In a nearly 50-page precedential opinion in a ruling of great significance to the entertainment industry, a TTAB panel of judges recently underscored the need to prove actual use in commerce in order to register a trademark, regardless of how low the standard for use under the Lanham Act has recently become.
Refusal Is an Unconstitutional Violation of Free Speech
On Dec. 15, 2017, a unanimous Court of Appeals for the Federal Circuit held that despite Appellant's mark comprising “immoral or scandalous” matter, the PTO could no longer refuse federal registration of such marks on the grounds that this refusal violated the free speech clause of the First Amendment of the U.S. Constitution.
Board Says It Doesn't Matter Whether Use Is By a Trademark Owner Or a Third Party
In a nearly 50-page precedential opinion, the Trademark Trial and Appeal Board (TTAB) panel of Judges Adlin, Heasely, and Lynch, underscored the need to prove actual use in commerce in order to register a trademark, regardless of how low the standard for use under the Lanham Act has recently become. Tao Licensing, LLC, v. Bender Consulting d/b/a Asia Pacific Beverages.
This article outlines the available options under the Trademark Trial and Appeal Board's ACR rules and discusses the strategic considerations in determining whether ACR might be advantageous, particularly in light of increasing pressure from clients to reduce costs and expedite the decision-making process.
The U.S. Court of Appeals for the Ninth Circuit decided that the Fox TV show Empire didn't violate federal Lanham Act or California trademark rights of the urban music record label Empire Distribution.
No Trademark Protection for Dirty Dancing Phrase Used in Financial Services Ad
Registering and protecting product designs is challenging. Preliminarily, trade dress cannot be registered or protected as a trademark if it is functional — if it is “essential to the use or purpose of the article or it affects the cost or quality of the article.”
In Matal v. Tam, the trademark case involving the name of the Asian-American rock band The Slants, the SCOTUS held that the portion of §2(a) of the Lanham Act, 15 U.S.C. §1052(a), that prohibits the federal registration of potentially disparaging trademarks and service marks, violated the Free Speech Clause of the First Amendment.
In Matal v. Tam, the SCOTUS held that a portion of Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a), prohibiting the federal registration of potentially disparaging trademarks and service marks, violated the Free Speech Clause of the First Amendment.
The Third Circuit has adopted McCarthy's "ownership" test in determining whether a manufacturer or distributor owns a trademark in the absence of an express agreement between the parties.
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