Under 15 U.S.C. § 1117(a), trademark holder who proves infringement may receive as damages an award of profits “subject to the principles of equity.” This phrase has divided the circuit courts going back several decades, with...more
7/1/2019
/ Appeals ,
Calculation of Damages ,
Certiorari ,
Corporate Counsel ,
Damages ,
Fashion Design ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Profits ,
Remand ,
Romag Fasteners v Fossil ,
SCOTUS ,
Split of Authority ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Willful Infringement
In our prior blog entries... we followed the course of Matal v. Tam, the case involving the mark “THE SLANTS.” In that case, the Supreme Court struck down a portion of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), on...more
7/1/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
In my never-ending quest to write articles that my children would read, I bring you the case of Grumpy Cat.
The guardians of Grumpy Cat (whose actual name is Tardar Sauce), through its company, Grumpy Cat Limited,...more
We recently hosted an event at the firm where we discussed legal issues concerning parallel imports in the transportation industry, so a recent decision by the U.S. Court of International Trade discussing “Lever Rule”...more
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. ...more
6/26/2017
/ Commercial Speech ,
Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
NFL ,
Redskins ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademarks
With some cases, you just shake your head. In this case, a restaurant purveyor thought it would be okay to open a restaurant by the name of the “Krusty Krab.” For those of you who have no reason to have been watching...more
We have been following the course of In re Tam as it has progressed through the PTO and the courts. To recap, at issue is whether Section 2(a) of the Lanham Act, which prohibits the registration of marks that may disparage...more
9/30/2016
/ Blackhorse v Pro-Football ,
Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Lanham Act ,
Petition for Writ of Certiorari ,
Redskins ,
The Slants ,
Trademark Registration ,
Trademarks
Memorial Day weekend is coming, marking the unofficial start of summer. The Southern District of New York has marked the occasion by entering a judgment for attorneys’ fees and costs against Mister Softee copycat, Master...more
This week saw developments in the two cases challenging the application of Section 2(a) of the Lanham Act to their registration: In re Tam and Blackhorse v. Pro Football, Inc....more
4/28/2016
/ Blackhorse v Pro-Football ,
Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Lanham Act ,
NFL ,
Petition for Writ of Certiorari ,
Redskins ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademarks
As part of our continuing monitoring of this issue, we bring you the latest chapter in the saga over the registration of THE SLANTS trademark. After the en banc Federal Circuit struck down Section 2(a) as facially...more
4/2/2016
/ Appeals ,
Certiorari ,
Disparagement ,
En Banc Review ,
First Amendment ,
Mandamus Petitions ,
Popular ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
In September, we discussed In re Tam and the potential for a showdown over the constitutionality of Section 2(a) of the Lanham Act. At that time, a panel of the Federal Circuit had recently upheld the PTO’s refusal to...more
1/5/2016
/ Chilling Effect ,
Commercial Speech ,
Disparagement ,
En Banc Review ,
First Amendment ,
Free Speech ,
Government Speech Doctrine ,
Redskins ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
Are we heading for a constitutional showdown over Section 2(a) of the Lanham Act? Will the Supreme Court strike down this prohibition on disparaging marks as an abridgement of First Amendment rights? It is certainly...more
9/23/2015
/ Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Reed v Town of Gilbert ,
SCOTUS ,
Section 2 ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
Consider this: You are shopping online and you type in the name of a brand of wristwatch. Perhaps you wanted to purchase that exact brand of watch, or perhaps you were looking for a selection of watches that included the...more