The Supreme Court recently held that the Lanham Act's disparagement clause is unconstitutional under the First Amendment's free speech clause. The court explained that the disparagement clause "offends a bedrock First Amendment disparagement principle". Trademarks cannot be denied federal registration or be cancelled merely because they offend. Assuming that they otherwise qualify, offensive trademarks are entitled to the substantial benefits of federal trademark registration.
The US Supreme Court recently heard oral argument in Lee v Tam. The decision in this case will address whether Section 2(a) of the Lanham Act, which permits the US Patent and Trademark Office to refuse to register 'disparaging' trademarks, is constitutional under the First Amendment. It is difficult to tell from the oral argument how the Supreme Court will decide this case.
The Trademark Trial and Appeal Board recently reiterated its position that a product or service which is legal at the state level cannot qualify for a federal service mark registration if the product or service is illegal under federal law. This ruling, which is especially relevant in view of the growing number of states legalising marijuana, demonstrates the growing practice of the US Patent and Trademark Office to look beyond the language used by applicants to determine a hidden agenda.
In a rare decision resulting in trademark registration status for a colour mark, the Trademark Trial and Appeal Board (TTAB) recently found the colour white to be registrable. The TTAB noted that while a mark comprised of a single colour cannot be inherently distinctive, a product's colour can be protected as a trademark and acquired distinctiveness can be found for a colour in conjunction with a product. Nonetheless, the process of obtaining colour registrations remains difficult.
In another chapter chronicling the relationship between functionality and trademarks, the Trademark Trial and Appeal Board (TTAB) recently found that an application claiming a motion mark depicting a specific product configuration was functional, thereby making the mark unregistrable. The TTAB considered four factors when analysing the functionality of Loggerhead Tools, LLC's trademark application and affirmed the refusal on all factors.
In an instructive decision for trademark applicants relying on social media to help advertise and promote their products and services, the Trademark Trial and Appeal Board recently concluded that advertising and promoting via a social networking website does not, in and of itself, support a trademark registration for such services, unless the applicant is in the business of providing such services.
The Trademark Trial and Appeal Board recently concluded a nine-year battle between Mini Melts, Inc and Reckitt Benckiser LLC, refusing the applicant's mark on the basis of descriptiveness. The decision warns trademark applicants seeking to register an arguably descriptive mark on the grounds of acquired distinctiveness that advertising and sales evidence may be insufficient to support their claim.
The Trademark Trial and Appeal Board recently utilised the relevant factors from In re EI du Pont de Nemours & Co to determine likelihood of confusion between the HOUSEBOAT BLOB mark and three other pertinent marks on the Principal Register. Despite some differences in sound, appearance and meaning, the marks created commercial impressions that were sufficiently similar to be likely to give rise to confusion.
The Trademark Trial and Appeal Board recently addressed claims of abandonment, asserting that an intent-to-use applicant need not use its mark until it files the statement of use, and that a company's use of its subsidiary's trademark does not inure to the subsidiary's benefit when the parent company controls the nature and quality of the products sold under the mark.
The Trademark Trial and Appeal Board recently decided that a consent agreement between parties is not dispositive when determining whether a trademark is likely to cause confusion. Instead, the determining entity needs to look at the entirety of the relevant factors and determine whether other factors for likelihood of confusion outweigh the existence of the consent agreement.
The Trademark Trial and Appeal Board recently decided that a foreign-language translation of a mark registered in English is not the 'same mark' as the previously registered mark. This decision should encourage applicants seeking a foreign-language mark with a registered English translation to offer substantial evidence that consumers would recognise the foreign-language mark as the 'same mark' as the registered mark.