Podcasts about trademark office pto

Welcome to Supreme Court Opinions. In this episode, you'll hear the Court's opinion in Vidal v Elster.      In this case, the court considered this issue: Does the refusal to register a trademark under 15 U.S.C. § 1052(c) when the mark contains criticism of a government official or public figure violate the Free Speech Clause of the First Amendment? The case was decided on June 13, 2024. Steve Elster sought to register the trademark "Trump too small" for use on shirts and hats, drawing from a 2016 Presidential primary debate exchange. The Patent and Trademark Office (PTO) refused registration based on the "names clause" of the Lanham Act, which prohibits the registration of a mark that identifies a particular living individual without their written consent. Elster argued that this clause violated his First Amendment right to free speech. The Trademark Trial and Appeal Board affirmed the PTO's decision, but the Federal Circuit reversed. The Supreme Court of the United States reversed the Federal Circuit's decision, holding that the Lanham Act's names clause does not violate the First Amendment. The Court found that while the names clause is content-based, it is not viewpoint-based, as it does not discriminate against any particular viewpoint. The Court also noted that the names clause is grounded in a historical tradition of restricting the trademarking of names, which has coexisted with the First Amendment. The Court concluded that this history and tradition are sufficient to demonstrate that the names clause does not violate the First Amendment. The Court emphasized that its decision is narrow and does not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. The opinion is presented here in its entirety, but with citations omitted. If you appreciate this episode, please subscribe. Thank you. --- Support this podcast: https://podcasters.spotify.com/pod/show/scotus-opinions/support

