In a long-awaited decision, Iancu v. Brunetti, the Supreme Court held – in a 6-3 opinion delivered by Justice Kagan – that the Lanham Act’s prohibition on registration of “immoral or scandalous” trademarks violates the First Amendment. The decision completes a trilogy of cases that, in recent years, stirred up significant interest on the interplay between freedom of speech and certain Lanham Act trademark prohibitions. Initially, the constitutionality of the bar against registration of disparaging marks was brought to nationwide media attention through the Redskins case (Blackhorse v. Pro-Football, Inc), previously reported on by Gibbons, which culminated the legal effort by Native American tribes to delineate the term “redskin” as an offensive and disparaging racial slur, resulting in the initial cancellation of the eponymous mark owned by the Washington Redskins. Pending review by the Supreme Court, the Blackhorse case was cut short by another case, Matal v. Tam. In that 2017 decision, the Court struck down a Lanham Act provision that prevented registration for marks that are deemed “disparaging,” thus rendering moot any further review of Blackhorse. Because the Court in Matal had already declared the “disparaging” bar unconstitutional, it comes as no surprise that the Section 2(a) prohibition (15 U.S.C. § 1052(a)) on registration of “immoral or scandalous” matter fared similarly under the scrutiny of...
Author: Paolo A. Strino
Reversing the First Circuit, the Supreme Court Holds That Rejection of an Executory Trademark License Does Not Bar the Licensee From Continuing to Use the Mark
In Mission Product Holdings v. Tempnology, the Supreme Court, in an 8-1 opinion delivered by Justice Kagan, held that a debtor’s rejection of a trademark license under Section 365 of the Bankruptcy Code does not terminate the licensee’s rights to use the trademark under the agreement. Tempnology made clothing and accessories designed to stay cool during exercise, and marketed those products under the brand name “Coolcore.” In 2012, Tempnology gave Mission Product Holdings an exclusive license to distribute certain Coolcore products in the United States and granted Mission a non-exclusive global license to use the Coolcore trademarks. The agreement was set to expire in July 2016. In September 2015, however, Tempnology filed for relief under Chapter 11 of the Bankruptcy Code, and rejected the license agreement under Section 365(a). The Bankruptcy Court held that Tempnology’s rejection of the agreement revoked Mission’s right to use the marks. The Bankruptcy Appellate Panel reversed. The First Circuit rejected the Bankruptcy Appellate Panel’s view and reinstated the Bankruptcy Court’s decision. The First Circuit reasoned that Congress, in enacting Section 365(n) in 1988, “expressly listed six kinds of intellectual property,” but not trademarks. The First Circuit thus held that trademark licenses are categorically unprotected from court-approved rejection. The Supreme Court granted certiorari, and reversed the First Circuit. Section 365(a) of...
On October 3, 2016, the U.S. Supreme Court announced that it would not take up an appeal by the Washington Redskins regarding the constitutionality of a Lanham Act provision that prevents registration of trademarks that disparage “persons, living or dead, institutions, beliefs, or national symbols.” See 15 U.S.C. §1052(a).
Last year’s Supreme Court’s decision in B&B Hardware raised the stakes in opposition proceedings when it stated that TTAB rulings may have preclusive effects in subsequent federal district court litigation. As litigants and practitioners are still assessing the consequences of that landmark decision, an unexpected confrontation took place between the Board and the Federal District.
In Equals Three, LLC v. Jukin Media, Inc., the United States District Court for the Central District of California presented an informative “fair use” analysis in a dispute between two media companies over viral videos. The Court’s decision highlights the fact-sensitive nature of the doctrine of fair use. It also clarifies the extent to which a use must be transformative in order to be deemed fair use.
Registrations of non-traditional trademarks are uncommon, and often discussed only among legal scholars and in academic papers. A recent Wall Street Journal article, however, called attention to a growing trend in trademark law: registration of scents and fragrances. The article describes the efforts of CESI Chemical, Inc., a producer of solvents for the fracking industry, which filed an application to register the orange scent imbued in its chemical additives for its hydraulic fracturing fluid.
In a 7-2 split decision issued on March 24, 2015, the U.S. Supreme Court held that Trademark Trial and Appeal Board (“TTAB”) rulings may have preclusive effects in subsequent federal district court litigation. The Court ruled that so long as the elements of issue preclusion are met, it is irrelevant that the TTAB is not an Article III court.
In Trademark Infringement Matters, Think Twice Before Waiting. Laches May Run from the Date of the Product Announcement, Before the Initial Sales
Fitbit and Fitbug are makers of activity trackers, which are wearable tracking devices that connect to the internet and provide users with feedback about their fitness, quality of sleep, and other personal metrics. Fitbug’s U.S. trademark rights to FITBUG date back to 2004, when the British device maker filed an intent to use application with the United States Patent and Trademark Office, which registered in 2009. Fitbug began selling its products in United States commerce since at least as early as 2005. Fitbit, on the other hand, filed a trademark application for FITBIT in August 2008 and announced its product launch the following month. However, Fitbit did not begin shipping its products using the trademark FITBIT until September 2009.
The U.S. Supreme Court does not get to tackle trademark law issues very often. The decision in Hana Financial, Inc. v. Hana Bank, (No. 13-1211; January 21, 2015) is the first pronouncement of the highest Court on trademark matters in more than a decade, and it deals with the issue known as tacking. Trademarks often experience changes in appearance and overall look in the course of many years. These changes can take various forms, such as a modification in lettering style, a rearrangement in the order of words, the dropping of a background design, or the addition of new stylized elements. The tacking doctrine allows a party to claim the earlier priority date of an old mark for a new trademark, if the later involves slight changes over the prior version. The U.S. Supreme Court’s decision in Hana Financial addresses narrowly the question as to whether tacking is a matter of law reserved to a judge, or a matter of fact decided by a jury.