Written by: Karl Braun, Esq. and Larry Cheng The United States Court of Appeals for the Ninth Circuit recently considered whether the Google name should continue to receive trademark protection. Specifically, the Ninth Circuit examined whether the term “google” had become generic. In 2012, Chris Gillespie acquired 763 domain names that included the term “google.” For example, Gillespie registered for domain names such as “googledisney.com,” “googlebarackobama.net,” and “googlenewtvs.com.” Google, Inc. (“Google”) opposed Gillespie’s registrations and filed a complaint with the National Arbitration Forum (“NAF”). The NAF agreed with Google’s argument that Gillespie’s domain names were confusingly similar to the Google trademark. Accordingly, the domain names were transferred to Google. Gillespie, joined by David Elliott (“the challengers”), filed an action in the Arizona District Court seeking cancellation of the Google trademark pursuant to the Lanham Act, which allows cancellation of a registered trademark if it is primarily understood as a “generic…       Read More

Written by: Sam Crochet, Esq. The Court of Appeals for the Federal Circuit recently reviewed the constitutionality of the Trademark Trial and Appeal Board’s (TTAB) holding that a mark was unregistrable due to its “disparaging” nature. “The Slants,” an Asian-American musical band, attempted to register its name with the US Patent and Trademark Office. After the examining attorney and TTABrefused to register the mark under 15 USCA §1052(a), the Court of Appeals held prohibition on the registration of disparaging trademarks “significantly chills private speech” and that this instancewas not an acceptable regulation of commercial speech. The court used this rational to find, by a 9-3 vote, that barring registration of disparaging marks violates trademark applicants’ free speech rights.[1] It should be noted the Court of Appeals’ decision is not binding on numerous other federal courts with pending matters.Following years of heavy scrutiny and media fall out, the NFL’s Washington Redskins…       Read More