This Day in Legal History: First Union FormedOn May 1, 1794, a pivotal development in labor rights history occurred in Philadelphia with the formation of the Federal Society of Journeymen Cordwainers. This organization, consisting of skilled shoemakers, marks the establishment of the first trade union in the United States. The union was created as a response to the increasingly difficult economic conditions that tradesmen faced, including low wages and long working hours.The Cordwainers, recognizing the strength in numbers, aimed to leverage their collective bargaining power to negotiate better wages and working conditions. This was a significant step forward in the labor movement, as it introduced the concept of organized labor in America. The formation of this union was not just about improving pay; it was also about dignifying the labor force and providing workers a platform to voice their concerns.Philadelphia, being a hub of commerce and trade in the late 18th century, provided the perfect setting for such an organization. The city's workshops and bustling markets meant that there was a significant demand for skilled labor, which the Cordwainers could supply. However, with industrialization beginning to take root, these skilled workers found themselves under threat from cheaper, mass-produced goods.The Federal Society of Journeymen Cordwainers set a precedent that would be followed by other trades across the country. Their actions led to the establishment of similar societies and unions, which eventually contributed to the broader national labor movement. The Cordwainers themselves faced legal challenges, particularly in 1806, when they were involved in a landmark legal case concerning the rights of workers to organize, known as Commonwealth v. Pullis. In this case, the court ruled against the union, marking one of the first legal battles over the legitimacy of trade union activities in the United States.Despite the legal setbacks, the resilience and pioneering spirit of the Federal Society of Journeymen Cordwainers inspired subsequent generations of workers to fight for their rights. Their legacy is a testament to the enduring struggle for fair labor practices and workers' rights. This day in legal history not only marks the formation of America's first trade union but also celebrates the long journey towards justice and equity in the workplace.The US Patent and Trademark Office (PTO) recently proposed a rule that would require pharmaceutical companies to submit unredacted settlement agreements involving patent challenges to a new repository. This rule is aimed to assist the Federal Trade Commission (FTC) and the Department of Justice (DOJ) in detecting antitrust violations. The proposal arose from concerns that these settlements, often reached in administrative tribunals like the Patent Trial and Appeal Board (PTAB), could be used to delay cheaper biosimilar drugs from entering the market.Evan Diamond, special counsel, noted that the PTO has not clearly defined "good cause" for accessing these agreements, which might increase third-party access and create confidentiality concerns. The fear is that the database could enable federal agencies to easily assess the frequency of potentially anticompetitive pay-for-delay settlements—a practice scrutinized under the Supreme Court's 2013 decision in FTC v. Actavis, which ruled such deals could be illegal.The proposal aligns with an executive order from President Joe Biden encouraging interagency cooperation to prevent practices that unjustifiably delay generic and biosimilar competition. This move has heightened the pharmaceutical industry's fears of increased antitrust enforcement, particularly as the FTC has been actively challenging questionable patent listings that could hinder the approval of generic drugs.Agencies like the FTC and DOJ already have certain reporting requirements under the Medicare Modernization Act for pharmaceutical companies, but the PTO's rule could capture additional agreements that do not meet existing criteria. This has sparked debate over the necessity and potential overlap of the new rule.The pharmaceutical industry, represented by major lobbyist groups like Pharmaceutical Research and Manufacturers of America and the Biotechnology Innovation Organization, has expressed strong opposition, citing concerns over the scope of PTO's authority and the ambiguity around the "good cause" criterion.This development highlights a broader regulatory push against anti-competitive practices not only in pharmaceuticals but also in other sectors like technology, where companies like Apple and Google are frequently involved in patent litigation.In summary, the PTO's proposed rule could significantly impact how pharmaceutical settlements are handled, potentially exposing companies to greater antitrust scrutiny. This measure reflects a governmental shift towards stricter oversight of patent practices to foster competition and reduce drug prices.Drug Makers Exposed to Antitrust Probes if Patent Cache AdoptedThis term, Jones Day had the highest number of attorneys—five in total—arguing cases at the U.S. Supreme Court, more than any other firm. Among them, John Gore and C. Kevin Marshall presented for the first time at the high court. Other experienced attorneys like former U.S. Solicitor General Noel Francisco, and partners Hashim Mooppan and Traci Lovitt also argued cases, contributing to the firm's visibility.In comparison, other leading law firms such as Gibson Dunn, Hogan Lovells, and Williams & Connolly had slightly fewer representatives. Gibson Dunn introduced three new attorneys to the Supreme Court lectern, including Theane Evangelis, D. Nick Harper, and Eugene Scalia, who is a son of the late Justice Antonin Scalia. Hogan Lovells' Jessica Ellsworth argued for the first time, including in a significant case regarding the abortion drug mifepristone. Williams & Connolly had Lisa Blatt argue all four of their cases, marking her 50th Supreme Court appearance.Overall, the season saw a mix of seasoned veterans and newcomers. Of the total 152 arguments made, over half were by attorneys who had appeared at least five times before, while a quarter were by first-time arguers. This highlights both the depth of experience and the ongoing introduction of new talent in the legal field's highest echelons.Jones Day Leads in Supreme Court Arguments With New FacesJohnson & Johnson (J&J) is currently seeking approval for an $11 billion settlement to resolve ongoing litigation concerning its talc-based baby powder, which has been alleged to cause ovarian cancer. This amount is a significant increase from a previous offer of $8.9 billion. J&J's strategy involves a third attempt at a bankruptcy filing, specifically a pre-packaged bankruptcy, which allows for faster processing if they secure enough creditor support—in this case, needing the approval of 75% of the talc plaintiffs.The company proposes to pay $6.48 billion over 25 years to settle ovarian cancer claims, but it has not specified how funds will be divided between existing and future claims. Additionally, J&J has nearly settled all claims regarding mesothelioma believed to be caused by asbestos in the powder. This settlement approach follows multiple failed attempts to use Chapter 11 to manage these lawsuits, which now number almost 60,000.These lawsuits have been a significant factor depressing J&J's stock price, according to analysts. Despite the legal challenges, J&J maintains that its talc products do not cause cancer and asserts that it has marketed its baby powder responsibly for over a century. A recent verdict, however, led to a $45 million payout to a family, implicating J&J and its spinoff Kenvue in the ongoing litigation.The company's persistence in seeking a bankruptcy-based settlement reflects its strategic approach to managing a complex legal challenge that impacts thousands of plaintiffs and could potentially set a precedent in how large corporations handle mass tort liabilities through bankruptcy court.J&J Seeks Backing for $11 Billion Baby Powder Cancer SettlementIn President Joe Biden's Fiscal Year 2025 Budget Proposal, a notable change is the suggestion to tax unrealized gains—value increases in assets not yet converted into cash through a sale. This marks a significant shift from traditional tax frameworks, which typically avoid taxing unrealized gains due to their complexity, potential liquidity issues, and difficulties in implementation.The rationale behind this proposal is to ensure tax fairness by capturing increases in wealth that currently escape taxation. For example, if a billionaire's stock appreciates significantly without being sold, they realize no taxable gain. However, if they borrow against these increased values, they effectively use this appreciation as a means to generate wealth without incurring tax liabilities. This situation presents a loophole where wealth can grow and be leveraged without contributing to the tax base.The FY2025 budget aims to address these disparities by proposing a tax on unrealized gains for very high-net-worth individuals and entities that have not been subject to a tax event in the last 90 years. This approach seeks to broaden the tax base without raising rates, aiming to increase tax revenue from the wealthy without additional burdens on middle and lower-income individuals.This policy shift acknowledges the need to adapt tax strategies to a changing economic environment where traditional taxation methods no longer capture all forms of wealth accumulation. The proposal suggests that a more equitable tax system requires taxing wealth as it grows, even if it is not realized through a sale. By proposing to tax unrealized gains, the administration intends to correct imbalances allowing substantial wealth to accumulate tax-free, signaling a significant potential change in how wealth is taxed in the U.S.Unrealized Gain Tax—A Coming Sea Change in FY2025 Budget Proposal? Get full access to Minimum Competence - Daily Legal News Podcast at www.minimumcomp.com/subscribe

