The Trademark Reporter has published its latest Annual Review of U.S. Trademark Cases: "The Seventy-Third Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here).
In his Introduction, Ted Davis calls this "a time of great reckoning in United States trademark and unfair competition law." The Supreme court is accepting trademark cases at an unexpected rate, and Congress has enacted the Trademark Modernization Act of 2020 which, among other things, confirms or restores (depending on the federal circuit) the presumption of irreparable harm from Lanham Act violations. The High Court displayed its dislike for bright line rules and underscored the basic premise that consumer perception is the key to trademark registrability. On that latter point, the TTAB's continuing stream of genericness and failure-to-function verdicts has, in the view of some practitioners, gone too far in denying registration to terms that could serve as source indicators. The doctrine of fair use may be getting more traction in the courts, but at the TTAB fair use (or parody) is a dead letter. The First Amendment, however, has chipped away at the registration bars of Section 2(a) of the Lanham Act, and Section 2(c) will undergo Constitutional scrutiny in the TRUMP TOO SMALL case now before the CAFC.
* * * * * * * *
Once again I thank The Trademark Reporter for granting leave to provide a link to this issue, which is Copyright © 2021 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 111 TMR 1 (January-February 2021).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.