Well, that happened! According to the Supreme Court’s opinion in Matal v. Tam, Section 2(a) of the Lanham Act, which purports to prohibit the registration of marks that “disparage . . . persons,” is unconstitutional. When we first started blogging on this topic, here, we noted that certain stars were aligning for a constitutional showdown. … More
Tag Archives: Lanham Act
En route to Paris for the spring conference of the Pharmaceutical Trade Marks Group, I am contemplating trying to pay a visit to the PARIS BEACH CLUB. Paris Beach Club! Get it? It’s a joke because, as everyone of course knows, Paris is land-locked and has no beach.
Or so goes the reasoning of one of my favorite Trademark Trial & Appeal Board cases,… More
Section 43(a) of the Lanham Act prohibits false or misleading statements in commerce that are likely to cause confusion as to a person’s affiliation, approval or sponsorship of someone else’s commercial activities. Here’s an easy example: You take an iconic photograph of a celebrity and, without the celebrity’s permission, incorporate it into the wrapper of a candy bar you are selling. Consumers are confused into thinking the celebrity has endorsed the candy bar,… More
Two years ago, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those intellectual property lawsuits that sports fans assume IP lawyers know about. This anxiety led me to put together the Sue-per Bowl Shuffle I and Sue-per Bowl Shuffle II: guides to trademark, copyright, patent and other intellectual property disputes concerning the NFL during 2014 and 2015 respectively.… More
The Washington Redskins Ask The Supreme Court To Block Fourth Circuit From Participation In Important Trademark Cases
Another Labor Day is behind us, kids are back to school, and fall has unofficially arrived (it will become official on the September 22nd equinox). The autumn leaves bring with them two major opening days. One is already behind us, as the NFL literally kicked off its season on September 8 with a matchup between the Carolina Panthers (20) and the Denver Broncos (21).… More
Today’s example of unintentional sexism comes to us from Section 2(c) of the Lanham Act. On its face, the language of the statute assumes that someone other than Hillary will win the 2016 presidential election – and it won’t be Jill Stein. It could be Donald Trump, Bernie Sanders, Gary Johnson, or your dad, but it’ll be someone male.
Section 2 of the Lanham Act,… More
Skippy Still Hates Peanut Butter: TTAB Denies Petition To Cancel 1947 Trademark Registration . . . Again
Two years ago in March, in honor of National Peanut Month, we recounted the truly epic struggle for the SKIPPY mark between the once-iconic cartoon character and the still-iconic peanut butter brand. The story began nearly 90 years ago and involves a multi-generational dispute between one indefatigable family and a succession of large food companies. The very first decision in this dispute was issued by the US Trademark Office in 1933. … More
Welcome to Trademark Red Tape, our periodic round-up of trademark news and happenings at the United States Patent & Trademark Office. Here are the highlights:
What if were to tell you that I jointly authored this article with a colleague, but that I’m not going to give her any credit or attribution because I don’t feel like it? Can she sue me for copyright infringement? No, because we are joint authors, so I have as much a right to publish this article as she does. If we lived in Europe, my colleague might have relied on her inherent right of attribution,… More
Advertiser Jumps the Gun With Brochure Touting Tests; Fifth Circuit Brushes Off First Amendment Challenge to Lanham Act Claims
Like claims for defamation or commercial disparagement, Lanham Act claims are viable only if they involve statements of fact, rather than opinion. But what happens if an advertising statement concerns an issue that is a matter of scientific debate? Does that make the statement an opinion, and therefore non-actionable? The answer, of course, is “it depends” — as illustrated by a recent Fifth Circuit case, and how it distinguished itself from a Second Circuit case with a different outcome.… More
In Southern California Darts Association v. Zaffina, the Ninth Circuit held that a corporation, whose charter had been suspended by the state of California in 1977, had standing in 2012 to sue and to own trademarks as an unincorporated association.
In a long-awaited decision, the Second Circuit, in a surprising twist, ordered that high-end shoe designer Christian Louboutin’s trademark registration for his signature red, lacquered outsoles be limited to designs in which such outsoles contrast in color with an adjoining upper.
On Tuesday, high-end shoe designer Christian Louboutin told the Second Circuit that District Court Judge Victor Marrero got it wrong when he ruled that Louboutin failed to make a preliminary showing that his hallmark red-soled shoes were entitled to trademark protection, basing that holding on the broad rule that a single color for fashion items could not be trademarked under the Lanham Act.