On today's episode of the podcast we're chatting trademarks and what we've learned about the trademark filing process over the last year. In the past year we've filled 22 trademark registration applications and we've gotten back eight of those thus far. The way we kick off our trademark application process is through what we call Trademark Quickie Searches (notavglaw.com/tmquickie). A traditional law firm would charge you their trademark fee up front (typically $1k - $3k for smaller business, up to like $10k for big businesses like Procter&Gamble because there's a lot more that goes into it). Once you retain them they'll do a trademark search and chat with you about the likelihood of approval of your application and if you have over like 50% odds they'll file the application. Sometimes they'll also look into alternative trademarks for you. We do Trademark Quickie Searches first (these started at $10, then became $25, $50 and are now $100).We raised our price point to help with conversions because at $10 we were getting more people who were just curious about trademarks, not because they were interested in getting one. These searches are time intensive for us, it's not something you can just click a button to search. We are currently accepting five new TM Quickies. You can get started at notavglaw.com/tmquickie Registering a trademark at the federal level has several benefits including: • The right to exclusive nationwide ownership of the mark (except where it's being used by prior users). • The right to put the ® symbol after the mark. This puts others on notice that you own the registered mark. • A legal presumption that the registrant owns the mark. Trademark rights are given to the person who first uses the mark in commerce, not the first person to file, although filing is still a great idea rather than relying on being first inuse. “Use in commerce” means you're actually using the mark to sell a thing. If you rebrand, your new mark isn't being used in commerce until you release it to the world. What we've learned from filing trademarks: 1. Likelihood of confusion is maybe not as big of a deal as we thought it would be, at least it hasn't come up in the eight marks we've had processed by the US Patent and Trademark Office (PTO). Likelihood of confusion means they can get approved of they're likely not to be confused with someone else's mark. This tells me we can be a little bit more aggressive with the terms we file. 2. People really need to stop filing their own trademark applications. This is because trademarks are more of an art and a science and the way you craft your application impacts approval odds and your ability to enforce the application. Even if it gets approved, you may find your application doesn't have many teeth to it when you try to enforce it. And if it's not approved and you get something back from the PTO asking you to fix it, hiring a law firm to fix it is going to cost a lot more than just hiring them from the get-go. 3. Nearly descriptive marks are a big deal and something most folks wouldn't inherently think about. Some marks actually are much easier to protect than others. Some can't even be registered. Trademark law has invented a system based on the “strength” of a mark. Astrong mark is easy to protect, while a weak mark may be difficult or impossible to protect. There are five levels of strength with varying rules: Generic: No protection (ex: coffee) Descriptive: No protection unless you can prove secondary meaning. (ex: Coldstone Creamery) Suggestive: Protection (ex: Netflix) Arbitrary: High protection (ex: Apple) Fanciful: Highest protection (ex: Xerox) At a minimum we want it to be suggestive. I experienced this personally when I went to file a TM for the Contract Club. It was at first denied because it was merely descriptive of a club that you can join that provides contract templates. I worked with another attorney on this and we submitted a brief to argue against the refusal saying it's not really a club because it's a one-time payment, there's no dues and no membership screening, etc. My attorney estimated 50/50 odds of it getting approved. It did not. 4. You have to own your mark. Apply now so you don't have to change it later. This is something I already knew and want to make sure others do too. You don't want to need to change your business or product name down the line. 5. Working with the examiners isn't so bad. They want to move your application off their desk so they don't want to make the process difficult. When you file with the PTO it goes to an examiner who is an attorney. If they determine any issues they issue an office action. Sometimes it's simple like didclaiming a word, sometimes it's more complex. I found them easy to work with. 6. Getting a trademark application approved can taking even longer than I thought. I thought most applications would get approved within a year but around when we started filing trademark applications, the processing time to even get the application looked at was about eight months in the shortest end, 10 months on the longer end, and then from there you're often going to have that back-and-forth office action. Once they approve the application and it gets published, anyone who wants to oppose your trademark has up to three months to oppose the men. 7. There are a lot of great names out there to be trademarked, especially online business folks, when it comes to names for courses, memberships and online programs. I've done searched for at least 75 trademarks (and filed 22 of them). Sometimes I really surprised at some some really great names our clients have that a search showd are really free and clear. I think this will change over the next several years. The market is getting really saturated and there are some that have really obvious buzz words like "academy" but I'm still surprised about how many are available. If you've landed on a program you really like, you should get a TM application. 8. Trademark applications can be a very easy process, or a very lengthy one. We've done some minor ammendments on disclaimers, but other than that, our client TM applications have gone though pretty well. If our clients are responsive and communicative I usually get the application in within a week and then it's a waiting game from there. If you're interested in getting the process started, we are currently accepting five new TM Quickies. You can get started at notavglaw.com/tmquickie

