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December 23rd, 2015
Federal Court Rules that Ban on Offensive Trademarks is Unconstitutional
Here's some big news for anyone who owns -- or is contemplating registration of -- a trademark that may offend certain audiences. The Federal Circuit Court of Appeals ruled on December 22nd that a law banning the registration of disparaging trademarks is unconstitutional. The Trademark Office and the courts had relied on that law, found in Section 2(a) of the Lanham Act, to refuse registration or affirm cancellation of marks found to contain racial slurs or discriminatory phrases, such as THE SLANTS, WASHINGTON REDSKINS, and STOP THE ISLAMITIZATION OF AMERICA, among others.
In In re Simon Shiao Tam the government argued that a refusal to register a trademark under Section 2(a) does not prevent the applicant from using the trademark, and consequently does not impede free speech. However, the Federal Circuit ruled that the law -- which permits the government to deny the legal benefits of registration if it disapproves of the message conveyed by a trademark -- would penalize and inhibit free speech, in violation of the applicant's federal constitutional rights.
This decision stands at odds with the Eastern District of Virginia's ruling in Pro-Football, Inc. v. Blackhorse, which upheld the constitutionality of Section 2(a) of the Lanham Act and affirmed cancellation of six trademark registrations relating to the WASHINGTON REDSKINS football team. That decision currently is on appeal to the Fourth Circuit Court of Appeals. It remains to be seen whether that court will follow the Federal Circuit's decision, and whether the constitutionality of Section 2(a)'s disparagement prohibition ultimately will be heard by the Supreme Court.
If you have questions about these cases, or about any other trademark and brand management matters, please contact Catherine Farrelly at (212) 826 5579 or email@example.com or any other member of the Frankfurt Kurnit Trademark & Brand Management Group.
Other Intellectual Property Law Alerts
Deadline: Are Your Copyright Office DMCA Agent Registrations Up to Date?
December 31, 2017 is the deadline for certain online service providers to update their Digital Millennium Copyright Act ("DMCA") agent registrations on the US Copyright Office's new online registration system.
December 18 2017
Beware of Trademark Solicitation Scams
Trademark solicitation scams are on the rise. If you receive correspondence about your trademarks from someone other than your trademark attorneys — correspondence that looks like an invoice or an offer for trademark services — it may not be legitimate. Here's a summary of what the scams look like and what you should do about them.
September 5 2017
Boston Restaurant Could Not Enforce Geographically Descriptive Trademark Against Celebrity Chef
In a closely watched trademark battle with implications for food, beverage and other industries, a federal court has found for celebrity chef and television personality Christopher Kimball and his new media company, CHRISTOPHER KIMBALL'S MILK STREET. An allegedly competing business, MILK STREET CAFÉ, had sued CHRISTOPHER KIMBALL'S MILK STREET, arguing that Kimball's use of CHRISTOPHER KIMBALL'S MILK STREET was likely to cause confusion with MILK STREET CAFÉ.
August 30 2017