The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: “The Seventieth Year of Administration of the Lanham Act of 1946,” by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here). The issue is dedicated to the late Arthur J. Greenbaum.
In his Introduction, Ted Davis observes that in Matal v. Tam, a case that will be remembered “fondly or otherwise,” the Supreme Court invalidated a federal intellectual property statute for only the second time, the first beingThe Trademark Casesin 1879. The latter decision had significant consequences: trademark owners lacked federal protection until passage of the Trademark Act of 1905. Tam is not likely to have such a dramatic impact, since few provisions of the Lanham Act are viewpoint discriminatory. Some content-based restrictions, however, are or may be on the ropes: for example, the scandalousness provision of Section 2(a).
Ted also notes the TTAB’s strong stand, in view of the federal Controlled Substances Act, against registration of marks used (or intended to be used) for marijuana-related products and services. An unexpected flurry of surname refusal cases under Section 2(e)(4) signaled a shift in the Board’s focus to consumer perception rather its previous, more mechanical approach. And the Board continues to reject fraud claims, in contrast to the more receptive approach of the federal courts on that issue.
Finally, Ted notes that the Supreme Court has failed to resolve the issue that has long split the lower courts: whether a prevailing plaintiff in a trademark suit must show willful misconduct by the defendant infringer in order to obtain an accounting of profits.