On this day in legal history, September 29, 1983, the War Powers Act was invoked for the first time – by President Ronald Reagan in order to keep a U.S. Marine presence in Lebanon.On September 29, 1983, the U.S. House of Representatives voted 270 to 161 to invoke the War Powers Act concerning the deployment of American Marines in Lebanon for an additional 18 months. The resolution had bipartisan support, including from President Reagan. This marked the first time the House invoked the War Powers Act, a law designed to limit the President's war-making powers, which was enacted a decade earlier. The Senate would go on to approve the resolution.President Reagan thanked the House for its bipartisan vote, emphasizing the importance of cooperation between the legislative and executive branches. However, the vote also revealed concerns among lawmakers about the U.S.'s role in the Middle East and the potential for the Marines to be drawn into a larger conflict. Some representatives warned that the resolution was tantamount to a declaration of war and could result in American casualties.The debate in the House was marked by a sense of urgency but also caution. Lawmakers were torn between the risks of pulling out and staying in Lebanon, with some describing it as a "very unhappy choice." Despite reservations, the prevailing sentiment was that Congress had to back the resolution to support the President during a crisis.The War Powers Act mandates that the President must notify Congress when American troops face combat and withdraw them within 60 to 90 days unless Congress authorizes their continued deployment. Interestingly, President Reagan had not made such a notification, but the compromise resolution asserted the Act's applicability, making Reagan the first President to acknowledge its validity. This failure to abide by the initial notification requirement, coupled with the later request for an extension, in full light of history, was a major step forward in placing the power to declare war in the office of the presidency.At the time, the Senate was also debating an amendment requiring more detailed reporting from the President on the Marines' mission in Lebanon. The House had rejected a similar amendment, which would have postponed a decision on the Marines' future for 60 more days. The debate touched on the balance of power between Congress and the President, the definition of success in Lebanon, and the long-term implications of U.S. involvement in the Middle East. In the ensuing 40 years, every president has either explicitly or tacitly leaned on the War Powers Act to substantiate action abroad. By way of brief background, the War Powers Resolution mandates that the U.S. President can only deploy armed forces abroad through a formal declaration of war by Congress, "statutory authorization," or in the event of a national emergency caused by an attack on the U.S. or its armed forces. The President must notify Congress within 48 hours of committing troops to military action and cannot keep them deployed for more than 60 days without an additional 30-day withdrawal period, unless Congress authorizes the use of military force or declares war. The resolution was enacted by a two-thirds majority in both the House and Senate, overriding President Richard Nixon's veto. Despite its provisions, allegations have been made that the resolution has been violated in the past, such as George W. Bush's invasion of Iraq in 2003 and Bill Clinton's involvement in the NATO bombing of Yugoslavia in 1999. While Congress has disapproved of these incidents, no successful legal actions have been taken against any President for such alleged violations.Suffolk University Law School in Boston has a significant impact on the Massachusetts legal landscape despite its lower ranking in national lists. As of 2021, the school is the leading source of judges in the state, contributing 118 out of 440 judges on the Massachusetts bench. Additionally, three of the seven justices on the state's highest court and Judge Gustavo Gelpí of the US Court of Appeals for the First Circuit are Suffolk alumni. High-profile roles in the state, such as the Secretary of State and Chief Public Defender, are also filled by Suffolk graduates.However, Suffolk Law ranks fifth in the Boston area and falls in the bottom third nationwide, according to U.S. News & World Report. Despite this, the school has a high retention rate for local graduates, which is crucial for Boston's legal market that faces competition from larger cities like New York and Washington, D.C. In 2022, 73% of Suffolk Law graduates took their first-year job in Massachusetts, a higher percentage than graduates from Boston University, Northeastern, and Boston College law schools.The school's strong presence in the state judiciary and public service sectors has created a cycle that attracts students interested in these fields. For example, state Sen. John Cronin chose Suffolk for its reputation in producing practice-oriented lawyers with distinguished careers in public service. The school's curriculum focuses on experiential programs, allowing students to gain real-world experience.Suffolk Law School also addresses a growing need in Boston's legal market by training scientists to become lawyers for biotech clients. The school offers a nighttime program in intellectual property law, attracting individuals with doctorates in science. Firms like Foley Hoag LLP and Foley & Lardner LLP have hired these specialists and sponsored their education at Suffolk's evening program.In summary, Suffolk University Law School plays a pivotal role in Massachusetts' legal ecosystem, particularly in the judiciary and public service sectors, despite its lower national ranking. Its strategic programs and high local graduate retention rate make it a cornerstone in the state's legal community. It stands as a clear example of the shortcomings and difficulties in trying to reduce a school's educational worth to a hierarchical ranking scale. Underdog Boston School Churns Out Judges, Big Law Partners (1)The IRS has released a plan outlining its operations in the event of a government shutdown, which appears increasingly likely if Congress fails to reach a funding agreement by October 1. The plan involves furloughing approximately 60,000 IRS employees, a change from last year's contingency plan. About one-third of the workforce will continue to work, funded by the Inflation Reduction Act, special compliance funding, and user fees. Essential functions like mail processing, criminal law enforcement, disaster relief transcript processing, and