The Trademark Reporter's "Annual Review of U.S. Trademark Cases"
The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Sixty-Seventh Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here).
Ted Davis declares that trademark practitioners may be living through "the most dynamic period of case law since the founding of the republic." In the past 18 months or so, the Supreme Court has accepted four cases for review and decided three of them. [Can you name them? - ed..] Lower federal courts also produced a burst of decisions in the trademark field, notably involving the rights of plaintiffs, especially athletes, to control authorized uses of their personas, and the availability of a presumption of irreparable harm in false advertising cases. But I will not attempt to summarize Ted's exhaustive review in this briefest of blog posts.
Back at the TTAB, with its narrow focus on registrability, things were less dramatic. In one case of great interest to yours truly, the Board upheld a rare claim under Section 14(3) of the Lanham Act, ordering cancellation of a registration on the ground that the owner used the mark to misrepresent the source of the goods (only to have the decision overturned last month by the Eastern Virginia district court). In another case of first impression that involved yours truly, the Board ruled that Section 18 of the Lanham Act permits a petition for rectification of a color mark registration to limit the scope of the mark to the actual color in use. [To paraphrase the late Lesley Gore, it's my blog and I'll crow if I want to!]. Another case worth watching is the pending appeal from the Board's In re Tam decision concerning THE SLANTS, in which (along with the pending action for review of the REDSKINS case) the First Amendment may ultimately play a critical role.
TTABlog note: Did Justice Sotomayor's elevation to the Supreme Court have any influence on this recent willingness of the Court to take trademark cases, since she practiced at least in part in the trademark field? I'll ask her next time I see her.
Thanks again to The Trademark Reporter for granting permission to provide a link to this issue, which is Copyright © 2015 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 105 TMR 1 (January-February 2015).
Text Copyright John L. Welch 2015.