Supreme Court Grants Certiorari in Game-Changing Trademark Appeals

Continuing to feed its appetite for trademark rulings, the U.S. Supreme Court has recently granted petitions for certiorari of two Second Circuit decisions implicating trademark law. The first case could change the burden of proof for recovering an infringer’s profits as damages in trademark disputes, while the second case may limit a defendant’s ability to invoke new defenses to trademark claims. Both cases have the potential to create seismic shifts in trademark jurisprudence.

In Romag Fasteners, Inc. v. Fossil Inc. the justices will decide on an issue splitting the circuit courts: whether awards of an infringer’s profits from trademark infringement require evidence that the infringer acted willfully. The Ninth Circuit—like the Second Circuit, where this appeal originated—predicates profits awards on the plaintiff’s ability to prove that any infringement is willful. But other circuit courts do not require a showing of willful infringement for damages to be awarded. Romag argues that the “willfulness requirement sets the bar too high” by forcing mark holders to prove that infringement of their trademark was intentional. This high burden arguably fails to adequately deter trademark infringement. Ninth Circuit precedent will be reversed if the high court rules in favor of Romag, eroding mark holders’ burden of proof, thus raising the likelihood of securing meaningful monetary relief from trademark infringement. The case should be closely monitored over the Court’s next term, since it could open the door for an increase in trademark suits. Continue Reading

Pop Culture: The Patent Snappening

In 2018, Avengers: Infinity War marked several milestones, one of which was the apparent death of half of our heroes with a single snap of the fingers (i.e., the now-infamous “Snappening” by the uber-villain Thanos). In preparing to see Avengers: End Game, I re-watched Infinity War, which got me thinking about the current state of software patents. Yes, I’m a patent geek. And for anyone who’s been following software patents during the past several years, I’m sure we can agree that there is certainly an analogy between the “Snappening” and the impact of the famous/infamous Alice Supreme Court decision that issued in 2014 on software patents.  Indeed, Alice came out five years ago last week, the same amount of time between [SPOILER ALERT] the Snappening and Ant Man’s escape from the quantum realm in Endgame. The Alice decision seems to have had a similar “Snappening” effect on the software patent world, albeit not with the efficiency of Thanos. That is, seemingly half of the software patents asserted and/or prosecuted since 2014 have been invalidated or rejected under the law established by Alice. While there have been a few Federal Circuit cases that have provided glimpses of hope for software patents (e.g., Ancora and SRI International), such decisions continue to be a small minority. Continue Reading

Your Secrets Are Safe(r) With the Government Now

As we’ve discussed here before, there is significant tension between government’s duty to give the public access to its records, and the desire of those who deal with the government to keep some of their information confidential. Yesterday, confidentiality won. In a 6-3 decision, the Supreme Court overturned the Eighth Circuit’s decision in Food Marketing Institute v. Argus Leader Media and held that the government (or those that deal with it) only need to show that records are actually “confidential” to exempt them from the Freedom of Information Act (FOIA). In doing so, the Supreme Court overruled the Eighth Circuit’s (and D.C. Circuit’s) more restrictive previous test, which required an additional showing of a likelihood of substantial harm from the information’s disclosure. As now clarified by the Supreme Court, “where commercial or financial information is both customarily and actually treated a private by its owner and provided to the government under an assurance of privacy, the information is ‘confidential’ within the meaning of [FOIA] Exemption 4.”  Continue Reading

Supreme Court Finds “Scandalous” Trademark Rule Unconstitutional

The U.S. Supreme Court has ruled that the U.S. Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks violates the First Amendment of the U.S. Constitution. The ruling came in the case of Iancu v. Brunetti, an appeal from the U.S. Trademark Office’s refusal to register the trademark F.U.C.T. for a line of clothing marketed by Erik Brunetti.

In the wake of the 2017 Supreme Court decision in Matal v. Tam, finding that the “disparaging marks” provision of that same section violates the First Amendment, many people thought—rightly, as it turned out—that the Court that invalidated the interdict against disparaging marks would likely also find the ban on “dirty words” trademarks equally offensive to the First Amendment. Continue Reading