income verification for mortgage lenders will continue.However, the IRS will halt all audit functions, return examinations, non-automated collections, and will not answer taxpayer phone calls. Doreen Greenwald, President of the National Treasury Employees Union, expressed concern over the stress and financial insecurity that furloughed IRS workers would face. She also warned that a shutdown could exacerbate the agency's existing backlog by preventing new hires.Initial discussions had suggested that the IRS would remain fully operational by using funds from the Democrats' Inflation Reduction Act, which are not subject to annual appropriations and are available until September 2031. During the last government shutdown in 2018-2019, many IRS operations were halted, but tax refund checks would have been issued if the shutdown extended into tax-filing season. Eileen Sherr of the American Institute of CPAs advised taxpayers to use e-filing for error-free and direct-deposit refunds, as these will be the only ones processed during a shutdown.IRS to Partially Close, Furlough Staff in Federal Shutdown (2)A National Labor Relations Board (NLRB) judge has ruled that Starbucks violated federal labor law by increasing wages and benefits only for employees in non-unionized stores across the U.S. This marks the first nationwide ruling against Starbucks, which has been resisting a wave of unionization for the past two years. The judge, Mara-Louise Anzalone, stated that Starbucks engaged in a "corporate-wide effort to manipulate its employees' free choice" by tying their pay and benefits to their willingness to avoid organizing. The ruling orders Starbucks to compensate thousands of unionized workers who were unlawfully denied increased wages and benefits.This decision is significant as it is the first to find Starbucks in violation of labor laws on a nationwide scale, as opposed to previous rulings that were limited to individual stores. The unionization campaign against Starbucks has led to nearly 350 organized cafes in 37 states, and the NLRB has filed almost 100 complaints against the company. Of these, at least 75 are still pending.Starbucks has publicly denied any legal wrongdoing and argued that increasing pay for unionized workers would itself be illegal, as federal law prohibits unilateral changes to union workers' conditions. However, Judge Anzalone dismissed this argument, stating it wasn't made in good faith. She also ruled that Starbucks' actions illegally discouraged other workers from joining the union. While the judge did not order additional training for Starbucks managers on labor laws, she did mandate that the CEO read a notice of employee rights to U.S. workers and post it in every store.Starbucks Illegally Kept Wages, Benefits From Union Workers (1)The U.S. Patent and Trademark Office (PTO) has enough funds to continue operations for about three months in the event of a government shutdown. The agency plans to use its $1.04 billion operating reserves to cover patent and trademark expenses. The PTO is primarily self-funded through patent and trademark filing fees but still requires annual appropriations from Congress. In the past, the PTO has remained open during government shutdowns, including the 35-day shutdown from December 2018 to January 2019.However, some patent attorneys have expressed concerns about the PTO's long-term ability to function if appropriations are not made. The agency's financial stability during short-term shutdowns is a change from the past when Congress would divert part of the PTO's revenue to fund other government activities. Although a provision to prevent such diversion was removed from the America Invents Act of 2011, Congress has since committed not to divert PTO fees.Legal practitioners seem largely unconcerned about a potential shutdown affecting the PTO, as the agency has successfully weathered past shutdowns. The Patent Public Advisory Committee and PTO officials have planned for such contingencies by increasing the reserve fund. If a shutdown were to last beyond the reserve's capacity, most PTO employees would be furloughed, and the agency's regional offices would close.A prolonged shutdown could also affect the rulemaking process, including proposed changes to the Patent Trial and Appeal Board and requests for comment on artificial intelligence issues. Other agencies involved in the rulemaking process, like the Office of Information and Regulatory Affairs, could be impacted by furloughs. Finally, while the PTO would continue to collect fees, it would not be able to use those funds without congressional authority.Patent Office Has Funds to Stay Open Three Months Amid ShutdownThe U.S. Supreme Court is set to hear a case involving Zackey Rahimi, who argues that his Second Amendment rights were violated by a law preventing individuals under a domestic violence restraining order from owning firearms. This case could have broader implications for where guns can be carried, including in malls and parks. The court's decision will be its first opportunity to clarify its 2022 ruling in New York State Rifle & Pistol Ass'n v. Bruen, which has led to varying interpretations in lower courts.In Bruen, the Supreme Court established that the government must prove a law restricting gun access aligns with the nation's historical tradition of firearm regulation. However, this has led to inconsistent rulings, as judges lack clear guidance on how closely a modern law must resemble historical laws to pass constitutional muster. The ambiguity has particularly affected laws prohibiting gun possession in "sensitive places" like parks and libraries.Judges have been divided on what counts as a "sensitive place," leading to contrasting rulings. For example, a New Jersey judge ordered the state to stop enforcing provisions that prohibit gun possession in parks and libraries, while a similar challenge in New York received the opposite treatment. Legal experts anticipate that the Rahimi case could provide much-needed clarity on how to apply the Bruen test.If the court sides with Rahimi, it could have far-reaching implications for existing gun legislation, including laws about carrying firearms in "sensitive places." The case also raises questions about linking modern rights to historical contexts that did not contemplate contemporary issues, such as domestic violence, which was not prosecuted as a crime until the late 20th century.New Supreme Court Case a Test for Carrying Guns in Malls, Parks Get full access to Minimum Competence - Daily Legal News Podcast at www.minimumcomp.com/subscribe

