Lanham Act – IP Law Watch

Supreme Court Limits Foreign Reach of U.S. Trademark Law

Jul 03 2023

In a fractured decision, the U.S. Supreme Court held on June 28, 2023 that two key provisions of the Lanham Act that prohibit trademark infringement do not extend to conduct that occurs outside the United States. Although all nine justices agreed that the Lanham Act does not apply extraterritorially, the Justices split five-to-four on the proper extraterritoriality framework. Writing for the majority, Justice Samuel Alito stated that extending the Lanham Act to conduct that occurs outside the United States is “wrong,” even if the conduct creates a likelihood of confusion in the United States, and that the contrary rule “would give the Lanham Act an untenably broad reach that undermines our extraterritoriality framework.” In contrast, Justice Sonia Sotomayor argued in an opinion concurring in the judgment that the majority decision “significantly waters down protections for U.S. trademark owners”, and called for “Congress to correct the Court’s limited reading of the Act.” Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. _ (2023).

Show me the money: Supreme Court rules that trademark infringers may disgorge profits even if the law was not willfully violated

May 04 2020

The U.S. Supreme Court confirmed that brand owners are not required to prove willful intent before obtaining a defendant’s lost profits. On April 23, 2020, the Supreme Court resolved a longstanding circuit split and unanimously held that trademark infringers may have to hand over their profits even if they did not willfully infringe.

In Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court was tasked with determining whether the rule that a plaintiff can win a profit remedy only after showing a defendant willfully infringed its trademark can be reconciled with the statute’s plain language. Ultimately, the Supreme Court sided with the plaintiffs, Romag Fasteners (Romag), holding that:

“[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”

New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses

Dec 20 2019

On Tuesday July 31, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, and 7. They were to take effect on December 21, 2019, but will now take effect of February 15, 2020.

The impact of the rule, as implemented, is a new requirement for all trademark applicants and registrants to:

electronically file trademark applications, subsequent documents concerning trademark applications, and documents regarding registrations;
provide and maintain a working e-mail address for receiving correspondence from the USPTO for each trademark application and registration; and
provide and maintain an accurate domicile address as a backup for the USPTO to contact if an e-mail correspondence address fails to work.

U.S. Supreme Court strikes down ban on “immoral” or “scandalous” trademark registrations

Jun 25 2019

On June 24, 2019, the U.S. Supreme Court held in Iancu v. Brunetti that the Lanham Act’s prohibition on registration of “immoral” or “scandalous” trademarks violates the First Amendment. The holding was in favor of Respondent Erik Brunetti, who had been denied a trademark registration for “FUCT” in connection with various clothing items.

U.S. Court finds Adidas’ Stan Smith shoe trade dress protectable

Aug 22 2017

It’s game, set, match for Adidas when it comes to the protectable trade dress in its iconic Stan Smith tennis shoe. In a dispute between Adidas and Skechers over the “Skecherizing” of the Stan Smith shoe, the District Court for the District of Oregon denied Skechers’ motion for summary judgment finding that Adidas could show it has protectable trade dress in its well-known shoe design because the design was recognizable to consumers and not functional. Adidas America Inc. et al. v. Skechers USA Inc., D. Or (August 3, 2017) (order granting in part and denying in part motion for summary judgment).

Trademark Law Update: SCOTUS to Decide Whether Ban on Registering “Disparaging Marks” Is Unconstitutional

Nov 08 2016

Under section 2(a) of the Lanham Act, the Patent and Trademark Office (USPTO) may refuse to register any trademark that “[c]onsists of . . . matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” This spring, the U.S. Supreme Court will decide in Lee v. Tam whether this provision of the Lanham Act is facially invalid under the First Amendment. Here’s what you need to know about this important case.

Please click here to view the full alert.

By: Joanna Diakos and Thomas W. Dollar

Tag:Lanham Act