Some Irony That Will Make Any Trademark Attorney Laugh

I think that Jason has the better argument with respect to dilution. The Pirate Bay may be a well known entity, but I don’t think that it would pass muster under 1125(c). I think that Jason is right that it doesn’t get past the velvet rope into the Trademark VIP room where 1125(c) plaintiffs are allowed to sip vodka and have scantily clad lawyers sit on their laps.

But, I think both of you missed a more fundamental issue. TPB does not have enforceable trademark rights — at least not under U.S. law.

The Pirate Bay is clearly an illegal enterprise. You concede that in your original post. Despite the fact that TPB might have *some* lawful uses, I challenge you to find one. It is, all can agree, a criminal enterprise (and the Swedish courts have ruled that it is such).

Under U.S. law, in order for The Pirate Bay to establish trademark rights, they would need to establish “use in commerce.” This, in itself, is not a difficult fact to establish. However, they will also need to show that this use was lawful. See 15 U.S.C. § 1127; Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526 (Fed. Cir. 1987); The Clorox Co. v. Armour-Dial, Inc., 214 U.S.P.Q. 850, 851 (TTAB 1982) (“‘use in commerce’ means a ‘lawful use in commerce’”). In prior cases, the mere shipment of goods in violation of federal law disqualified the use as “use in commerce” necessary to establish trademark rights. See Medtronic, Inc. v. Pacesetter Sys., Inc., 222 U.S.P.Q. 80, 82 (TTAB 1984); Clorox, 214 U.S.P.Q. at 851; CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630-631 (9th Cir. 2007).

[T]he inquiry does not stop with use in commerce. It has long been the policy of the PTO’s Trademark Trial and Appeal Board that use in commerce only creates trademark rights when the use is lawful. See, e.g., In re Midwest Tennis & Track Co., 1993 TTAB LEXIS 27, 29 U.S.P.Q.2d 1386, 1386 n.2 (T.T.A.B. 1993); Clorox Co. v. Armour-Dial, Inc., 214 U.S.P.Q. 850, 851 (T.T.A.B. 1982); In re Pepcom Indus., Inc., 192 U.S.P.Q. 400, 401 (T.T.A.B. 1976); In re Stellar International, Inc., 159 U.S.P.Q. 48, 51 (T.T.A.B. 1968). At least one circuit has adopted and applied this rule. See United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1225 (10th Cir. 2000). A question of first impression in this circuit, we also agree with the PTO’s policy and hold that only lawful use in commerce can give rise to trademark priority.

The rationale for this rule is twofold. First, as a logical matter, to hold otherwise would be to put the government in the “anomalous position” of extending the benefits of trademark protection to a seller based upon actions the seller took in violation of that government’s own laws. See In re Stellar, 159 U.S.P.Q. at 51. It is doubtful that the trademark statute–passed pursuant to Congress’s power under the Commerce Clause–”was . . . intended to recognize . . . shipments in commerce in contravention of other regulatory acts promulgated [by Congress] under [that same constitutional provision]. ” Id. Second, as a policy matter, to give trademark priority to a seller who rushes to market without taking care to carefully comply with the relevant regulations would be to reward the hasty at the expense of the diligent.

Here, it is undisputed that, at all times prior to USANA’s priority date, Olivenol’s labels were not in compliance with the labeling requirements of 21 C.F.R. § 101.9(g)(4)(i) and, thus, Olivenol was being [*631] sold in violation of U.S.C. §§ 331(a), 343(a) (prohibiting sale of misbranded food as determined by reference to the relevant regulations).

Accordingly, it seems that since TPB has not used its mark in lawful commerce, your opposition would sink in a sea of pwnage, as would any 1125(c) claim.

Nevertheless, TPB would not be without some form of redress. The Copyright Act contains no similar “lawful use” requirement. Provided that TPB went through the formalities of registration first, they would be able to enjoin further use of their logo by Sandryds Handels if they sued under Title 17. Unfortunately, I doubt that they would be able to collect damages, as I am certain that they did not register the copyright within the statutorily required timeframe.

That said, if you want to see the irony meter in the roflcopter go over 9,000, file a copyright infringement suit on behalf of TPB.

Ah, another issue! It seems that TPB allows complete and free use of its logo, without restrictions. Accordingly, wouldn’t they have a naked license problem?

I think not… but, lets say they could navigate through the channel of illegal use … they then wreck on the shoals of naked licensing, and all hands be lost to the dark briny.