Weekly IP Buzz for the week ending February 1, 2019
Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending February 1, 2019.
Can One Obtain Registration of Scandalous Marks? The Supreme Court to Decide, Again
In January, the U.S. Supreme Court agreed to preside over a trademark case challenging the initial rejection of the mark “FUCT” for use in connection with the sale of clothing based on the mark being considered “scandalous.” In its original rejection of the mark, the U.S. Trademark Office reasoned that the mark was intended to be a homonym for vulgarity, and as such, violates U.S. trademark law, which prohibits the registration of scandalous marks.
Upon receiving his initial rejection, designer Erik Brunetti appealed the rejection and actually won on appeal. In an unusual move, however, both Brunetti and the court agreed to ask the Supreme Court to rule on the matter as the Supreme Court has made significant changes to U.S. trademark law with its last few rulings.
Many experts in the field expect the Supreme Court to rule similar to a previous ruling last year and find that the “FUCT” marks are protected free speech. However, experts note that the Supreme Court may specifically want to decide the case to provide guidance regarding the petitioner’s use and intent behind the mark.
It will be interesting to see how the Supreme Court handles the balancing of free speech and the registration of scandalous marks that are intended to be vulgar.
Read the full article here.
Trademarks: The Washington Redskins and an Asian-American Rock Band
Most people are familiar with the decades-long controversy surrounding the Washington Redskins’ name and the cancellation of its trademark registrations on the ground that the term REDSKINS is disparaging. One of the issues in that case questions the constitutionality of the prohibition against registration against disparaging terms. Although the Washington Redskins case has most famously addressed this issue, a recent decision involving a fairly unknown Asian-American rock band, THE SLANTS, may prove to be the game changer.
A federal trademark application for “THE SLANTS” was refused registration on the ground that the mark is disparaging. The Trademark Trial & Appeal Board (“TTAB”) affirmed the refusal to register and the Federal Circuit affirmed the TTAB’s decision on appeal. Merely a week later, however, the full Federal Circuit- acting on its own motion- vacated the panel decision and has set the matter for an en banc hearing on one question: Does the bar on registration on disparaging terms violate the First Amendment?
Read more here.
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Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and business law firm located in Dallas, Texas. He also co-founded Project K, a charitable movement devoted to changing the world one random act of kindness at a time, and publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys.
Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer