McZeal is proceeding pro se, but the Complaint (Paragraph 51) states that plaintiff “intends to file a motion for substitution of counsel in order to substitute a competent law firm to protect the intellectual property rights and other rights of the plaintiff.” But after his treatment of defendant’s counsel, prospective plaintiff’s counsel should proceed with caution.

Mr. McZeal, for his own part, makes some questionable statements, not the least of which is swearing to the USPTO that his mark was in use on “INTERSTELLAR COMMUNICATIONS SERVICES” in order to get his registration. Mr. McZeal’s complaint is an interesting read, and will leave a definite feeling that we are all better off when licensed attorneys conduct litigation.

Any Third Party Use is Relevant to Whether a Claimant Made Exclusive Use of a Mark

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In Galperdi, Inc., v. Galperti S.R.L., [2021-1011] (November 12, 2021), the Federal Circuit vacated and remanded the TTAB’s finding no falsity of Galperti S.R.L.’s exclusive use from 2002 to 2007, the Board committed two legal
errors: requiring Galperti Inc. to establish its own proprietary rights to the mark and disregarding third party use of the mark.

Galperti S.r.l., to support its application to register GALPERTI, told the PTO that, in the five preceding years, its use of the mark was “substantially exclusive.” In response ,the USPTO issued Reg. No. 3411812. Galperti Inc. petitioned the PTO to cancel the registration, arguing, among other things, that the registration was obtained by fraud because Galperti S.r.l. statement of substantially exclusive use was false and, indeed, intentionally so. When the PTO dismissed the cancellation petition, the Federal Circuit affirmed as to the non-fraud issues but vacated the Board’s rejection of the fraud charge and remanded for further consideration of that charge. On remand the PTAB again dismissed the cancellation proceeding.

GALPERTI is “primarily merely a surname” and, so, without more, could not be registered. Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4). Galperti-S.r.l. obtained a registration of GALPERTI on the Principal Register under Section 2(f) alleging “substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” 15 U.S.C. § 1052(f).

While in the prior appeal. the Federal Circuit approved the Board’s conclusion that Galperti S.r.l.’s mere “‘knowledge of other players in the marketplace’” was insufficient to make its statement to the PTO “‘per se false,’” id., it held that the Board had erred in stopping at that point, because the absence of “per se” falsity does not imply the absence of falsity. What was needed was an inquiry, on remand, into whether the uses to which Galperti Inc. pointed as showing the falsity of Galperti S.r.l.’s representation to the PTO were significant or, instead, inconsequential.

Galperti Inc. contended on appeal that the Board’s analysis of falsity includes two legally incorrect premises. One is that
Galperti Inc. had to have trademark-protected rights in its use of the mark at issue (in 2002–2007)—specifically,
secondary meaning (i.e., acquired distinctiveness)—in order for that use to count as significant in assessing the falsity of Galperti-Italy’s assertion of “substantially exclusive use.” The other is that uses by third parties do not count
in the substantially-exclusive-use assessment unless the third parties were in privity with Galperti Inc. The Federal Circuit agreed with Galperti Inc. on both counts.

Third party use does not have to be as a trademark to impact the determination of whether a mark has become distinctive of an applicant. The Federal Circuit said that a significant amount of marketplace use of a term not as a source identifier for those users still tends to undermine an applicant’s assertion that its own use has been substantially exclusive so as to create a prima facie case that the term has come to acquire distinctiveness as a source identifier for the applicant.

Further third party use is not limited to third parties who are in privity with the petitioner or opposer. Thus, the Federal Circuit said that the Board also erred in its related requirement that Galperti Inc. had to demonstrate privity with other users of the mark to rely on those uses to show falsity of Galperti S.r.l.’s claim of substantially exclusive use. “Any” use may frustrate a claim for substantially exclusive use, without limiting that use to the party challenging registration.

Indians Acting Like Cowboys

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An interesting suit was filed on October 27 in the Norther District of Ohio by the Guardians Roller Derby team against the Cleveland Guardians Baseball Company f/k/a the Cleveland Indians. The Cleveland Indians after 105 years decided to change their name the Cleveland Guardians, and if the Complaint is to be believed, did so with full knowledge of another Cleveland sports team already using the name, the Cleveland Guardians roller derby team.

As the Complaint (Para. 20) alleges,”it is inconceivable that an organization worth more than $1B and estimated to have annual revenues of $290M+ would not at least have performed a Google search for “Cleveland Guardians” before settling on the name.”

The Complaint lays out the history of events:

While the strategy of filing in a remote jurisdiction to hide interest in a mark from prying eyes is a common one, employed by many large companies, including Apple, and not as sinister as the Complaint implies, the Indians conduct in the face of a party with superior rights seems rather cavalier — wait, no, that’s a different Cleveland team.

The Complaint alleged that “Two sports teams in the same city cannot have identical names. Major League Baseball would never permit “Chicago Cubs” lacrosse or “New York Yankees” rugby teams to operate alongside its storied baseball clubs and rightly so. Confusion would otherwise result. Imagine seeing a “New York Yankees” shirt for sale and buying it. Which team did you just support?” There are certainly problems in such a scenario, although it worked for years in St. Louis, which had both a Cardinals baseball team and a Cardinals football team. This was a special circumstance where similarly named teams, with long histories, found themselves in the same city.

No doubt this will be settled, and there will plenty of branded baseball merchandise to buy in the Forest City, and the city’s newly renamed roller derby team will be the best funded roller derby team in the country. The lesson, if there is one, is to not fall in love with a new name until after it is properly cleared.