Tag Archives: Supreme Court

Supreme Court Rules “Disparagement Clause” of the Lanham Act Unconstitutional

On June 19, 2017, the Supreme Court ruled that the 70-year-old federal ban on offensive trademarks is unconstitutional.

The “disparagement clause” of the Lanham Act prohibits registration of trademarks “which may disparage . . . or bring . . . into contempt or disrepute” any “persons, living or dead, institutions, beliefs, or national symbols.”  Simon Tam sought federal trademark registration for THE SLANTS, the name of his Portland-based Asian-American band.  The name, according to Tam, was an attempt to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity.  Citing the disparagement clause, the Examining Attorney refused registration on the basis that “there is . . . a substantial composite of persons who find the term in the applied-for mark offensive.”  Tam appealed, and the Federal Circuit reversed, finding the disparagement clause unconstitutional under the First Amendment.  The government appealed, and the Supreme Court has now affirmed. Continue reading

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USPTO To Hold Roundtable on Fraudulent Trademark Solicitations

The USPTO has announced that on July 26, 2017, the Trademark Organization and the Trademark Public Advisory Committee plan to hold a roundtable discussion on fraudulent trademark solicitations.

Fraudulent trademark solicitations have been a problem for trademark holders around the world for decades. Scammers typically mine trademark application and registration information available online from the USPTO public database to obtain contact information of rights holders or their agents. Solicitations often mimic the look of official government documents, or appear to be from companies whose names falsely suggest a connection with the USPTO, including terms such as “United States,” “Registration,” “Office,” or “Agency.” Typical solicitations include offers for legal services, monitoring services, or offers to record trademarks with customs officials, all in exchange for substantial fees. The cost of these scams to trademark holders can be substantial. In late December of last year, the Department of Justice reported on a mass-mailing scam that netted approximately $1.66 million from U.S. rights holders, and has resulted in five convictions to date. Continue reading

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Supreme Court Holds Cheerleader Uniform Designs Are Copyrightable

On March 22, 2017, the Supreme Court held that decorative designs affixed to cheerleader uniforms may be entitled to copyright protection under the Copyright Act of 1976. The decision determined the proper approach to analyzing whether and how pictorial, graphic, or sculptural features can be identified separately from the utilitarian aspects of a useful article, potentially making such features eligible for copyright protection.

Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc. (together, “Varsity Brands”) design, manufacture, and sell cheerleading uniforms.  Varsity Brands holds numerous U.S. copyright registrations for uniform designs, including the following:  Continue reading

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