The owner of the PLAYDOM trademark learned that trademark use and “website under construction” don’t play nice together. %CUT% David Couture got a registered trademark in 2008 for PLAYDOM. His specimen of use was a website page that described his company’s services. But it also said “Website under construction”. Years later, another company tried to register PLAYDOM. The applicant, Playdom Inc. (later acquired by Disney Co.) was refused registration based upon a likelihood of confusion with Couture’s trademark. Playdom Inc. brought a cancellation proceeding and won. The Federal Circuit Court affirmed the TTAB cancellation holding that the website advertised Couture’s readiness to perform services but he didn’t render any services until 2 years later. This decision has come under fire because prior case law saw “offering services” to be the same as “rendering services”. Critics also argue that the Lanham Act (15 U.S.C. §1053) establishes a different standard for use for services; a standard that Couture met. So the fact that Couture was offering his services should have been enough.

David Bowie, a musical and cultural icon known for pushing boundaries, passed away on January 10, 2016. Did you know that he also pushed the boundaries on monetizing Intellectual Property? %CUT% In 1997, Bowie was looking for a new revenue stream. With the help of investment banker, David Pullman, Bowie issued asset-based securities for current and future revenues from 25 of his albums recorded before 1990. And thus the term ‘Bowie Bonds” came into being. Bowie used some of the money he raised to buy back songs from his former manager. Although revenue from the bonds suffered some bumps in the road acclimatizing to digital downloads, Bowie Bonds are still considered a success. So successful that other famous musicians, such as James Brown and Iron Maiden, also used the Bowie Bond model to raise revenue.

Thanks to The Slants, the Washington Redskins’ trademark may live to fight another day. In June 2014, the Washington Redskins lost the trademark of their name because the term “redskins” was offensive. The Slants, an all Asian American dance rock band, tried to register their name as a trademark. The USPTO refused registration on the basis that the mark was “offensive” and “disparaging”. The Slants appealed the ruling. The Federal Circuit Court overturned the ruling. The court acknowledged that disparaging marks can be considered hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech. According to the court, the government (in the form of the USPTO), cannot refuse to register disparaging marks because it disapproves of the expressive message conveyed by the marks. That means, the Washington Redskins may have a good shot at getting their trademark reinstated.

Caterpillar, Inc. is dealing with a $74 million trade secret verdict for misappropriating a supplier’s trade secrets. The supplier, Miller UK Ltd., had an agreement with Caterpillar to sell components. Miller brought suit against Caterpillar alleging that Caterpillar used its power as Miller’s largest customer to force disclosure of Miller’s trade secrets. Apparently, Caterpillar’s strategy was to cancel Miller’s contract and then produce its own components without having to pay Miller. The jury found in favor of Miller.