Supreme Court Holds Bar on Immoral or Scandalous Trademarks Unconstitutional

By: Anne M. Bolamperti and David G. Barker The Supreme Court held Monday that the Lanham Act’s bar on “immoral or scandalous” trademarks is unconstitutional under the First Amendment.  Delivering the 6-3 opinion of the Court, Justice Kagan relied on the Court’s previous decision in Matal v. Tam (discussed here), which held that the Lanham Act’s ban on “disparaging” trademarks also was unconstitutional. Respondent Erik Brunetti first sought federal registration of the trademark FUCT in connection with his urban clothing line.  Claiming use since December 1991, Brunetti’s line stands for “Friends U Can’t Trust,” but sounds like an expletive in acronym   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged , ,

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Supreme Court: Federal Government Is Not Permitted to Challenge Patents Under the AIA

By C. Matthew Rozier In a recent 6-3 decision, the Supreme Court held that the U.S. Postal Service and other federal agencies are prohibited from challenging the validity of patents post-issuance under the proceedings created by the Leahy-Smith America Invents Act (“AIA”).  The Court’s decision in Return Mail Inc. v. U.S. Postal Service reversed a Federal Circuit decision holding that the federal government is a “person” for the purposes of 35 U.S.C. §§ 311 and 321.  In reversing, the Court cited a longstanding presumption that a “person” does not include the federal government.  Importantly, the decision leaves the door open for   Read More »

Posted in IP and Technology Litigation, Patent Litigation, Post Grant Proceedings | Tagged ,

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SCOTUS Resolves Circuit Split: Trademark License Rejection in Bankruptcy Does Not Terminate Licensee’s Usage Rights

By Emily R. Parker* and David G. Barker The U.S. Supreme Court recently held in Mission Product Holdings v. Tempnology that a trademark licensor cannot revoke the right of a licensee to use a trademark by terminating a license agreement in bankruptcy. Mission licensed a trademark from Tempnology, which terminated the license after filing bankruptcy in 2015. The First Circuit held that Tempnology permissibly rejected the agreement in bankruptcy and terminated Mission’s right to use the mark. Mission appealed because the First Circuit’s decision conflicted with the Seventh Circuit decision in Sunbeam Products v. Chicago American Manufacturing, which held that a   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged , , , ,

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Supreme Court Hears Oral Argument on “Immoral or Scandalous” Trademark Prohibition

By: Anne M. Bolamperti and David G. Barker Earlier this week, the Supreme Court of the United States heard oral argument in Iancu v. Brunetti (see previous discussion here) regarding the constitutionality of the portion of Lanham Act, Section 2(a) (15 U.S.C. § 1052(a)) that prohibits the United States Patent and Trademark Office’s registration of trademarks comprising “immoral . . . or scandalous matter.”  Previously, in June 2017, the Court unanimously affirmed in Matal v. Tam that the same statute’s bar on disparaging marks was unconstitutional under the First Amendment. The PTO refused to register Erik Brunetti’s trademark application for   Read More »

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SCOTUS to Consider USPTO’s Attorneys’ Fees Policy

By Tyler J. Fortner and David G. Barker On Monday, the Supreme Court of the United States granted certiorari in Iancu v. NantKwest to resolve a circuit split concerning “expenses” a patent applicant must pay when challenging the United States Patent and Trademark Office’s (“USPTO’s”) refusal to issue a patent.  Under 35 U.S.C. § 145, the USPTO requests attorneys’ fees as expenses when applicants seek review of a denied patent application in district court, regardless of whether the applicant wins or loses. The en banc Federal Circuit held here that applicants seeking review in district court are not required to   Read More »

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