The Trademark Reporter's 2016 "Annual Review of U.S. Trademark Cases"

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Sixty-Eighth 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 has no doubt that the most important development of the year was the Supreme Court's decision in B&B Hardware, Inc. v. Hargis Industries, wherein the Court ruled that determinations by the TTAB on likelihood of confusion may have issue-preclusive effect in later infringement litigation. Also of significant impact was the CAFC's decision in In re Tam, deeming the disparagement provision of Lanham Act Section 2(a) unconstitutional as violative of the Freedom of Speech clause of the First Amendment. The REDSKINS case, now on appeal at the Fourth Circuit, has garnered more widespread attention, but although the TTAB's decision ordering cancellation of six REDSKINS registrations survived a constitutional challenge at the district court level, the appellate court may take a different view in light of In re Tam. These and many other cases are perceptively discussed in Ted's Introduction and in Section III of this article.

Back at the TTAB, things were somewhat less earth-shaking. The Board sustained a fraud claim for the first (and still only) time since the CAFC's seminal 2009 ruling in In re Bose. On the dilution front, the Board made it clear that the defense of parody is unavailable in the dilution-by-blurring context. In a rare case involving trade dress for services, the Board found a monster-shaped truck to be inherently distinctive for entertainment services. The CAFC's ironed out a kink in the Board's genericness jurisprudence, ruling in the PRETZEL CRISPS case that there is only one test for genericness, not two different tests depending on whether the mark at issue is a compound word or a phrase. And of course, the most publicized TTAB decision was its REDSKINS ruling, discussed briefly above. All this and more will be found in Sections I and II of this article.

TTABlog note: Thanks once again to The Trademark Reporter for granting permission to provide a link to this issue, which is Copyright © 2016 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 106 TMR 1 (January-February 2016).

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Text Copyright John L. Welch 2016.