Posts Tagged: "Matal v. Tam"

How One TTAB Case Reveals Continued Examination Flaws Post-Tam and Brunetti

A case that is currently before the Trademark Trial and Appeal Board (TTAB), Proceeding No. 92071980, is no run-of-the-mill cancellation petition. Elevated Faith LLC v. GODISGHL, LLC,  concerns the right to register religious symbols and exposes critical flaws in trademark examination; in some ways it might be considered a progeny of Matal v. Tam and Iancu v. Brunetti. Naturally, it also involves a celebrity.

Countering Cultural Appropriation Through Trademark Laws

Recent controversy surrounding Kim Kardashian’s truncated move to trademark the term “Kimono” for her new line of undergarment shapewear has subsided, with Kardashian formally announcing that she is abandoning the effort. Kardashian explained the mark as serving the dual purposes of being a play on her name and showing respect for the Japanese culture. In fact, Kimono is Japanese for a traditional long, baggy garment that has been worn by Japanese women for centuries. Kardashian’s effort caused an uproar among the Japanese community in Japan and here in the United States. The community accused Kardashian of trying to exploit a centuries-old Japanese tradition for commercial gain. The controversy prompted the mayor of Kyoto to write a letter to Kardashian, in which he noted the sensitivity of the Japanese people to her move and urged her to drop the effort. Although the immediate controversy has now subsided, Kardashian’s truncated effort has renewed debate around the larger issue of “cultural appropriation” and its intersection with trademark law.

After Brunetti: The Trademark Bar Reacts to Fractured Decision

The Supreme Court issued its decision yesterday in Iancu v. Brunetti. As largely expected, the Court followed its own lead in Matal v. Tam and struck down the Lanham Act’s bar on “immoral or scandalous” trademarks as violating the First Amendment. Below are some insider perspectives on what the ruling means for brands and trademark practitioners going forward.

Federal Alcohol Labeling Following Tam and Brunetti

The U.S. Supreme Court and the Court of Appeals for the Federal Circuit recently struck down certain trademark registration requirements on First Amendment grounds. These cases raise questions about whether similar alcohol labeling requirements likewise violate the First Amendment. In the U.S., alcohol is a regulated product at both the state and federal level. Federally, the Alcohol Administration Act (FAA Act) sets forth the labeling requirements for distilled spirits, wine and malt beverages. Alcohol producers must get alcohol labels approved by the U.S. Department of the Treasury, Alcohol and Tobacco Tax and Trade Bureau (TTB). These approvals come in the form of a Certificate of Label Approval/Exemption or “COLA.” The labeling requirements of the FAA Act are detailed in 27 U.S.C. §205(e) and prohibit labels that “are disparaging of a competitor’s products or are false, misleading, obscene, or indecent…” See 27 U.S.C. §205(e)(4). The associated rules are promulgated in 27 C.F.R. Parts 4, 5, and 7. These rules similarly prohibit statements on labels that are “disparaging of a competitor’s products,” or which are “obscene or indecent.” 27 C.F.R. §4.39, §5.42, and §7.29.

CBD Wins with USPTO’s New Examination Guide for Cannabis Marks, but Lawful Use Requirements Remain Intact

On May 2, 2019, the USPTO issued a new examination guide titled “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill.” A hasty reader may have assumed that this guide would offer options for the cannabis business whose federal trademark applications have been thwarted by the lawful use requirement, but this is not the case.The lawful use requirement, as explained by the USPTO, mandates that “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.” TMEP §907, citing to 37 C.F.R. §2.69 and §§1, 45 of the Lanham Act. In other words, if a product cannot be legally sold in interstate commerce then, according to the USPTO, the mark cannot be used legally in interstate commerce and, lacking trademark use, the trademark cannot be registered. Alas, the new examination guide only allows federal trademark registrations under very narrow circumstances. Under Sections 6 and 297A of the Farm Bill 2018, “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis” are removed from the Controlled Substances Act (CSA). In effect, these plants and their parts have become legal. Similarly, cannabidiol—commonly referred to as CBD—and those CBD products that have very low THC content, have become legal under the CSA. Being legal under the CSA means that these products can be legally sold in interstate commerce.