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

Supreme Court Holds that Trademark Licensee Retains Rights After Rejection of License by Licensor in Bankruptcy

In a long-awaited, nearly unanimous opinion written by Justice Kagan, resolving a circuit split described in our earlier blog post, the Supreme Court reversed the First Circuit and held that rejection by the licensor of a trademark license under Section 365 of the Bankruptcy Code does not divest the licensee of its rights to continue to use the trademark under the license.  Rejection has the same effect as a breach of the contract outside of bankruptcy and cannot be used to rescind the grant of the license.  The licensee’s damages may be limited to prepetition, unsecured status, but that is not all the licensee is entitled to. The opinion was not unanimous not for any substantive reason, but because Justice Gorsuch felt that the dispute was moot, notwithstanding the majority’s explanation that the licensee still had a claim for money damages that the decision could have an impact on, which kept the matter live on appeal.  Continue Reading

USPTO Issues New Examination Guide for Examination of Marks for Cannabis and Cannabis-Related Goods and Services

The newly released Examination Guide  for trademark examiners at the US Patent and Trademark Office (“USPTO”) entitled “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill” clarifies that applications for hemp and hemp derived products, including CBD, filed after Dec. 20, 2018 as either intent-to-use or having a first use date on or after Dec. 20, 2018 will generally be eligible for trademark registration.  Applications for marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the Federal Food Drug and Cosmetic Act, even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce. The Guide additionally states that the USPTO will be requiring the description of goods explicitly to state “containing less than 0.3% THC on a dry-weight basis.”  Regarding hemp and hemp-derived product applications filed prior to Dec. 20, 2018, the USPTO will be giving these applicants the opportunity to amend their filing and first use dates to after Dec. 20, 2018. Continue Reading

Washington State Legislature Passes Bill With Major Revisions to Data Breach Notification Statute

Shortly after the proposed Washington Privacy Act (SB 5367) failed to pass the legislature, Washington is now set to revise its existing data breach law. HB 1071, which passed the legislature on April 22, 2019 and is awaiting the Governor’s signature, would substantially expand the definition of personal information, impose new breach notification requirements such as shortening the period for reporting data breaches, and make various other important revisions. These changes will increase the number of reportable breaches.  Continue Reading