The Campbell Soup Company (“Campbell’s”) can now tell its competitors, “No CHUNKY soup for you!”  Earlier this month, Campbell’s earned the United States Patent and Trademark Office’s (“USPTO”) approval to trademark the word “CHUNKY.”  Campbell’s has long used the word to describe its more ingredient-filled soups, but now the Camden, New Jersey-based soup giant can officially add CHUNKY to its extensive list of registered trademarks.  Not only is it a major windfall for a soup company to own the rights to a word often used to describe the texture and look of soup, but it is a rare accomplishment, and Campbell’s has pop culture, its lengthy relationship with the National Football League (“NFL”), and years of successful advertising to thank.

Generally, marks considered merely descriptive of the goods for which they are associated cannot be protected until these marks achieve secondary meaning.  A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.   Secondary meaning is accomplished when consumers have come to identify a mark with a specific product over time.  While CHUNKY could be a word used to describe the hodgepodge of extra vegetables, pasta, and meat stuffed into some of Campbell’s soups, Campbell’s successfully demonstrated secondary meaning by citing to “massive unsolicited media coverage” of CHUNKY in its trademark application.  Over the years, CHUNKY has been parodied on Saturday Night Live, Family Guy, The Simpsons, and The Daily Show.  Campbell’s also reportedly spent $1 billion in advertising since 1988, including its NFL sponsorship, and put out commercials featuring NFL players like Reggie White and Donovan McNabb eating the CHUNKY line of Campbell’s soup.    Rapper Ghostface Killah referenced the soup in his lyrics to “Murda Goons” (“Leave your brain all chunky like I’m advertising soup from Campbell’s”) and Pulitzer-Prize winning author Colson Whitehead said in his novel, Sag Harbor, “We were Campbell’s men, had been for years, and nothing took the edge off like the talent in their boutique Chunky line…”  Campbell’s also presented a survey showing that 75 percent of consumers associated the word “chunky” with the soup.  In the end, the USPTO agreed that CHUNKY had achieved secondary meaning in the eyes of consumers, and granted Campbell’s the trademark rights.

But what does this mean for other companies looking to possibly use the word chunky to describe food products?  Campbell’s has reportedly said that the word will be limited in connection with soups – not other food products.  For example, a food product called “Chunky Muffins” would not violate Campbell’s trademark.  Additionally, Campbell’s has said that “non-prominent, descriptive” uses of the word, such as “chunky-style,” that are not a trademark, will not be a violation.  Finally, trademark applicants can learn a thing or two from Campbell’s CHUNKY victory.  Trademark applicants should be reminded of the importance of making meaningful and memorable connections with consumers through multiple avenues for not just products, but words used to describe products.  For it is especially through unique and standout marketing that a mark can achieve the secondary meaning necessary to secure an even stronger position in the marketplace.

The United States Patent and Trademark Office (“USPTO”) posted an update on its official website yesterday with information about its activities during the shutdown. Up until this point, the USPTO has been operating through the use of prior-year fee collections. The USPTO now expects that patent operations will continue to function normally until “at least the second week in February”, while trademark operations will continue normally until “at least mid-April 2019”. Applicants and registrants should plan to comply with all outstanding deadlines in pending matters – even if the USPTO is forced to limit activities as a result of the shutdown. While the expectation is that the USPTO website and electronic filing system will continue to function normally and will accept submissions after this timeframe, applicants and registrants should be prepared to make other filing arrangements if necessary.

Last week, the United States Patent and Trademark Office (“USPTO”) in Lee v. Simon Shiao Tam, asked the United States Supreme Court to reverse the decision of the United States Federal Circuit, which held that trademark law’s ban on “disparaging” trademark registrations violates the First Amendment.  On December 22, 2015, we discussed the underlying decision of the Federal Circuit in Tam.  The Tam decision was expected to have broad implications, especially in light of a contradictory decision by the United States District Court for the Eastern District of Virginia, which affirmed the USPTO’s cancellation of six “REDSKINS” trademark registrations owned by the Washington Redskins football franchise, Pro-Football, Inc. (“PFI”).  The District Court held that the registrations were “disparaging” to the Native American population.

PFI initially appealed the District Court’s decision to the Fourth Circuit, and the parties are currently awaiting a date to appear for oral argument.

On the heels of the USPTO’s petition for certiorari, this week PFI filed a rare prejudgment petition for writ of certiorari to the United States Supreme Court, requesting that the High Court hear its appeal before the Fourth Circuit renders a decision.  PFI explained in its petition that its case “is the paradigmatic candidate for certiorari before judgment because it is a necessary and ideal companion to Tam.”  The two cases are undoubtedly similar and call into question the same provision of seemingly well-settled trademark law.  The respondents in the Tam and PFI cases have 30 days from the petition docketing dates to file response briefs to the petition for writ of certiorari.  Thereafter, the justices will consider whether to grant either and/or both petitions.

