Recent Trademark Cases

Summer/Fall 1999

Can the name of a political organization infringe the trademark rights of an owner of a registered mark? 

The Court of Appeals for the Second Circuit recently held that a political organization’s organizing activities is an infringement of a registered trademark.  United We Stand America, Inc. v. United We Stand, America New York, Inc., 128 F.3d 86 (2nd Cir. 1997).  Generally speaking, trademark rights vest with the use of a mark in “commercial” activities.  See, Lanham Act §43(a).  Viewed in this way, one may think that infringement of a trademark is only through the use a mark in commercial activities.  However, infringement of a registered trademark has no such limitation under Federal law.  See Lanham Act §32(1)(a).

Can a business get a trademark registration on the name or image of a famous customer? 

As a general matter it is possible to get a trademark registration on a person’s image, picture, or name.  However, the Trademark Trial and Appeal Board (TTAB) recently held that a restaurant business could not acquire a federal service mark registration on the picture of Ernest Hemingway, a former patron of that establishment.  The TTAB concluded that the use of Hemingway’s picture, without the permission of his heirs, violated §2(a) of the Lanham Act since patrons of the restaurant are likely to assume a connection with the Hemingway estate.  In re Sloppy Joe’s International Inc., 43 U.S.P.Q.2d 1350 (TTAB 1997).

What should be the applicable statute of limitations for seeking redress in a trademark infringement case before a Laches defense against such action may succeed? 

Recently the Court of Appeals for the Eleventh Circuit joined the Second and Sixth Circuits in applying the applicable State’s statute of limitations to delays in seeking legal redress, commonly referred to as “Laches”.  Kason Industries, Inc. v. Component Hardware Group, Inc., 120 F.3d 1199 (11th Cir. 1997).  Accordingly, when examining whether or not to proceed against an alleged trademark infringing party, trademark owners should have legal counsel closely examine the issue of the time available to them before risking a defense of Laches.