M ARCH 2009, VOL. 48, NO. 3
The newsletter of the ISBA’s Section on Intellectual Property Law
If you’re getting this
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By Steven L. Baron & Lindsay H. LaVine1; email@example.com, llavine@mandell-
menkes.com ; Mandell Menkes LLC, Chicago; © Mandell Menkes LLC, 2009 Boucher at
s President Obama’s star has the Ty Girlz line “Bubbly Britney” and
risen, so too has the world been “Precious Paris” are both blondes, and
introduced to his daughters, “Lucky Lindsay” is a redhead.4 These prevailing party11 and punitive if the con-
Malia and Sasha, ages 10 and seven, appear to be the likenesses of pop prin- duct was willful.12
who appeared on television during the cess Britney Spears, celebutante5 Paris The first hurdle for the Obamas would
Democratic convention and stood at Hilton, and actress Lindsay Lohan. be to show that Ty used Malia and Sasha’s
their parents’ sides on election night and The Obama girls, however, are not “identities.” Under the Act, “‘Identity’
inauguration day. Apparently unable pop princesses, do not have their own means any attribute of an individual that
to let the world’s love affair with the television show on the Disney channel serves to identify that individual to an
Obamas pass it by, Oak Brook-based and have not reached the age of major- ordinary, reasonable viewer or listener,
toymaker Ty, Inc., creator of the popular ity. They are in the public eye, probably including but not limited to (i) name, (ii)
Beanie Babies, released the two new- unwittingly, solely by virtue of their signature, (iii) photograph, (iv) image, (v)
est additions to its “Ty Girlz” line of father running for and being elected likeness, or (vi) voice.”13 Notwithstanding
dolls—“Marvelous Malia” and “Sweet President of the United States. Ty’s late-breaking suggestion that it
Sasha”—available for $9.99 per doll. Does the Obama family have legal selected the dolls’ names based solely on
Aimed at young girls, other Ty dolls have recourse for the use of Malia and Sasha’s their beauty, the timing of the introduc-
names such as: “Amazing Abby,”“Kool identities? The answer is most likely, yes. tion of the dolls, the combination of the
Kayla,”“Beautiful Brianna,” and “Sizzlin’ Most states, including Illinois, protect two names together and the fact that the
Sue.”2 Initially, it seemed, Ty was pleased against the unauthorized use of an indi- dolls have black skin coloring make Ty’s
to make the connection between the vidual’s identity for commercial purposes. intentions fairly transparent.
dolls and the First Daughters, but Ty later The so-called right of publicity extends to As to the second element of a claim
backtracked, saying that the names were all people, regardless of whether they are under the Act—absence of written
chosen because they were beautiful public figures or private citizens. consent—we assume that Ty neither
and did not have any connection to the At minimum, the Illinois Right of solicited nor procured the consent of
Obama girls.3 Publicity Act (the “Act”)6 would likely Malia and Sasha’s parents. As to the third
If “Sweet Sasha” and “Marvelous govern because Ty, Inc. is headquartered element, under the Act, “‘Commercial
Malia” are indeed modeled after the First in Oak Brook, Illinois and the Obamas purpose’ means the public use or holding
Daughters, this would not be the first maintain a residence in Chicago.7 The out of an individual’s identity (i) on or in
time Ty has used celebrities with unique Act requires that a party obtain written connection with the offering for sale or
names to sell its dolls. For example, in consent to use an individual’s identity sale of a product, merchandise, goods, or
for commercial purposes. To prevail on services; (ii) for purposes of advertising
a claim in Illinois, a plaintiff must prove or promoting products, merchandise,
IN THIS ISSUE that her identity was: (1) used without goods, or services; or (iii) for the purpose
her (or, in the case of a minor, her par- of fundraising.”14 While the Act does not
ents’) permission, (2) appropriated by the apply to use of an identity for “non-com-
defendant, and (3) used for commercial mercial purposes, including any news,
..... 1 purposes.8 Under the Act, the prevailing public affairs, or sports broadcast or
plaintiff may be entitled to an injunc- account, or any political campaign,”15 Ty,
tion,9 and actual damages and profits of Inc. would be hard-pressed to convince a
the defendant or $1,000, whichever is trier of fact that the sale of its “Marvelous
greater.10 In addition, the court may, in Malia” and “Sweet Sasha” dolls—at nearly
its discretion, award attorney fees to the $10 apiece—was for anything other than
a commercial purpose. Efforts by the Obama administration to famous.” See <http://www.urbandictionary.
Even though it appears that the police the First Family’s image would be com/define.php?term=celebutante>.