On May 4, 2020, the U.S. Supreme Court heard argument in United States Patent and Trademark Office v. Booking.com B.V., a case presenting the question whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.In 2011 and 2012, Booking.com sought trademark protection for its web address name, “Booking.com”--but the U.S. Patent and Trademark Office (PTO) rejected the application. “Booking” was either generic and not protectable, the PTO stated, or else a descriptive mark to which the addition of “.com” was insufficient to demonstrate the “secondary meaning” necessary for federal protection of a descriptive mark. Booking.com filed a civil action in federal district court to appeal the PTO rejection and prevailed: the district court held that “Booking.com” as a whole was a descriptive mark that had acquired secondary meaning; that is, it was sufficiently distinctive to establish a mental association in the mind of the relevant public between the proposed mark and the source of the product or service. The PTO in turn appealed, but a divided panel of the U.S. Court of Appeals for the Fourth Circuit affirmed the judgment of the district court. The U.S. Supreme Court thereafter granted the PTO’s cert petition to address whether--given that generic terms may not be federally registered as trademarks--the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.To discuss the case, we have Art Gollwitzer, partner at Michael Best & Friedrich LLP and Zvi Rosen, Visiting Scholar and Professorial Lecturer in Law at George Washington University School of Law. As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers.

On May 4, 2020, the U.S. Supreme Court heard argument in United States Patent and Trademark Office v. Booking.com B.V., a case presenting the question whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.In 2011 and 2012, Booking.com sought trademark protection for its web address name, “Booking.com”--but the U.S. Patent and Trademark Office (PTO) rejected the application. “Booking” was either generic and not protectable, the PTO stated, or else a descriptive mark to which the addition of “.com” was insufficient to demonstrate the “secondary meaning” necessary for federal protection of a descriptive mark. Booking.com filed a civil action in federal district court to appeal the PTO rejection and prevailed: the district court held that “Booking.com” as a whole was a descriptive mark that had acquired secondary meaning; that is, it was sufficiently distinctive to establish a mental association in the mind of the relevant public between the proposed mark and the source of the product or service. The PTO in turn appealed, but a divided panel of the U.S. Court of Appeals for the Fourth Circuit affirmed the judgment of the district court. The U.S. Supreme Court thereafter granted the PTO’s cert petition to address whether--given that generic terms may not be federally registered as trademarks--the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.To discuss the case, we have Art Gollwitzer, partner at Michael Best & Friedrich LLP and Zvi Rosen, Visiting Scholar and Professorial Lecturer in Law at George Washington University School of Law. As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers.

On June 24, 2019, the Supreme Court decided Iancu v. Brunetti, a case considering whether a provision of the Lanham Act prohibiting the registration of “immoral or scandalous” trademarks infringes the First Amendment.Business owner Erik Brunetti applied to register his clothing brand’s trademark, “FUCT,” (pronounced as the individual letters F-U-C-T) but was refused by the U.S. Patent and Trademark Office (PTO) because the Lanham Act prohibits registration of marks that consist of or comprise “immoral or scandalous” matter. The PTO Trademark Trial and Appeal Board deemed the mark vulgar and indicated that it carried “negative sexual connotations,” and in association with Brunetti’s website imagery and products conveyed misogyny, depravity, and violence. Brunetti then appealed to the U.S. Court of Appeals for the Federal Circuit, which held that the Lanham Act’s prohibition violated the First Amendment. The Supreme Court then granted certiorari to address the lower court’s invalidation of the federal statute.By a vote of 6-3, the Supreme Court upheld the judgment of the Federal Circuit. In an opinion delivered by Justice Kagan, the Court held that the Lanham Act prohibition on the registration of “immoral” or “scandalous” trademarks constitutes viewpoint discrimination that infringes the First Amendment. Justice Kagan’s majority opinion was joined by which Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh. Justice Alito filed a concurring opinion. Justice Breyer and Chief Justice Roberts filed opinions concurring in part and dissenting in part. Justice Sotomayor filed an opinion concurring in part and dissenting in part, in which Justice Breyer joined.To discuss the case, we have Thomas Berry, Attorney at the Pacific Legal Foundation.

On June 24, 2019, the Supreme Court decided Iancu v. Brunetti, a case considering whether a provision of the Lanham Act prohibiting the registration of “immoral or scandalous” trademarks infringes the First Amendment.Business owner Erik Brunetti applied to register his clothing brand’s trademark, “FUCT,” (pronounced as the individual letters F-U-C-T) but was refused by the U.S. Patent and Trademark Office (PTO) because the Lanham Act prohibits registration of marks that consist of or comprise “immoral or scandalous” matter. The PTO Trademark Trial and Appeal Board deemed the mark vulgar and indicated that it carried “negative sexual connotations,” and in association with Brunetti’s website imagery and products conveyed misogyny, depravity, and violence. Brunetti then appealed to the U.S. Court of Appeals for the Federal Circuit, which held that the Lanham Act’s prohibition violated the First Amendment. The Supreme Court then granted certiorari to address the lower court’s invalidation of the federal statute.By a vote of 6-3, the Supreme Court upheld the judgment of the Federal Circuit. In an opinion delivered by Justice Kagan, the Court held that the Lanham Act prohibition on the registration of “immoral” or “scandalous” trademarks constitutes viewpoint discrimination that infringes the First Amendment. Justice Kagan’s majority opinion was joined by which Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh. Justice Alito filed a concurring opinion. Justice Breyer and Chief Justice Roberts filed opinions concurring in part and dissenting in part. Justice Sotomayor filed an opinion concurring in part and dissenting in part, in which Justice Breyer joined.To discuss the case, we have Thomas Berry, Attorney at the Pacific Legal Foundation.

Remember “The Slants,” the Asian-American rock band who were denied a trademark because the U.S. Patent and Trademark Office (PTO) thought the band’s name was “disparaging”? In Matal v. Tam (2017), the Supreme Court unanimously struck down the Lanham Act’s anti-disparagement provision. (That also resolved the battle over the Washington Redskins’ trademarks.) Well, here we go again, this time with a related provision that prevents registration of “immoral” or “scandalous” marks. It doesn’t take much imagination to figure out what the clothing brand “Fuct” is going for, and the PTO decided it did not pass muster. The Federal Circuit struck down the relevant provision—as it had in Tam—and the Supreme Court again took the case. On June 24, the Supreme Court affirmed 6-3, holding that the Lanham Act prohibition on the registration of “immoral” or “scandalous” trademarks infringes the First Amendment. Thomas Berry, who contributed to an interesting and entertaining amicus brief submitted by the CATO Institute, will share his thoughts on the decision and its implications on free speech and intellectual property.Featuring: Thomas Berry, Attorney, Pacific Legal Foundation Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

