Federal Circuit Holds that USPTO Can’t Deny Trademarks as Offensive or Disparaging

On Tuesday, December 22, 2015, the Federal Circuit  held that a portion of § 2(a) of the Lanham Act is unconstitutional in a 10-2 decision. The decision was made in In re Simon Shiao Tam, an appeal from the Trademark Office. Mr. Tam is a member of an Asian American rock band called THE SLANTS. […]

Who owns the Trademark: Distributor v. Manufacturer

The Trademark Trial and Appeal Board (TTAB) has previously held that in the absence of an agreement between a manufacturer and a distributor, there is a legal presumption that the manufacturer is the owner of the trademark. The presumption that the manufacturer is the owner of a disputed mark may be rebutted. In determining which […]

Peace, Love, and Trademarks

Federal Trademark registration allows the owner of a mark to enforce their rights throughout the U.S. Once a trademark registration is filed, however, those rights can be challenged either through litigation or though opposition proceedings instituted at the USPTO. In particular, a registered trademark can be challenged on the basis that it is likely to cause […]

Cancellation of the Washington Pro-Football Team’s Trademark Affirmed by District Court

In 2014, the Trademark Trial and Appeal Board (TTAB) cancelled six trademark registrations related to the Washington “Redskins.”The marks were found to disparage Native Americans; Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)), prohibits the registration of disparaging marks. Following the cancellation, the mark owner appealed the decision to the District Court for […]

Geographical Scope of Permanent Injunctions Challenged

  Federal trademark rights are generally enforceable throughout the United States.  However, confusion can arise where contrary decisions have been made by district courts in different geographical regions relating to the same mark. The Fourth Circuit’s March decision in Georgia Pacific Consumer Prods. LP v. Von Dreble Corp, an appeal from the Eastern District of […]

Princeton Vanguard v. Frito-Lay: One Test to Rule All Generic Analysis

Princeton Vanguard v. Frito-Lay: One Test to Rule All Generic Analysis

Cancelation of Trademarks due to First Actual Use After Application

Federal registration of a trademark provides a number of benefits to the trademark owner, including protection throughout the entire country, advantageous litigation position—for example presumption of validity and enhanced monetary damages—and enlistment of the U.S. Customs Service to stop importation of counterfeit goods. The federal trademark system provides two separate avenues for protecting a mark: […]

Are Trademarks for Beer Names Becoming a Commodity?

While typically we think of finite resources such as oil and coal as commodities, it could be that the next big commodities are names for craft beers and breweries. According to a recent NPR story, which can be foundhere, the craft brewing industry is becoming an increasingly crowded industry with more than 3,000 breweries in […]

Passing Off and Taking Credit for Architectural Plans

The United States Court of Appeals for the Seventh Circuit has issued a decision in Gensler v. Strabala, overturning a district court’s ruling dismissing a complaint for trademark infringement under §43(a) of the Lanham Act. Strabala, a former Design Director and architect for the architectural firm Gensler & Associates, formed his own design firm, 2Define […]