The Lawletter Vol. 41, No. 2

Tim Snider, Senior Attorney, National Legal Research Group

     There has been considerable dispute about the propriety of the continuing use of the mark and name REDSKINS by the Washington NFL franchise. It is claimed by some that the word "redskin" is considered offensive by aboriginal Americans and others. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498, 113 U.S.P.Q.2d (BNA) 1749 (E.D. Va. 2014). While that case is on appeal, the Federal Circuit, which hears the bulk of trademark cases, has rendered a decision that could place in doubt whether the cancellation of the REDSKINS trademark by the Trademark Trial and Appeal Board (the "TTAB") can be sustained. See Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d (BNA) 1080 (T.T.A.B. 2014) (Cancellation No. 92046185).

     Section 2(a) of the Lanham Trademark Act, 15 U.S.C. § 1052(a), prohibits registration of a trademark that "[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute." In re Tam, No. 2014-1203, 2015 WL 9287035 (Fed. Cir. Dec. 22, 2015), involved the attempted registration by the representative of an Asian-American rock/dance band of its trademark THE SLANTS. The applicant for the mark is himself Asian-American, but the examiner nonetheless refused registration on the basis that the mark was likely disparaging to "persons of Asian descent" within the meaning of section 2(a). The TTAB agreed and sustained the refusal to register the mark.

The Lawletter Vol 40 No 6

Tim Snider—Senior Attorney, National Legal Research Group

     In opposed trademark registration proceedings, the administrative adjudicative body is the Trademark Trial and Appeal Board ("TTAB"). It hears the appeals of applicants for registration and of those who oppose registration who are aggrieved by the decision of the Patent and Trademark Office whether to grant or deny registration to an application for registration of a trademark. There is a further level of appeal to the Federal Circuit, and a plaintiff can always seek cancellation of a registered trademark in district court. An issue often involved in registration proceedings is whether there is a likelihood of confusion between the applicant's mark and the opposer's mark. Unlike court proceedings, there is no discovery and no live testimony. The TTAB makes its decision based on the written record that is submitted to it by the parties. If the TTAB makes a determination that there is a risk of confusion between the marks in suit, what weight should be assigned to that determination by a court that is hearing a dispute between two markholders, one of whom claims that the other's mark infringes on its mark?

Tim Snider, Senior Attorney, National Legal Research Group

      Very few principles of federal appellate practice are more fundamental than that only final judgments may be appealed. Mohawk Indus. v. Carpenter, 558 U.S. 100 (2009). That said, bankruptcy presents a unique situation, in that often adversary proceedings finally conclude the dispute between and among the parties to those proceedings and thus are appealable, even though the entire bankruptcy case may not yet be concluded. Howard Delivery Serv. v. Zurich Am. Ins. Co., 547 U.S. 651, 657 n.3 (2006) ("Congress has long provided that orders in bankruptcy cases may be immediately appealed if they finally dispose of discrete disputes within the larger case.").

Tim Snider, Senior Attorney, National Legal Research Group

     Typically, the circumstances under which a minority shareholder in a corporation may compel appraisal and purchase of his shares by the corporation is made explicit by statute. Occasionally, however, a case tests the outer boundaries of a shareholder's appraisal rights. In Fisher v. Tails, Inc., Record No. 140444, 2015 WL 103679 (Va. Jan. 8, 2015), Tails was organized as a Virginia corporation to operate as a regional franchisee of RE/MAX LLC, a Delaware limited liability company ("LLC"). On August 9, 2013, Buena Suerte Holdings, Inc., another affiliate of RE/MAX, and Tails signed a "Plan of Reorganization and Purchase Agreement" in which Tails would be sold to Buena Suerte in four steps. First, Tails would become a Delaware corporation, changing its state of incorporation from Virginia to Delaware pursuant to Virginia Code § 13.1-722.2 and Delaware Code title 8, § 265. Second, Tails would merge with and into a newly formed Delaware LLC, Tails, LLC. Tails, LLC, would be a subsidiary of a newly formed holding company, Tails Holdco, Inc. (Holdco), and Holdco would hold all of Tails, LLC's membership interests. Third, Holdco would cause Tails, LLC, to amend and restate its LLC agreement to remove certain LLC provisions. Finally, Holdco would sell Buena Suerte all of its membership interests in Tails, LLC.