USA – TEXAS Trends and Developments Contributed by: John Flaim and Dyan House, Baker McKenzie
II) Federal Circuit Elster appealed the Board’s refusal to register the mark to the Court of Appeals for the Fed - eral Circuit. The Federal Circuit sided with Elster, reversing the Board’s holding on the grounds that the names clause violated the First Amend - ment. III) Supreme Court The USPTO appealed to the Supreme Court who then held, in a unanimous decision, that the USPTO’s refusal to register the mark was not a violation of the applicant’s First Amend - ment rights. The Elster case was the first time the Supreme Court considered the constitu - tionality of a content-based, viewpoint-neutral trade mark restriction. Justice Thomas went through a history of names in trade mark law. The Court ultimately concluded that the names clause, which was borne out of the common law tradition, supports the restriction of the use of another person’s name in a trade mark. Thus, the Court held, the names clause does not violate the First Amendment as it is viewpoint-neutral. IV) Outcome and discussion of additional issues The Supreme Court reversed the decision of the Federal Circuit who then issued an Order vacat - ing its prior opinion and judgment and affirming the decision of the Trademark Trial and Appeal Board. On 16 September 2024, the Federal Cir - cuit issued the formal mandate concluding the proceedings and resulting in the abandonment of Elster’s application. The Lanham Act’s names clause, 15 U.S.C. Sec - tion 1052(c), precludes the registration of a trade mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living
individual except by his written consent.” There are two primary goals underlying this prohibition: (i) to protect the rights of privacy and public - ity that a living person has in the designations that identify them; and (ii) to protect against source deception. The names clause can apply to a mark involving a surname if the individual is known by the surname alone. In the Elster case, the Trademark Trial and Appeal Board found that Trump standing on its own is recognised as a reference to President Donald Trump. Moreover, Elster himself confirmed that the use of the name TRUMP in the mark referred to President Trump. VIP Products LLC vs Jack Daniel’s Properties Incorporated History and summary of case I) Arizona District Court VIP Products sold a toy for dogs that mimicked the design of a Jack Daniel’s whiskey bottle. VIP Products called this product Bad Spaniels. Jack Daniel’s took issue with the Bad Spaniels products on the basis of trade mark infringement and dilution. Jack Daniel’s demanded that VIP Products stop selling their Bad Spaniels prod - ucts. They refused to do so and filed an action in the Arizona District Court seeking a declaratory judgment that their Bad Spaniels product did not infringe or dilute Jack Daniel’s marks. Jack Dan - iel’s counterclaimed alleging trade mark infringe - ment and dilution. VIP Products argued that its Bad Spaniels toy was a parody and therefore was protected under the First Amendment. The Court denied VIP Products’ motion on summary judgment and rejected VIP Products’ fair use defences. The Court found that Jack Daniel’s trade dress and whiskey bottle design were dis - tinctive and non-functional, and thus were enti - tled to trade mark protection. Following a bench trial, the Court found in favour of Jack Daniel’s both as to infringement and tarnishment of its
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