Posts Tagged: Lanham Act


Trademark a Band Name: What’s in a Rock Band’s Name?

While it is possible to copyright the design of a band logo, the band name itself is not copyrightable (see here and here). Band names are protectable …
By Amanda G. Ciccatelli
2 years ago 0

Octane Standard for Attorney’s Fees Applies to Lanham Act and Patent Act Cases

In mag Fasteners, Inc. v. Fossil, Inc., Romag sued Fossil for patent and trademark infringement and a violation of the Connecticut Unfair Trade Practices Act (“CUTPA”) after …

USPTO Navigates New Territory In The Wake of Matal v. Tam

The USPTO issued Examination Guide 01-17 on Monday, June 26, 2017, entitled “Examination Guidance for Section 2(a)’s Disparagement Provision after Matal v. Tam and Examination for Compliance with …

The Ninth Circuit Writes the Script on Pleading and Proving Reverse Confusion Claims

The Ninth Circuit clarified the requirements for pleading and establishing a trademark infringement claim under a reverse confusion theory in Marketquest Group v. BIC, Case No. 15-55755 (9…
By Angel Chiang & Eric Ball
2 years ago 0

Ninth Circuit Confirms Willfulness is Required to Award Profits in Trademark Cases

As Stone Creek deepens the divide among circuits, the issue of whether willfulness is required for disgorgement of a defendant’s profits in trademark cases is ripe …
By Shannon Turner & Eric Ball
2 years ago 0

Supreme Court Ruling Opens Door to Additional Constitutional Challenges to the Lanham Act

The Supreme Court ruled that the anti-disparagement clause in the Lanham Act violates the Free Speech Clause in the First Amendment. Matal v. Tam. As a result, …
By Damian R LaPlaca
2 years ago 0

Supreme Court Rocks the Trademark Office in ‘Slants’ Case

After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit …

Industry Reaction to SCOTUS First Amendment Decision in Matal v. Tam

Lauren Emerson, Baker Botts, LLP: "Today’s decision, while not surprising, is momentous, as any decision striking a longstanding legislative provision based on freedom of speech would …
By Gene Quinn & Renee C. Quinn
2 years ago 8

Frankly My Dear I Don’t Give a Tam: The Oddball Consequences of In re Tam

The Supreme Court heard oral argument on the cloudy Wednesday morning of January 18, 2017. Although the Justices posed tough questions and intricate hypotheticals to both sides, the tone …

The ITC: Reviewing 2016 and Looking Ahead

In 2016, the ITC had its busiest year since 2011--which was the peak of the “smartphone wars”--in terms of new investigations instituted. In 2016, 55 complaints were filed, notably, 16 …
By Lisa Kattan
3 years ago 0

A Slanted View of Scandalous and Disparaging Trademarks

The Supreme Court has scheduled oral argument in Lee v. Tam for January 18... The genesis of the case is a Portland, Oregon all-Asian-American band called The Slants, …
By Esther Sirotnik
3 years ago 0

Tiffany & Co. Successfully Asserts Trademark Infringement Claims Against Costco

On October 5, 2016, a jury in Tiffany and Co. v. Costco Wholesale Corp. – litigated before Judge Swain of the Southern District Court of New York – awarded Tiffany & Co. (…
By Matt Scyoc
3 years ago 0

CAFC Vacates TTAB, Refuses Bright-Line Rule to Distinguish Software from Services Rendered

The Federal Circuit vacated the Trademark Trial and Appeal Board’s (“Board”) cancellation of two JobDiva service mark registrations—one in whole and the other in part—…

CAFC Overturns Trademark Cancellation, Clarifies ‘Use in Commerce’ Requirement

The Federal Circuit reversed the cancellation of two trademarks by the Trademark Trial and Appeal Board (“Board”) and remanded for further consideration... “Use in commerce” under the …

Supreme Court to decide if disparagement provision in the Lanham Act is invalid under the First Amendment?

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in …
By Eric Ball & Moira Lion
3 years ago 0