Following the 2014 so-called “Ukrainian Revolution of Dignity” and the Russian Federation’s annexation of Crimea, a major escalation of the ongoing Russo-Ukrainian War occurred in 2022, culminating in the Russian invasion of Ukraine on February 24. The invasion triggered Europe’s largest refugee and humanitarian crisis since World War II, causing an unprecedented amount of human suffering and countless civilian casualties.
Author: Paolo A. Strino
Trademark Modernization Act Becomes Law, Easing the Burden of Trademark Owners to Obtain Injunctive Relief and Curbing Trademark Registrations That Falsely Claim Use of a Mark
As part of the recent COVID-19 relief and government funding bill (“the Consolidated Appropriations Act”), Congress introduced significant changes to U.S. trademark law. The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020. The Act intends to curb trademark registrations that falsely claim use of a mark, addresses the false-use-claim problem by creating new procedures to improve examination effectiveness and efficiency, and promotes remedies designed to protect consumers in trademark cases. The TMA, which becomes effective one year after the date of its enactment, amends the Lanham Act by changing certain procedures in trademark prosecution before the United States Patent and Trademark Office (USPTO), providing new avenues for canceling fraudulent registrations, and clarifying the standard for obtaining injunctive relief in trademark litigation. The key takeaways from the Act are discussed below. Third-Party Submission of Evidence of Non-Use: Section 3 of the Act provides for third-party submission of evidence during examination of an application for federal registration of a trademark. In particular, codifying the practice of Letters of Protest, Section 3(a) allows third parties to submit to the USPTO certain evidence relevant to the examination of a trademark application for consideration in deciding whether a trademark registration should be issued. Relevant evidence can relate to any ground on which an examiner...
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...
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.