The Trademark Reporter's 2017 "Annual Review of U.S. Trademark Cases"

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Sixty-Ninth Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here). The issue is dedicated to the late Allan S. Pilson.

Ted Davis observes that the U.S. Constitution loomed large over trademark jurisprudence during the past year. For the first time in 138 years (and only the second time in U.S. history) the Supreme Court is considering the unconstitutionality of a federal trademark statute. Lower courts took on not only First Amendment issues, but also the Seventh Amendment's right to trial by jury trial and the role of the Eleventh Amendment's grant of sovereign immunity in trademark litigation against a state.

The TTAB, of course, does not assess the constitutionality of the Lanham Act, but merely applies its provisions to the cases at hand. The USPTO, while awaiting the outcome of the Tam case, has suspended the examination of all pending cases involving issues of disparagement and scandalousness under Section 2(a).

As Ted Davis notes, the Board hewed to its strict position regarding fraud, leaving its Nationstar v. Ahman decision of 2014 as the only case in which the Board has found fraud since In re Bose was handed down by the CAFC in 2009. But the Board made a surprising departure from its usual position that gives significant weight to concurrent use agreements when assessing likelihood of confusion. In Bay State Brewing, it rejected such an agreement in a case involving two marks for beer because the agreement did not "fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods."

The CAFC's decisions in Juice Generation and Jack Wolfskin brought a relaxation of the Board's approach to third-party use and registration evidence offered to show that a given mark is weak. When the number of uses and or registrations are substantial, the court held, this evidence may have probative value "on its face," even without proof of specifics regarding use of the third-party marks.

Thanks again to The Trademark Reporter for granting permission to provide a link to this issue, which is Copyright © 2017 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 107 TMR 1 (January-February 2017).

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Text Copyright John L. Welch 2017.