Tag Archives: Lanham Act

Trademark Infringement and Jury Trials in Federal Courts

By Cory Barnes on April 6, 2021 Posted in Trademark

When plaintiffs assert trademark infringement and related actions under the Lanham Act (or state law counterparts), more often than not the complaint will include a demand for a jury trial on all issues so triable, as is standard practice. However, if discovery ultimately reveals, or dispositive motion practice confirms, that a plaintiff has suffered no … Continue Reading

Federal Circuit Clarifies Standard For Bringing a Cancellation Proceeding under 15 U.S.C. § 1064

By Kevin Bovard on December 2, 2020 Posted in Trademark

In a recent decision, Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), the Court of Appeals for the Federal Circuit clarified the standard for maintaining a petition to cancel a trademark registration under §1064 of the Lanham Act. The Federal Circuit noted that while these questions are often framed as questions of … Continue Reading

Wielding Trademark Rights to Fight COVID-19 Scams

By Kevin Wallace on October 30, 2020 Posted in Trademark

Trademark owners are wielding their intellectual property rights to stop COVID-19 scams and prevent the spread of misinformation about the ongoing pandemic. With the injunctive power of the Lanham Act, medical supply companies, software companies and even educational institutions are able to quash scams and misinformation. Earlier this year, 3M launched what has grown into … Continue Reading

“Trump Too Small” is Too Personal for Trademark Registration

By C. Dennis Loomis on July 13, 2020 Posted in Trademark

The Trademark Trial and Appeal Board (TTAB) – for the second time in the past six months – has decided that a proposed mark incorporating the name “Trump” may not be federally registered as a trademark. Relying on the Lanham Act prohibition against registration of any mark that identifies “a particular living individual” without that … Continue Reading

SCOTUS Livestreams Oral Arguments on BOOKING.COM Trademark Registerability

By Deborah A. Wilcox and Christina Moser on May 5, 2020 Posted in Trademark

On Monday, we listened in real time to the livestreamed Supreme Court oral arguments in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V. Because of COVID-19, the arguments were done telephonically, but with the added twist of a live broadcast. The event itself was remarkable, considering the impact of the … Continue Reading

A Finding of Willfulness Is Not Required for an Award of Profits in a Trademark Infringement Case

By Nancy R. Frandsen, Kevin Wallace and Megan Corrigan on April 24, 2020 Posted in Trademark

The Supreme Court has definitively answered the question of whether a plaintiff in a trademark infringement suit is required to show, as a precondition to a profits award, that a defendant willfully infringed the plaintiff’s trademark. By a unanimous vote, the Supreme Court said NO. In Romag Fasteners, Inc. v. Fossil Group, Inc., Romag, a … Continue Reading

Who Is Holding the Bag: How Will the Supreme Court Resolve the Circuit Split on Recovery of Profits in Trademark Cases?

By Jacqueline Lesser on December 31, 2019 Posted in Trademark

Two weeks from now, on January 14, 2020, the Supreme Court will hear oral argument in Romag Fasteners, Inc. v. Fossil, Inc. on the long-standing circuit split over whether willful infringement is a necessary precondition for an award of profits in a Section 43(a) trademark infringement case. Under the Lanham Act, a victorious plaintiff in … Continue Reading

Session not Season

By Christina Moser on September 20, 2019 Posted in Trademark

When the Supreme Court opens its new session on Oct. 7, one of the cases it will determine, Romag Fasteners, Inc. v. Fossil, Inc., et al. Case No. 2018-2417, is expected to resolve a stark difference among circuits over when a trademark owner is entitled to disgorgement of an infringer’s profits due to an infringing … Continue Reading

Protected and Unfiltered. Supreme Court Strikes Down the Lanham Act’s Scandalous and Immoral Restrictions.

By Jacqueline Lesser on June 25, 2019 Posted in Trademark

In April at oral argument, the bench grappled with the issue of viewpoint discrimination based on the literal meaning of the statute and the genuine concern that without regulation, profane and obscene language and images will be imprinted with the ®. Ultimately, in a unanimous decision, the court held that the statutory language restricting scandalous and … Continue Reading

No Bull: Acquired Distinctiveness Is Not a Given

By Kevin Bovard on April 20, 2017 Posted in Trademark

The Trademark Trial & Appeal Board recently issued a nonprecedential decision that serves as a good reminder that distinctiveness is not automatically acquired simply by long-standing use. Klickitat Valley Chianina, LLC, Serial No. 76715490 (March 16, 2017). Nor are declarations attesting to exclusive use for five-plus years automatically sufficient to pass a trademark application through … Continue Reading

In re Tam: Still No Trademark Registration for The Slants

By Nancy R. Frandsen and Lisa Bollinger Gehman on April 5, 2016 Posted in Federal Circuit, Trademark

In the continuing saga of whether Section 2(a) of the Lanham Act is unconstitutional because it violates the First Amendment, the rock band The Slants will have to wait a little longer before it knows whether it can register its trademark THE SLANTS. The Slants, a band composed of Asian-American musicians, has received a significant … Continue Reading

Third Circuit Rejects Presumption of Irreparable Harm in Lanham Act Cases

By Lesley Grossberg on September 23, 2014 Posted in Copyright

The Third Circuit ruled in Ferring Pharmaceuticals v. Watson Pharmaceuticals on August 26 that “a party seeking a preliminary injunction in a Lanham Act case is not entitled to a presumption of irreparable harm but rather is required to demonstrate that she is likely to suffer irreparable harm if an injunction is not granted.” (Slip … Continue Reading