Obamas could state a viable claim time-consuming and expensive. Filing 6. Illinois Right of Publicity Act, 765 ILCS
against Ty, it is unlikely that they would litigation against every retailer of unau- 1075/1 et seq. (1999)
7. We focus on Illinois law but recognize
expend political capital on such a mis- thorized Obama goods would be a logis-
that many other states have right of publicity
sion. While there have been some law- tical and public relations nightmare. common law and statutory law that would
suits filed involving political figures suing Insofar as Ty is concerned, as this potentially apply.
for violation of their right of publicity, article is submitted to press, Ty’s Web 8. 765 ILCS 1075/30; see also Brown v. ACMI
a recent Westlaw search netted zero site states that its “Marvelous Malia” and Pop Division, 375 Ill. App. 3d 276, 873 N.E.2d
reported decisions. In 2004, Gov. Arnold “Sweet Sasha” dolls have been “retired.”19 954 (1st Dist. 2007).
Schwarzenegger sued an Ohio company Now, of course, the law of supply and 9. 756 ILCS 1075/50.
over a bobblehead likeness in a suit demand kicks in and industrious market- 10. 765 ILCS 1075/40.
and tie, posing with an assault rifle and ers on eBay are offering the dolls as a pair 11. 756 ILCS 1075/55.
ammunition. The governor’s legal team for as much as $169. But, there’s good 12. 765 ILCS 1075/40(b).
13. 765 ILCS 1075/5.
fired off a strongly worded cease and news: shipping is free.
desist letter,16 to which the company’s ___________ 15. 765 ILCS 1075/35(b)(2).
lawyers countered that it was parody 1. Mr. Baron is a partner and Ms. LaVine 16. See Cease and Desist Letter from
protected by the First Amendment.17 is an associate with the law firm of Mandell Lavely & Singer PC to Todd D. Bosley of
Several months later, the parties reached Menkes LLC. Ohio Discount Merchandise, Inc. available
a settlement whereby the company was 2. Available at <http://ty.com/newhome>. at <http://www.thesmokinggun.com/
able to manufacture modified bobble- 3. See Andrew Hermann, Chi. Sun-Times archive/0430042arnold1.html> (Apr. 29, 2004).
head dolls (sans guns) in exchange for a available at: <http://www.suntimes.com/ 17. John Broder, Schwarzenegger Files Suit
news/politics/obama/1393399,CST-NWS- Against Bobblehead Maker, N.Y. Times, May 18,
portion of the profits being donated to
dolls23.article>, (Jan. 23, 2009); and Meghan 2004.
Schwarzenegger’s charity.18 Streit, Crain’s Chi. Bus available at: <http:// 18. Lynda Gledhill, Governor’s Bobblehead
No doubt, there is much public inter- www.chicagobusiness.com/cgi-bin/news. Says Farewell to Arms, San Francisco Chronicle,
est surrounding the First Family. Gauging pl?id=32717>, (Jan. 22, 2009). Aug. 3, 2004 at A-2.
from the unprecedented interest in the 4. See <http://ty-girlz.ty.com/> 19. <http://ty-girlz.ty.com>
campaign, inauguration, and all things 5. The Urban Dictionary defines celebu-
Obama, interest will continue to build. tante as “a socialite who is famous for being
The consequences of committing fraud in trademark filings
By Richard B. Biagi and Jeremy M. Roe; Neal & McDevitt, LLC, Northfield, IL; Copyright © 2008 Neal & McDevitt, LLC. All Rights Reserved.*
ne area of growing interest clear—if an applicant commits fraud by tion. Fraud is also a defense to claims
in trademark law today is the providing a misstatement of goods or of trademark infringement and unfair
Trademark Trial and Appeal services use in a single-class trademark competition, pursuant to Section 33(b)
Board’s (“TTAB” or “Board”) position application, the resulting registration of the Lanham Act, 15 U.S.C. § 1115(b).
toward the commission of fraud on the may be cancelled in its entirety upon The issue of fraud on the PTO gained
U.S. Patent and Trademark Office (“PTO”) challenge. For a multi-class application, particular prominence after the TTAB’s
in trademark applications, statements of fraud may potentially result in the can- decision in Medinol Ltd. v. Neuro Vasx,
continued use, and renewals. Generally, cellation of the mark within the interna- Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003).
