A Good Day for Free Speech Advocates: Supreme Court Holds Unconstitutional Federal Trademark Law’s Anti-Disparagement Provision

By Andrew F. Halaby In Matal v. Tam, the United States Supreme Court held unconstitutional, under the First Amendment, the “disparagement clause” of 15 U.S.C. § 1052(a), which permits denial of a trademark registration application by the United States Patent and Trademark Office on the ground that it may “disparage . . . or bring . . . into contemp or disrepute” any “persons, living or dead.”  The PTO had rejected under that statute an Asian-American dance-rock band’s application to register the band’s name, “THE SLANTS.” All of the eight justices considering the rejection – new Justice Gorsuch playing no   Read More »

Posted in IP and Technology Litigation | Tagged ,

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Octane Fitness and Highmark Apply to Ninth Circuit Attorney Fee Awards under the Lanham Act

On October 24, 2016, the Ninth Circuit Court of Appeals, sitting en banc, held that district courts analyzing a request for attorney fees under the Lanham Act should consider the totality of the circumstances, as set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).  Section 35(a) of the Lanham Act provides that “he court in exceptional cases may award reasonable attorney fees to the prevailing party.”  In determining whether a case is “exceptional,” courts in the Ninth Circuit are now required to apply a less “precise rule or formula,” and look to   Read More »

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

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Ninth Circuit Affirms Jury Verdict Based on Trademark Tacking

Parties competing for rights to a trademark must establish they used the trademark first, or that they have “priority.”  One way to prove priority is through “tacking,” which applies the first use date of a similar mark to the mark at issue. On November 22, 2013, in Hana Financial, Inc. v. Hana Bank, the Ninth Circuit affirmed a jury’s verdict that relied on tacking to find the defendant used the trademark before the plaintiff and was not liable for trademark infringement. The Ninth Circuit maintains that tacking is an “exceptionally narrow” doctrine; it is a question of fact—a “highly fact-sensitive   Read More »

Posted in Trademark Litigation | Tagged , ,

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The Presumption of Irreparable Harm in Patent, Copyright, and Trademark Infringement Cases

Traditionally, a plaintiff seeking a preliminary injunction in a trademark infringement case has been entitled to a presumption of irreparable harm if the plaintiff can prove likelihood of success on the merits.  In 2006, the Supreme Court decided eBay, Inc. v. MercExchange, L.L.C.  The Court there rejected a categorical rule that a patent infringement plaintiff is entitled to a permanent injunction if it proves infringement.  Instead, held the Court, even a patent infringement plaintiff must show (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that   Read More »

Posted in Copyright Litigation, Patent Litigation, Trademark Litigation | Tagged , , ,

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