Reconsidering First Amendment Challenges to Trademark Disparagement Refusals

On April 20, 2015, a Federal Circuit panel rejected a first amendment challenge to a refusal to register the trademark, THE SLANTS, which a trademark examiner deemed disparaging under 15 U.S.C. § 1052(a). A mere seven days later, the Federal Circuit voted to vacate that decision and rehear the argument en banc. The Federal Circuit has long held that, because a refusal to register does not prevent the trademark owner from actually using the mark, the First Amendment is not implicated. In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981). The Federal Circuit’s decision to reconsider its well-settled, though often scrutinized, precedent is interesting, especially in light of the recent cancellation of the Washington Redskins trademark on the same basis.

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Cancelled Trademark Registrations Still Require Due Diligence

Federal trademark registration provides a number of advantages (mostly presumptive evidentiary advantages in Court) to the trademark owner, and, because of those advantages, registration is unquestionably recommended. However, the fact that a trademark is registered does not mean that the registrant is in the clear and immune from litigation. Nor does the fact that a potential trademark is unregistered mean it is available for the taking.

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Raw Statistics Used to Prove “Famous” Trademark Require Context

In a recent Trademark Trial and Appeal Board (TTAB) opposition proceeding filed by the owner of the trademark AMERICA’S NEXT TOP MODEL, the well-known reality show, one of the issues concerned the opposer’s claim that its trademark was “famous.”  A declaration that the mark is famous entitles the mark to a broader scope of legal protection. In support of its allegation, the opposer offered evidence that:

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Trademarks’ Conflict-Free Co-Existence is Factor in Analyzing Likelihood of Confusion

Two trademarks that coexisted, conflict-free, for seventeen years prior to a recent trademark opposition proceeding presented no likelihood of confusion under the du Pont test, according to the Trademark Trial and Appeal Board (TTAB). ProMark Brands, Inc. (“ProMark”) sought to register its trademark, SMART BALANCE, for, among other things, frozen foods.  GFA Brands, Inc. (“GFA”) opposed that registration, arguing SMART BALANCE presented a likelihood of confusion with its previously registered trademark, SMART ONES, also for frozen foods.

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