fraud may be committed when a trade- tional class of nonuse or misstated use.1 Prior to Medinol, the TTAB required a
mark applicant alleges use of its mark While a finding of fraud does not neces- showing of bad faith on the part of the
on a variety of goods and services, but sarily eliminate a mark owner’s common applicant to justify a finding of fraud—
in fact is not actually using the mark on law rights, the owner does lose the ben- and thus possible cancellation—of a
each and every of the goods and services efits of a federal registration. trademark registration. But in Medinol,
listed in the application. Fraud may be the Board stated that specific intent to
alleged in an opposition or cancellation Origins of the Fraud on the PTO defraud the PTO is not necessary; rather,
proceeding and is actionable even if an Doctrine the standard is whether the applicant
innocent error. Section 14 of the Lanham Act, knew or should have known that it was
While the fraud doctrine has been 15 U.S.C. § 1064, provides a series of making false, material representations of
in place for many years, the TTAB case- grounds upon which a registered mark fact in connection with the application.
law continues to evolve. Indeed, under may be cancelled, including committing For instance, in Medinol, the trademark
today’s standard the consequences are fraud in procuring a federal registra- owner signed a Statement of Use for
2 Vol. 48, No. 3, March 2009
its NEUROVASX mark on catheters and its trademark THE SIGN (used with a vari-
stents, but the trademark owner did not
actually use the trademark on catheters.
ety of entertainment services) on some
of the services in its application constitut-
The Board cancelled the trademark in its ed fraud. In dicta, the Board hinted that
Published at least four times per year.
entirety, finding that the owner knew or a misstatement of goods and services,
should have known that its Statement of amended prior to publication, would not Annual subscription rate for ISBA
Use was false. amount to fraud. members: $20.
After Medinol, there was uncertainty In University Games Corp. v. 20Q.net, To subscribe, visit www.isba.org or call
over what exactly constituted fraud. Inc., Opp. Nos. 91168142, 91170668 (217)525-1760
In addition to false statements of use (T.T.A.B. 2008), the Board held that an
involving an application, fraud may also applicant is entitled to a “rebuttable Office
be committed by submitting a false presumption” that there was no willful Illinois Bar Center
statement of continued use (i.e., Section intent to deceive the PTO if the applicant 424 S. 2nd Street
8 affidavit) or a misstatement that a amends its application prior to publica- Springfield, IL 62701
trademark specimen was actually used in tion. In University Games, the registrant Phones: (217) 525-1760 OR 800-252-8908
interstate commerce. Further, fraud may initially applied for the trademark
Web site: www.isba.org
also be found in Section 1(b) intent-to- TWENTY QUESTIONS for board games,
use applications. The TTAB has held that T-shirts, and promotional materials. After Editor
an applicant must have, at the time of the Examining Attorney determined that Daniel Kegan
filing, a bona fide intent to use its trade- the goods description was improper, 79 W. Monroe St., Ste. 1320
mark on all of the goods and services the registrant deleted references to Chicago, IL 60603-4969
within its application. T-shirts, paper products, and videos, and Associate Editor
its application was registered. During a Reginald J. Hill
Recent Interpretations cancellation proceeding, the applicant 330 N. Wabash
In Sierra Sunrise Vineyards v. Montelvini for the trademark 20Q for entertainment One IBM Plaza
S.p.A., Cancellation No. 92048154 (T.T.A.B. services claimed that the registrant had Chicago, IL 60611
2008), the TTAB cancelled the registration committed fraud by initially claiming
for MONTELVINI VENEGAZZU (used with use of the TWENTY QUESTIONS mark
on T-shirts and promotional materials. Katie Underwood
wines, spirits and liqueurs) because the
The Board disagreed, finding that the firstname.lastname@example.org
trademark owner fraudulently claimed
continued use on liqueurs in its Section applicant failed to rebut the presumption Intellectual Property Section Council
8 declaration of use. The Board’s decision that the registrant had no willful intent Joseph T. Nabor, Chair
in Sierra Sunrise underscores the key fact because it amended its goods descrip- Kristin L. Lingren, Vice-Chair
that reliance on a foreign application tion prior to publication. Dale R. Kurth, Secretary
for a U.S. registration requires use in U.S. Eugene F. Friedman, Ex-Officio
(interstate) commerce on each and every Best Practices and Kelley M. Gilbert
good and service in the application. Recommendations Theresa V. Johnson
In Herbaceuticals, Inc. v. Xel Given the current enforcement Marron A. Mahoney
Herbaceuticals, Inc., 86 U.S.P.Q.2d 1572 practices of the Patent and Trademark Brian R. Michalek
(T.T.A.B. 2008), the Board cancelled Office, avoiding fraudulent statements in Amir I. Mohabbat
four registrations for the mark XEL trademark filings should be a top priority Charles L. Mudd
HERBACEUTICALS, each of which was for mark owners and trademark practitio- Alan R. Singleton
a single-class application for a variety ners. Indeed, there are several practices Eric R. Waltmire
of herbal remedy goods. Finding that that trademark owners and practitioners
the mark owner was not in fact using Carl R. Draper, Board Liaison
can implement to lessen the possibility
the mark on each and every good as Lynne Davis, Staff Liaison
of committing fraud.
