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5 Trends to Watch: 2023 Trademark & Brand Management

  1. The Rogers Test Finally Gets SCOTUS Review – In 1989, the Second Circuit created the “Rogers test” to evaluate whether the use of a third-party trademark within a creative work’s title was infringing. The test, under which expressive rights generally trump intellectual property ownership rights, simply asks whether (i) the use of the third-party trademark has some artistic relevance to the work and (ii) the title expressly misleads the public. The Rogers test has since been used, in substantially-similar forms, by various courts to evaluate the larger question of whether the use of third-party trademarks and trademarked goods within expressive works is infringing and is now applied to everything from NFTs to sneakers. But the Rogers test has never been thoroughly vetted by the U.S. Supreme Court. In 2023, SCOTUS will evaluate whether the First Amendment’s creative expression rights under the Rogers test apply to a whimsical dog toy intentionally mimicking a well-known whiskey bottle. The Supreme Court’s adoption, modification, or rejection of the Rogers test will have significant ramifications for brand owners, parodists, and artists.

  2. The Lanham Act Travels Abroad, But to What Extent? – The territoriality of trademark rights is a fundamental tenet of trademark law. In fact, there are nearly 300 trademark offices around the world that issue trademark registrations, each primarily applicable within a limited geographic territory. Nevertheless, in 1952, the U.S. Supreme Court held that a U.S. plaintiff could enforce the Lanham Act against a U.S.-based defendant’s infringing acts occurring outside the U.S. Subsequently, several circuit courts held that a U.S. plaintiff could enforce the Lanham Act against a non-U.S. defendant’s infringing acts occurring outside the U.S. if the infringing act affected U.S. commerce and extraterritorial application of the Lanham Act did not create a conflict with trademark rights established under foreign law. The threshold for affecting U.S. commerce varied from “some” effect to “substantial” effect. In perhaps the broadest extraterritorial application of the Lanham Act yet, the Tenth Circuit affirmed a district court’s injunctive relief (albeit narrowing the geographic scope from worldwide to the countries in which the plaintiff markets or sells its remote controls) and $115 million jury award of damages against a U.S. company’s German distributor-turned-competitor. The Tenth Circuit affirmed and found that the infringing behavior substantially affected U.S. commerce because the U.S. plaintiff “lost revenues [that] would have flowed into the U.S. economy but for Defendants’ conduct infringing a U.S. trademark.” In 2023, SCOTUS will review the 10th Circuit’s decision and the extent to which the Lanham Act should apply to foreign sales that never reach the U.S. or confuse U.S. consumers.

  3. USPTO Processing Times – Since the beginning of 2020, the average amount of time it takes for the U.S. Trademark Office to complete its initial review of a trademark application has grown from under three months to over eight months. The near-tripling of the time period between application and review often forces brand owners to accept greater risk when launching a new brand or engaging in global expansion of its trademark portfolio through the Madrid Protocol. The USPTO’s target remains 4.5 months, and the USPTO is continuously hiring new examiners to try to shorten the “first action pendency” period. In 2023, brand owners will be closely watching both whether the USPTO can meet its target and, if so, whether the USPTO’s efforts to meet its target have any unintended consequences.

  4. Are All Licensors Legally Entitled to a Seat at the Defendant’s Table? – Under a typical trademark license agreement, a brand owner (as licensor) gives a third party (as licensee) the legal right to use its trademark, often in exchange for a fee or royalty. Occasionally, a third party will assert that the licensed mark infringes the third party’s prior trademark rights. And, in most cases, such a third-party plaintiff would cast a wide net and name both the licensor and licensee as defendants. A recent district court dismissal decision, and its affirmance by the Fifth Circuit, raised the question of whether the third-party plaintiff is required to name the licensor as a defendant under the Federal Rules of Civil Procedure’s required joinder of parties rule. This battle of the licensor’s common-law and state trademark registrations versus the third-party plaintiff’s federal registration is important because licensors usually have a greater stake than licensees in litigation affecting the licensed mark. And although this imbalance of interests is typically mitigated by indemnification provisions and other contractual rights of the licensor, recognition of the licensor as a required party would be a reassuring failsafe to licensors. The plaintiff-turned-petitioner has asked the U.S. Supreme Court to grant certiorari to decide whether licensors must be named as co-defendants in enforcement actions involving a third party’s infringement claim against a licensee’s use of a licensed trademark.

  5. Whither the Infamous U.S. Cohiba Cigar? – Cuban Cohibas are some of the most popular cigars in the world, but they are largely absent from the U.S. market because of the Cuban trade embargo. The only Cohiba-branded cigars legally available in the U.S. – so-called U.S. Cohiba cigars – are produced in the Dominican Republic and sold by General Cigar, whose predecessor-in-interest registered the Cohiba trademark for cigars with the U.S. Trademark Office in 1981. Since 1997, the Cuban state tobacco company, Cubatabaco, has been trying to cancel General Cigar’s Cohiba trademark registrations. And, after over 25 years of litigation before the U.S. Trademark Office’s Trademark Trial and Appeal Board (and a few detours to federal court), on December 20, 2022, the Board canceled General Cigar’s federal registrations for Cohiba under the Pan American Convention (to which both the U.S. and Cuba are parties), finding that (i) Cubatabaco registered and used the Cohiba mark in Cuba well before General Cigar applied to register the Cohiba mark in the U.S., and (ii) General Cigar was aware of Cubatabaco’s use of the Cohiba brand in Cuba before applying to register the Cohiba mark in the U.S. Trademark practitioners will be keeping an eye on whether General Cigar appeals the Board’s cancellation decision, the effect of the cancellation decision on General Cigar’s continued sale of U.S. Cohiba cigars, and the effect of the cancellation decision on Cubatabaco and its sister companies’ attempts to enforce trademark rights in the U.S. notwithstanding the Cuban embargo and their inability to use their own trademarks in the U.S.

About the Authors

Stephen Baird® is a member of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group, and oversees the group’s strategic business development initiatives. He protects companies’ most important brands and other intellectual property assets by designing efficient, creative, tailored legal strategies to advance their most important business objectives.

Joel Feldman is Co-Chair of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group and an adjunct professor of law in trademarks. He creates bespoke brand management strategies for some of the world’s famous brands and zealously protects those brands against wrongdoers.

Susan Heller is Co-Chair of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group. She helps her clients monetize and optimize their critical IP assets through strategic and creative positioning, management, and enforcement of their worldwide trademark, copyright and domain name portfolios and extensive collateral product licensing.

Candice E. Kim is Vice-Chair of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group and oversees the group’s thought leadership initiatives. She counsels clients on trademark prosecution, licensing, enforcement, and TTAB opposition and cancellation proceedings, with an emphasis on global brand expansion and management through strategic trademark filing, protection, and enforcement programs.