Apr 23, 2020

Supreme Court Overturns Second Circuit Precedent, Holds Willful Infringement Unnecessary for Award of Profits in Trademark Infringement Case

Supreme Court and Lady Justice

April 23, 2020, Washington, D.C.  The Supreme Court today held that a plaintiff need not prove that a defendant acted “willfully” in order to recover profits as an equitable remedy for trademark infringement under Section 35(a) of the Federal Trademark Act of 1946, as amended (the “Lanham Act”), 15 U.S.C. § 1117(a).  Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233, — S.Ct. —-, 2020 WL 1942012 (April 23, 2020). The plaintiff, a designer of fasteners used in handbags, brought an action against a handbag manufacturer alleging infringement of its “ROMAG” trademark.  A jury found the manufacturer liable for patent and… Read more

Oct 21, 2019

On Second Thought, Don’t Say My Name – Registering Surnames in the United States


The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.16 The Lanham Act prohibits registration on the Principal Register of marks that are primarily merely a surname. For many small businesses, this prohibition proves problematic because owners tend to want to include their own names in the business name to let customers know that they stand behind the quality of their goods or services. The United States Patent and Trademark Office applies a five-part test to determine whether registration should be denied on this basis. Its recent decisions, however, establish that some of these factors are weighted… Read more

Apr 11, 2019

Brunetti and the Tests of Tam

Courthouse: Iancu v. Brunetti

On Monday, April 15, 2019 arguments in the Brunetti case [Iancu v. Brunetti, No. 18-302] will be heard at the United States Supreme Court. Erik Brunetti seeks to register the mark FUCT for clothing. Brunetti’s application was rejected for registration by the United States Patent and Trademark Office on the basis that it violates the Lanham Act, 15. U.S.C. 1052(a) which prohibits the registration of marks comprised of “immoral” or “scandalous” matter. The arguments by the government and Brunetti are sure to echo some of the arguments made in the so-called SLANTS case, Matal v. Tam, 137 S. Ct. 1744… Read more

Apr 4, 2019

Avoid Truthful But Misleading Advertising

Street Advertising - Misleading Advertising

Avoid truthful but misleading advertising. Be careful what you say, especially about your competitors. As expected, competitors are sensitive to any negative allegations made about their products or services, since it may likely have an effect on the business’s sales and reputation. Some competitors may even file a lawsuit to enjoin the use of such statements, even if the statements are technically true. On March 21, 2019, MillerCoors, LLC (“MillerCoors”), which sells Miller Lite and Coors Light, filed a complaint against Anheuser-Busch Companies, LLC (“AB”), which sells Bud Light, after the Bud Light commercials shown during Super Bowl LIII and… Read more

Jan 18, 2018

Finding of Likelihood of Confusion Despite Consent Agreement

Trademark Confusion Between Beer Manufacturers

On October 30, 2017 the Trademark Trial and Appeal Board (TTAB) affirmed the refusal of registration of the 8-BIT ALEWORKS mark on the ground of a likelihood of confusion with the 8 BIT BREWING COMPANY registered marks and composite mark (shown below) under Section 2(d) of the Lanham Act, 15 USC Section 1052(d). The applicant’s mark was for “beer” while the registrant’s marks were for “Beer, ale, lager, stout and porter; Malt liquor; Pale beer”. The TTAB analyzed the marks under the factors in In re EI du Pont de Nemours & Co, 476 F2d 1357 (CCPA 1973). The application… Read more

Jul 11, 2017

USPTO Issues New Guidance to Examiners in Light of Tam Ruling

Trademark Button on Keyboard

On June 26, 2017, the U.S. Patent and Trademark Office (USPTO) issued Examination Guide 1-17 to address the Supreme Court’s decision Matal v. Tam, 582 U.S. ___ (2017), which held that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), constitutes viewpoint discrimination and is facially unconstitutional under the First Amendment’s Free Speech Clause. Starting in March 2016, the USPTO began suspending applications for marks subject to refusal under the disparagement and scandalousness provisions of Section 2(a) pending decisions on the constitutionality of these provisions in Tam (disparagement) and In re Brunetti, No. 15-1109 (Fed…. Read more

Jun 19, 2017

THE SLANTS Mark Registrable as Prohibition of “Derogatory” Marks Held Unconstitutional By the Supreme Court

Supreme Court Building

By: Jim Bikoff, Darlene Tzou, and Holly Lance On June 19, 2017, the United States Supreme Court issued a landmark decision in Matal v. Tam, 582 U.S. ____ (2017), unanimously holding the disparagement clause in the Lanham Act unconstitutional on the ground that it violates the First Amendment.  This decision upends over 70 years of practice under Lanham Act § 2(a) (15 U.S.C. § 1052(a)).  The case will likely have an immediate effect on other pending “derogatory” mark cases, including Blackhorse v. Pro-Football, Inc., 2015 U.S. Dist. LEXIS 90091 (E.D. Va. July 8, 2015) (the “Redskins” case) and may signal… Read more

Jun 16, 2017

Fourth Circuit Holds that Policy Requiring Payment of USPTO Attorneys’ Fees Stands

Gavel and Money

On March 31, 2017, the U.S. Court of Appeals for the Fourth Circuit declined to review its decision affirming the district court’s award of attorneys’ fees to the U.S. Patent and Trademark Office (USPTO), approving the new USPTO policy of requesting attorneys’ fees from applicants that appeal to the U.S. district courts. In 2013 the USPTO broke its more than 170-year-old practice of not requesting attorneys’ fees in ex parte appeals to the US district courts and began requiring appellants seeking de novo review to cover the USPTO’s attorneys’ fees. The USPTO claims the authority to obtain these fees based… Read more