Remember “The Slants,” the Asian-American rock band who were denied a trademark because the U.S. Patent and Trademark Office (PTO) thought the band’s name was “disparaging”? In Matal v. Tam (2017), the Supreme Court unanimously struck down the Lanham Act’s anti-disparagement provision. (That also resolved the battle over the Washington Redskins’ trademarks.) Well, here we go again, this time with a related provision that prevents registration of “immoral” or “scandalous” marks. It doesn’t take much imagination to figure out what the clothing brand “Fuct” is going for, and the PTO decided it did not pass muster. The Federal Circuit struck down the relevant provision—as it had in Tam—and the Supreme Court again took the case. On June 24, the Supreme Court affirmed 6-3, holding that the Lanham Act prohibition on the registration of “immoral” or “scandalous” trademarks infringes the First Amendment. Thomas Berry, who contributed to an interesting and entertaining amicus brief submitted by the CATO Institute, will share his thoughts on the decision and its implications on free speech and intellectual property.Featuring: Thomas Berry, Attorney, Pacific Legal Foundation Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

Remember “The Slants,” the Asian-American rock band who were denied a trademark because the U.S. Patent and Trademark Office (PTO) thought the band’s name was “disparaging”? In Matal v. Tam (2017), the Supreme Court unanimously struck down the Lanham Act’s anti-disparagement provision. (That also resolved the battle over the Washington Redskins’ trademarks.) Well, here we go again, this time with a related provision that prevents registration of “immoral” or “scandalous” marks. It doesn’t take much imagination to figure out what the clothing brand “Fuct” is going for, and the PTO decided it did not pass muster. The Federal Circuit struck down the relevant provision—as it had in Tam—and the Supreme Court again took the case. The government argues that it isn’t stopping Fuct from using its name, only declining to register it as a trademark. Under the First Amendment, should federal officials be making calls about what’s “scandalous” or “disparaging.” Ilya Shapiro, lead counsel of an amicus brief for the Cato Institute, P.J. O’Rourke, and other individuals and groups, is attending the April 15 argument and will share his thoughts afterwards. Featuring:Mr. Ilya Shapiro, Director, Robert A. Levy Center for Constitutional Studies, Cato Institute Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

Remember “The Slants,” the Asian-American rock band who were denied a trademark because the U.S. Patent and Trademark Office (PTO) thought the band’s name was “disparaging”? In Matal v. Tam (2017), the Supreme Court unanimously struck down the Lanham Act’s anti-disparagement provision. (That also resolved the battle over the Washington Redskins’ trademarks.) Well, here we go again, this time with a related provision that prevents registration of “immoral” or “scandalous” marks. It doesn’t take much imagination to figure out what the clothing brand “Fuct” is going for, and the PTO decided it did not pass muster. The Federal Circuit struck down the relevant provision—as it had in Tam—and the Supreme Court again took the case. The government argues that it isn’t stopping Fuct from using its name, only declining to register it as a trademark. Under the First Amendment, should federal officials be making calls about what’s “scandalous” or “disparaging.” Ilya Shapiro, lead counsel of an amicus brief for the Cato Institute, P.J. O’Rourke, and other individuals and groups, is attending the April 15 argument and will share his thoughts afterwards. Featuring:Mr. Ilya Shapiro, Director, Robert A. Levy Center for Constitutional Studies, Cato Institute Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

Simon Tam named his band “The Slants” as a way to fight back against racism and take back the word as a form of self-empowerment. But when he tried to register the name as a trademark, the United States Patent and Trademark Office (PTO) denied the application and refused to register the trademark under Section 2(a) of the Lanham Act. This law allowed the PTO to refuse a trademark if it could be considered disparaging. No one outside of the PTO actually found the band name disparaging. In this episode of Make No Law, the First Amendment Podcast by Popehat.com, host Ken White examines the Matal v. Tam case in which the Supreme Court vindicated Simon Tam and The Slants, finding that Section 2(a) of the Lanham Act -- which allows the PTO to deny trademarks it finds offense -- violates the First Amendment. In the episode, Simon Tam himself explains how the PTO substituted its own judgment for the advocacy of Asian-Americans trying to highlight and fight back against racism. This episode also features quotes from the justices involved and music from The Slants.

Former Online Editor Anthony Zangrillo and Former Senior Notes and Articles Editor Joey Gerber take a break from BAR prep in order to discuss "one of the most important First Amendment free speech cases to come along in many years" Matal v. Tam.1 In the past, the U.S. Patent and Trademark Office (PTO) has refused to register trademarks considered that disparage a particular person, group or institution. On June 19, the Supreme Court unanimously held (8-0) that the disparagement clause (Section 2(a) of the Lanham Act), is an unconstitutional violation of the First Amendment’s Free Speech Clause. The specific case in controversy involved a Portland, Oregon, rock band “The Slants.” All the members of the band are of Asian decent and the name represents a move of empowerment in reclaiming a historically derogatory term. Simon Tam filed a trademark application to federally register the band’s name, “The Slants.” The PTO refused to register the mark as “derogatory or offensive” based on the dictionary meaning of ‘slants’ or ‘slant-eyes.’ Tam lost an appeal to the PTO’s Trademark Trial and Appeal Board (TTAB), but this ruling was reversed in the Court of Appeals for the Federal Circuit, holding that the disparagement clause is unconstitutional under the Free Speech Clause. On this podcast, Anthony and Joey discuss the Supreme Court decision and the ramifications this could have on future trademark applications, as well as other decisions such as the recent controversy over the Washington Redskins.2   Don’t forget to also subscribe to the podcast on iTunes (https://itunes.apple.com/us/podcast/fordham-intellectual-property/id1158550285?mt=2) and leave a review!