alleged in its statements of use, the Steven L. Baron, CLE Coordinator
For the individual applicant, such as Lisa M. Nyuli, CLE Liaison
Board dismissed the mark owner’s plea to a small business filing on its own behalf,
partially cancel the registrations only for it is imperative that the initial trademark Disclaimer: This newsletter is for subscribers’ personal
use only; redistribution is prohibited. Copyright Illinois
the goods of nonuse. Instead, the Board application only cover those goods and State Bar Association. Statements or expressions of
stated that “if fraud can be shown in the services upon which the proposed mark opinion appearing herein are those of the authors and
procurement of a registration, the regis- is actually being used, or alternatively not necessarily those of the Association or Editors, and
tration is void in the international class or likewise the publication of any advertisement is not to
upon which there is a bona fide intention be construed as an endorsement of the product or ser-
classes in which fraud based on nonuse to use the mark. A bona fide intention vice offered unless it is specifically stated in the ad that
has been committed.” should be more than a mere business there is such approval or endorsement.
Also, until recently, the TTAB remained plan—it should entail actual efforts to Articles are prepared as an educational service to
silent regarding whether a correcting begin use of the mark on those goods members of ISBA. They should not be relied upon as a
substitute for individual legal research.
amendment to a description of goods or services, or at the very least, concrete
The articles in this newsletter are not intended to be
and services prior to publication avoided plans to commence use in the near used and may not be relied on for penalty avoidance.
fraud. In Hurley International LLC v. Volta, future. Further, it is best practice that Postmaster: Please send address changes to the Illinois
82 U.S.P.Q.2d 1339 (T.T.A.B. 2007), the the signing party for the application State Bar Association, 424 S. 2nd St., Springfield, IL
Board held that an applicant’s nonuse of has personal knowledge of actual use. 62701-1779.
Vol. 48, No. 3, March 2009 3
Willful blindness by the signing party is ing registration, the owner must renew applicant’s proposed mark, or instituting
no defense to fraud. As stated in Medinol, its mark for an additional ten years by a cancellation proceeding against a
the appropriate standard is whether the filing a Section 9 Renewal Application subsisting registration, the trademark
applicant knew or should have known together with a Section 8 Affidavit of owner and its counsel must first consider
the statement was false. Continued use. In each of these contexts, whether its own mark is vulnerable to
If the applicant is a general practi- the attorney should actively question the cancellation based upon a fraudulent
tioner or in-house counsel, she should client to ensure that use is continuing description of goods and services.
request some level of proof from the on all goods and services. In the event __________
client that it is actually using the mark that use ceases on one or more of the *Richard B. Biagi, rbiagi@nealmcdevitt.
or has a bona fide intention to use it on goods or services, it is imperative that com, and Jeremy M. Roe, jroe@nealmcdevitt.
every good and service. Also, while it those goods/services be deleted from com, are intellectual property and marketing
may be more costly initially, the attor- the Affidavit of Continued Use in order law attorneys at Neal & McDevitt, LLC, www.
ney may recommend filing a separate to avoid fraud and subjecting the entire nealmcdevitt.com. The views and opinions
application for each international class of registration to potential cancellation. expressed here are solely those of the authors.
goods and services to simplify the appli- For any type of trademark applicant,
1. While this article was in process, the
cation process and minimize the risk of if an error in the statements regarding TTAB decided G&W Laboratories, Inc. v G W
committing fraud. actual use or intended use becomes Pharma Ltd., Opp. No. 91169571 (T.T.A.B. Jan.
The trademark attorney should take evident early in the application process 29, 2009) (precedential), holding that “each
an active role in the continuation and (prior to publication of the application), class of goods or services in a multiple class
renewal of the client’s trademark registra- the applicant should promptly amend its registration must be considered separately
tions. Between the fifth and sixth year goods and services description to avoid when reviewing the issue of fraud, and judg-
following registration, the mark owner fraud. ment on the ground of fraud as to one class
must submit a Section 8 affidavit stat- Finally, if a trademark owner is con- does not in itself require cancellation of all
ing continued use on every good and sidering pursuing litigation for trade- classes in a registration.”
service. At each ten year point follow- mark infringement, opposing another
Vol. 48 No. 3
Permit No. 820
Spring eld, Ill.
PAID Spring eld, Illinois 62701-1779
U.S. POSTAGE Illinois Bar Center
Non-Pro t Org. Intellectual Property