Tag Archives: Lanham Act

Cert. Roundup:

  • ABA (as amicus) Asks the Supreme Court to Adopt a Flexible Rule for Recapture of Profits in Trademark Cases

  • Intellectual Property Owners Association (as amicus) Argues That a Willfulness Requirement Is Consistent with the Statute and Principles of Equity

The American Bar Association (“ABA”) filed an amicus brief with the Supreme Court in support of the petitioner in … Continue Reading

Cert. Roundup: Romag’s Opening Brief: Imposing a Willfulness Requirement to Recapture Profits is Inconsistent with Statute, Principles of Equity, and the Purposes of the Lanham Act

In June 2019, the United States Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. As set forth in our previous blog post, Romag Fasteners Inc. (“Romag”) seeks to have the Court resolve a longstanding circuit split on the issue: “[w]hether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), … Continue Reading

Supreme Court: Disparaging Speech Protected By First Amendment; Lanham Act Section 2(a) Unconstitutional: A Win for the Slants and the Skins

In a unanimous (albeit fractured) decision written by Justice Alito, the United States Supreme struck down a provision of the Lanham (Trademark) Act barring registration of “disparaging” trademarks, handing a victory to Asian-American rock band The Slants. In Matal v. Tam, No. 15-1293 (June 19, 2017), the Court held that the Lanham Act’s prohibition on registering federal trademarks that … Continue Reading

Supreme Court Grants Cert. in USPTO Appeal of Slants Decision: Whether The Ban On Offensive Trademarks Violates The First Amendment

The Supreme Court granted the United States Patent and Trademark Office’s petition for certiorari in In re Tam, 117 USPQ2d 1101 (Fed. Cir. 2016), discussed here and here. In that case, the USPTO denied registration of an application to register the trademark THE SLANTS for a rock/dance on the grounds that it was offensive to Asians or Asian-Americans.… Continue Reading

Ninth Circuit Revives Trader Joe’s Federal Trademark Claims Brought In Washington Against “Pirate Joe’s” Operating In Canada

In Trader Joe’s Company v. Michael Norman Hallatt, the Ninth Circuit recently found that Trader Joe’s allegations of infringing conduct occurring within Canada supported a cognizable claim under the Lanham Act.

In particular, Trader Joe’s, a well-known American grocery store chain, filed suit in federal court in Washington State in 2013, alleging trademark and unfair competition claims under the … Continue Reading

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