Lee v. Simon Shiao Tam was docketed in the United States Supreme Court as Case No. 15-1293 on April 20, 2016.

Pro-Football, Inc. v. Amanda Blackhorse, et al. was docketed in the United States Supreme Court as Case No. 15-1311 on April 26, 2016.

On July 15, 2015, we discussed the decision of the United States District Court for the Eastern District of Virginia in Pro-Football, Inc. v. Amanda Blackhorse, et al.  In Pro-Football, the District Court affirmed a decision by the United States Patent and Trademark Office directing the cancellation of six “REDSKINS” trademark registrations owned by the Washington Redskins NFL Team.  Although that decision remains on appeal to the Fourth Circuit Court of Appeals, a split en banc Federal Circuit Court of Appeals decision issued earlier today may foreshadow a potential victory for the Washington Redskins.

Today’s decision in In re: Simon Shiao Tam, arose in a separate lawsuit, filed by members of a band called The Slants, who sought trademark registration of the band’s name.  The registration had been refused by the United Stated Patent and Trademark Office (“USPTO”) pursuant to Section 2(a) on the Lanham Act on the ground that the mark was disparaging to Asian Americans.

In reversing that decision, the Federal Circuit struck down Section 2(a) of the Lanham Act, concluding that Section 2(a), first signed into law in 1946, violates the First Amendment of the U.S. Constitution.  Writing for the majority, Chief Judge Kimberly Moore acknowledged that “invalidating this provision may lead to the wider registration of marks that offend vulnerable communities,” but nevertheless concluded “[w]hatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.”

The decision will almost certainly have broad implications, most notably because the District Court opinion in the Washington Redskins case was predicated on the USPTO’s authority under Section 2(a) of the Lanham Act to refuse registration to marks that may be disparaging or offensive.  To the extent the Fourth Circuit is persuaded by the Federal Circuit’s decision, or if the Supreme Court affirms the Federal Circuit’s reasoning, it could spell victory for the Washington Football Team.

Today’s 111-page decision in In re: Simon Shiao Tam was not without dissent.  In one of two dissenting opinions, U.S. Circuit Judge Alan D. Lourie wrote “one wonders why a statute that dates back nearly 70 years — one that has been continuously applied — is suddenly unconstitutional as violating the First Amendment.  Is there no such thing as settled law, normally referred to as stare decisis?”  If there is one thing that is certain, it’s that the Washington Redskins will be anxiously awaiting further answers to that question.

The United States Court of Appeals for the Federal Circuit’s decision in the “SLANTS” case is In Re Simon Shiao Tam, Case No. 2014-1203.

The United States District Court’s decision in the “REDSKINS” case is Pro-Football, Inc. v. Amanda Blackhorse, et al., 1:14-cv-01043-GBL-IDD

On June 24, 2014, we discussed the decision of the United States Patent and Trademark Office that granted a petition for cancellation of six “REDSKINS” trademark registrations owned by the Washington Redskins NFL team. The owner of the marks, Pro-Football, Inc. or “PFI”, appealed the decision to the United States District Court for the Eastern District of Virginia. Last week, PFI lost its appeal. The District Court affirmed the decision of the Patent and Trademark Office and directed the office to schedule the cancellation of the six “REDSKINS” trademark registrations. As a result, these marks will be removed from the Patent and Trademark Office’s Principal Register.

In support of its decision, the District Court reasoned: (i) the marks do not implicate the First Amendment, and even if they did, the federal trademark registration program is considered “government speech,” which is exempt from First Amendment scrutiny; (ii) because a trademark registration is not “property” under the Fifth Amendment, there was no unlawful taking from PFI or violation of PFI’s due process rights by the government in granting the petition for cancellation; and (iii) the overwhelming evidence shows that the marks “may disparage” a “substantial composite” of Native Americans during the time period in which the marks were registered, i.e. 1967-1990.

The District Court clarified that its decision does not prevent PFI from continuing to use the marks in commerce, nor does it prevent fans from wearing, collecting, or displaying the marks. As the Court noted, however, whether PFI continues to use the marks as the Washington Football team’s logo requires an exercise of business acumen. PFI will now need to consider what impact, if any, the continued use of the canceled marks will have on ticket sales and general interest in purchasing and wearing the team’s gear containing the marks.

The United States Patent and Trademark Office decision is Blackhorse v. Pro-Football, Inc. 111 U.S.P.Q.2d 1080, 2014 WL 2757516 (T.T.A.B. 2014).

The United States District Court’s decision is Pro-Football, Inc. v. Amanda Blackhorse, et al., 1:14-cv-01043-GBL-IDD.