IP Law Bulletin

Building upon our recent note concerning general international intellectual property protection considerations, this article describes how foreign IP expansion efforts might play out in a case study format. The company, a hair restoration lotion manufacturer named WonderFlo Tonight, is fictional, but the fact pattern is derived from real world situations encountered by businesses as they seek to establish and protect their intellectual property in foreign markets.

Key Takeaway: Key business considerations relevant for choosing between patents and trade secrets include:  (1) Need for transfer of IP rights; (2) Life cycle of the product or service; (3) Cost of IP protection; and (4) Other business considerations.

The Supreme Court held in Matal v. Tam that the Lanham Act’s provision forbidding the registration of disparaging trademarks is unconstitutional in violation of the First Amendment. The Court explained that “[s]peech may not be banned on the ground that it expresses ideas that offend.”

The public comments have been considered and the Trademark Trial and Appeal Board rule changes proposed in April 2016 and summarized in this blog post have been confirmed with only minor exceptions. The new rules will be effective on January 14, 2017, and will apply to all opposition and cancellation proceedings active on that date or subsequently filed.

On April 4, 2016 the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking that details proposed changes to the USPTO’s rules of practice for trademark application opposition and registration cancellation proceedings. Public comments are due by June 3, 2016. While it is possible that the rules will be modified further before being finalized based upon public comment, it is likely that the rules ultimately will take effect substantially in the form published.

On December 22nd the Court of Appeals for the Federal Circuit issued its sua sponte en banc In re Tam decision regarding the constitutionality of the “disparaging” marks bar under Section 2(a) of the Lanham Act.  A Federal Circuit panel previously upheld a Trademark Trial and Appeal Board (the TTAB) decision affirming the refusal under the disparaging marks provision of Section 2(a) of a trademark application for the mark "THE SLANTS." Would a “substantial composite” of Asians find the phrase THE SLANTS disparaging?  The answer was “yes”, as detailed in our earlier blog posting on this case.  Judge Moore, writing for the Federal Circuit panel in initially affirming the appeal decision, however, raised the question as to whether the court should consider the constitutionality issues about the registration standard raised by Mr. Tam on an en banc basis.  Her peers agreed to do so.

Summary: Recently the United States Trademark Trial and Appeal Board (TTAB) considered the implications of competing filings that occurred on the same day. In particular, a trademark applicant filed an express abandonment of its trademark application, and, later that same day, a third party filed an opposition against the trademark application. While the TTAB agreed with the applicant and both dismissed the opposition without prejudice and allowed the application to be abandoned without prejudice, the timing of the filings played no role in reaching this decision. To the contrary, the TTAB stated that it “shall not take cognizance of fractions of a day” and assumed that the parties’ opposition and express abandonment filed on the same day were filed at the same instant. What impact did the decisions being “without prejudice” as opposed to “with prejudice” have on the parties though?

Summary: It is rare that legal decisions are reported on by “The Worldwide Leader in Sports,” but that is exactly what happened when the U.S. District Court for the Eastern District of Virginia affirmed the U.S. Patent and Trademark Office Trademark Trial and Appeal Board’s decision to cancel six trademark registrations owned by Pro-Football, Inc., which does business as The Washington Redskins.  The marks were canceled on the basis that the marks “may disparage” a “substantial composite” of Native Americans.  However, does a ruling based on these grounds fly in the face of the First Amendment?  An upcoming decision by an en banc Federal Circuit may soon tell us when it determines whether an Asian-American band is allowed to register the trademark “THE SLANTS” for entertainment in the nature of live performances by a musical band.