The cases touch on key topics in trademark law, including:
• disparaging trademarks;
• genericisation of trademarks and punitive damage;
• extraterritorial reach;
• use in commerce;
• generic use;
• acquired distinctiveness;
• intent to use; and
The Supreme Court affirmed a ruling that the longstanding prohibition against registering disparaging trademarks was unconstitutional under the Free Speech Clause of the First Amendment. Simon Tam, the lead singer of rock band The Slants, was refused registration of his band’s name as it was deemed disparaging to people of Asian descent. Tam appealed to the Court of Appeals for the Federal Circuit, which found the disparagement clause of the Lanham Act to be unconstitutional. The Supreme Court affirmed the decision, with Justice Samuel Alito writing that the disparagement clause amounted to an unconstitutional discrimination against unpopular speech. The Supreme Court’s ruling appears to clear the way for a host of new trademark applications that up until now have been consistently denied. Shortly after the Supreme Court’s ruling, the Court of Appeals for the Fourth Circuit reinstated the Washington Redskins’ trademark, which had been cancelled by the Trademark Trial and Appeal Board (TTAB) as offensive to American Indians (Matal v Tam, 137 S Ct 1744 (2017)).
This article first appeared in IAM Yearbook: Building IP value in the 21st century 2019, a supplement to IAM, published by Globe Business Media Group - IP Division. To view the guide in full, please go to www.IAM-media.com.