Andrea Shannon (US)

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The Slants Win: SCOTUS rules “Disparaging” trademark provision unconstitutional

On June 19, 2017, the United States Supreme Court issued a much-anticipated decision, holding that the so-called “disparagement clause” of the Lanham Act is an impermissible restriction on free speech under the First Amendment. The ruling is the culmination of years of litigation, and clears the way for Simon Shiao Tam and the Slants to … Continue reading

U.S. Trademark fees increase on January 14

On January 14, 2017, the U.S. Patent & Trademark Office (USPTO) will implement a number of fee increases for trademark applications and other trademark filings. A full schedule of the fee changes is available on the USPTO’s website. As we previously reported, the USPTO proposed most of these fee changes last summer with a period … Continue reading

Update: INTA files amicus brief with SCOTUS in Slants case

On December 16, 2016, the International Trademark Association (“INTA”) filed an amicus brief with the U.S. Supreme Court in support of Simon Tam, founder of the Slants. Lee v. Tam, No. 15-1293, Br. Of Amicus Curiae Int’l Trademark Assoc. INTA—a global association comprising more than 7,000 trademark owners and legal practitioners—urged the Court to uphold … Continue reading

USPTO files opening brief in Slants case

The First Amendment does not require the government to support disparaging speech, the U.S. Patent and Trademark Office (“USPTO”) argued in its opening brief filed last week in the “Slants” trademark case currently pending before the Supreme Court. Lee v. Tam, No. 15-1293, Pet. Brief at 20 (Nov. 9, 2016).   Background As we’ve previously … Continue reading

Houston College of Law enjoined from using name

On Friday, October 14, 2016, a federal judged ruled that Houston College of Law must change its name, at least for the duration of pending trademark litigation.  The temporary injunction stems from a trademark infringement suit the University of Houston brought against Houston College of Law, a private law school which until June had been … Continue reading

That’s My Mark! Enforcing Trademark Rights on Social Media

It is no doubt surprising and frustrating for brand owners when they find that someone has appropriated their trademarks on social media. A few of the common scenarios include: small competitors modifying logos and passing them off as their own; unauthorized distributors using logos and trademarks on their social media advertising; and social media users … Continue reading

USPTO announces new trademark use audit program

The U.S. Patent and Trademark Office (“USPTO”) has proposed a rule change that would enable it to conduct random audits of affidavits or declarations of use filed under sections 8 and 71 of the Trademark Act as a permanent extension of the pilot program. See Federal Register, Vol. 81, No. 120 (Wednesday, June 22, 2016) … Continue reading

U.S. Trademark Office proposes fee increases

Brand owners should be aware that the U.S. Patent and Trademark Office (USPTO) has proposed an increase of its trademark registration and filing fees. The proposed rule was published in the Federal Register, with the period for public comment expiring on July 11, 2016. See Trademark Fee Adjustment. The USPTO stated that the proposed fee … Continue reading

Redskins seek to join Slants case at Supreme Court

While football teams and fans across the country are gearing up for this weekend’s NFL draft, the Washington Redskins will be preparing for another potential showdown—this one at the Supreme Court. The Redskins petitioned the high court on Monday to hear the case over the team’s controversial trademark registrations. Pro-Football, Inc. v. Blackhorse, et. al., … Continue reading

PTO not required to register disparaging trademark until cert deadline passes

In December 2015, the Federal Circuit struck down the “disparagement” clause of §2(a) of the Lanham Act on First Amendment grounds. However, according to a recent ruling from the court, the USPTO is not required to register disparaging trademarks just yet. In re Tam, No. 16-121 (Fed. Cir. Mar. 30, 2016) (denying petition for writ of … Continue reading

Federal court affirms cancellation of Redskins’ trademark

A federal district court in Virginia has affirmed the U.S. Patent and Trademark Office’s (“USPTO”) 2014 decision to cancel the Washington Redskins’ federal trademark registrations pursuant to Section 2(a) of the Lanham Act. Mem. Op., Pro-Football, Inc. v. Blackhorse, et. al., No. 1:14-cv-01043-GBL-IDD (E.D. Va. July 8, 2015). This provision of the federal trademark law … Continue reading

Consumer confusion with marketing on social media

Social media often serves as a powerful mechanism that trademark owners can employ to promote and expand their brands, but a case currently pending in the Southern District of California illustrates just how easily social media can also be used to spread consumer confusion. In Faegin v. LivingSocial, Inc., No. 14CV00418-WQH-KSC, 2014 WL 5307186, at … Continue reading
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