On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee. In 2011, the America Invents Act created an expedited procedure, known as inter partes review, to provide a cost-effective alternative to litigation for resolving certain challenges to patent validity. The Patent Trial and Appeal Board, contained within the U.S. Patent and Trademark Office (PTO), hears these disputes rather than a federal district court. When construing patent claims, the Board applies a “broadest reasonable interpretation” standard rather than the “plain and ordinary meaning” standard typically applied by federal courts. -- Here, Cuozzo Speed Technologies, LLC. (Cuozzo) owns a speed limit indicator patent. Garmin International, Inc. (Garmin) petitioned the Board for inter partes review (IPR) of claims regarding the patent. The Board found that certain claims were unpatentable and denied Cuozzo’s request to replace those claims with several others. Cuozzo appealed the Board’s decision to the U.S. Court of Appeals for the Federal Circuit, which (1) held that it lacked authority to review the PTO’s decision to institute IPR, and (2) affirmed the Board’s final determination, finding no error in its application of the “broadest reasonable interpretation” standard. -- There were two questions before the Supreme Court: (1) Whether the Federal Circuit erred in holding that the Board may, in IPR proceedings, construe claims according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the Federal Circuit erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the decision to institute the IPR proceeding is judicially unreviewable. -- By a vote of 8-0 and 6-2, the Supreme Court affirmed the judgment of the Federal Circuit. Justice Breyer delivered the opinion of the Court, which held that the underlying statute precluded judicial review of the kind of claim at issue here, involving the PTO’s decision to institute IPR. The Court further concluded that the PTO was authorized to issue the regulation, setting forth the “broadest reasonable interpretation” standard. -- A unanimous Court joined Justice Breyer’s opinion with respect to Parts I and III. Chief Justice Roberts and Justices Kennedy, Thomas, Ginsburg, and Kagan joined the opinion with respect to Part II. Justice Thomas filed a concurring opinion. Justice Alito filed an opinion concurring in part and dissenting in part, in which Justice Sotomayor joined. -- To discuss the case, we have Gregory Dolin, who is Assistant Professor of Law and Co-Director, Center for Medicine and Law at University of Baltimore School of Law.

On April 25, 2016, the Supreme Court heard oral arguments in Cuozzo Speed Technologies, LLC v. Lee. In 2011 the America Invents Act created an expedited procedure, known as inter partes review, to provide a cost-effective alternative to litigation for resolving certain challenges to patent validity. The Patent Trial and Appeal Board, contained within the U.S. Patent and Trademark Office (PTO), hears these disputes rather than a federal district court. When construing patent claims, the Board applies a “broadest reasonable interpretation” standard rather than the “plain and ordinary meaning” standard typically applied by federal courts. -- Here, Cuozzo Speed Technologies, LLC. (Cuozzo) owns a speed limit indicator patent. Garmin International, Inc. (Garmin) petitioned the Board for inter partes review (IPR) of claims regarding the patent. The Board found that certain claims were unpatentable, and denied Cuozzo’s request to replace those claims with several others. Cuozzo appealed the Board’s decision to the U.S. Court of Appeals for the Federal Circuit, which (1) held that it lacked authority to review the PTO’s decision to institute IPR, and (2) affirmed the Board’s final determination, finding no error in its application of the “broadest reasonable interpretation” standard. -- There are two questions before the Supreme Court: (1) Whether the Federal Circuit erred in holding that the Board may, in IPR proceedings, construe claims according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the Federal Circuit erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the decision to institute the IPR proceeding is judicially unreviewable. -- To discuss the case, we have Gregory Dolin, who is Assistant Professor of Law and Co-Director, Center for Medicine and Law at University of Baltimore School of Law.

The Constitution specifically vests power in Congress to grant authors and inventors exclusive rights in their writings and inventions. The first Congress passed laws setting forth the requirements and procedures for granting patents and copyrights. In these early days, copyrights were granted for registered works, and Thomas Jefferson himself examined patents as a member of President George Washington's cabinet. As IP laws developed, however, they gave substantial deference to both the Patent and Trademark Office (PTO), and the Copyright Office, on matters of reviewing, granting, limiting, and defining IP rights. These agencies have come to wield significant influence over the U.S. IP regime. Recently, and notwithstanding its delegations of power, Congress has been particularly active in passing new patent and copyright legislation. Sometimes Congress specifies how the law shall be interpreted and administered, and other times it delegates this to the relevant agencies, or to the courts. By considering specific examples, this panel will examine the role of Congress, Congressional delegation, and executive agencies in crafting and administering our modern intellectual property systems. -- This panel was presented at the 2015 National Lawyers Convention on Saturday, November 14, 2015, at the Mayflower Hotel in Washington, DC. -- Featuring: Prof. Sandra Aistars, Clinical Professor, George Mason School of Law and Sr. Scholar and Director, Copyright Policy & Research, Center for the Protection of Intellectual Property; Prof. John F. Duffy, Samuel H. McCoy II Professor of Law, University of Virginia School of Law; Prof. David S. Olson, Associate Professor, Boston College Law School; and Prof. Arti K. Rai, Elvin R. Latty Professor of Law and co-Director, Duke Law Center for Innovation Policy. Moderator: Hon. Thomas B. Griffith, U.S. Court of Appeals, D.C. Circuit.