February 04, 2016
Authored and Edited by Margaret A. Esquenet
The reverberations of last month’s Federal Circuit decision in In re Tam, which ruled the Lanham Act’s Section 2(a) ban on the registration of “disparaging” trademarks unconstitutional, are beginning to be felt. In In re Brunetti, the TTAB had refused the applicant’s trademark application for FUCT as scandalous and immoral, which applicant then appealed to the Federal Circuit. On January 21, 2016, the USPTO conceded in a letter brief that the Federal Circuit’s reasoning in Tam also requires invalidation of the Lanham Act’s prohibition on the registration of scandalous and immoral marks. Although the USPTO was clear that it believes Tam was wrongly decided, it acknowledged that the Court’s opinion in Tam effectively foreclosed any constitutional distinctions that could be made between the two parts of Section 2(a). Accordingly, the USPTO recommended that the case be remanded to the Board for further proceedings.
The USPTO further noted that it is considering whether to seek review of Tam at the Supreme Court, where it may argue, among other things, that “under reasoning less sweeping than that adopted in Tam, the bar on registration of scandalous and immoral marks would survive even if the bar on registration of disparaging marks were held invalid (or vice versa).” The USPTO’s letter brief makes clear that, though it has lost at the Federal Circuit, it may not be giving up its Section 2(a) fight.
The case is In re Brunetti, No. 2015-1109.
disparagement, United States Court of Appeals for the Federal Circuit (CAFC), In re Tam, Trademark Trial and Appeal Board (TTAB)
Copyright © 2016 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
INCONTESTABLE® Blog
April 4, 2024
INCONTESTABLE® Blog
Winning the Battle but Not the War: Disclaimer Requirement Overturned, Section 2(d) Objection Upheld
March 28, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.