Lanham Act

Issues

This case asks the Supreme Court to determine whether the Lanham Act (“the Act”), a federal trademark law, applies extraterritorially to trademark infringement outside the United States by a foreign entity. Abitron argues that the Act does not apply to foreign sales, because such an extensive reading of the Act’s scope is not supported by statutory interpretation or case law. Hetronic counters that both the Act’s language and the Court’s precedent about Congress and the Act’s expansive power leaves no doubt about its extraterritorial reach. The outcome of this case has heavy implications for the territoriality principle in international law and the rights and remedies of U.S. trademark owners.

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The Supreme Court’s decision in this case will determine whether a Trademark Trial and Appeal Board (“TTAB”) likelihood-of-confusion finding has preclusive effect in a subsequent trademark-infringement claim. If the Court finds that issue preclusion does not apply, the Court will address whether federal courts should defer to the TTAB’s likelihood-of-confusion determination in the absence of strong contrary evidence. B&B Hardware argues that the concept of “likelihood of confusion” has the same meaning in both TTAB and federal court proceedings and applies equally to both trademark-registration proceedings and trademark-infringement actions. Hargis Industries counters that preclusion is inapplicable because TTAB administrative decisions are not binding on Article III courts. The Court’s ruling will have significant implications for judicial efficiency in TTAB infringement cases before both the TTAB and federal courts, and will potentially also impact consumer confidence in trademarks. 

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This case asks the Supreme Court if a judge can include profits of corporate affiliates, not named as defendants in a trademark infringement case when calculating how much to award in damages. Dewberry Group argues that under the Lanham Act, only the profits of the named defendant can be used in this calculation. Dewberry Group further argues that if the non-party affiliates’ profits were to be used, there should be an opportunity to litigate the matter of corporate separateness. Dewberry Engineers, on the other hand, counters that the Lanham Act consists of a two-step process where the second step allows the judge to award a “just sum” that may include the non-party affiliates’ profits. Additionally, Dewberry Engineers contends that there is no need for a separate legal analysis to disregard corporate separateness because the Lanham Act allows a judge to consider all relevant evidence including the non-party affiliates’ profits. The Supreme Court’s decision in this case will impact future trademark infringement cases, particularly how the corporate form will be considered in awarding damages under the Lanham Act.

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Jack Daniel’s Properties, Inc. demanded that VIP Products stop selling a dog toy called “Bad Spaniels,” a toy in the shape of a Jack Daniel’s whiskey bottle but with dog-related alterations to the name and label. The issue is whether the “Bad Spaniels” toy should receive heightened First Amendment protection as a form of expressive conduct or whether courts should analyze such satirical products under the traditional trademark infringement test of the Lanham Act. Additionally, the Supreme Court must consider whether humorous use of another’s trademark should be considered a “noncommercial” use and therefore be immune from a dilution by tarnishment claim. Jack Daniel’s contends that the Ninth Circuit’s endorsement of the Second Circuit’s likelihood-of-confusion test undermines the purpose of the Lanham Act and that “Bad Spaniels” violates the Lanham Act’s anti-dilution provision. VIP Products counters that the Second’s Circuit’s test fills in gaps in the Lanham Act and is widely accepted by lower federal courts; and, it further contends that the Lanham Act’s anti-dilution provision amounts to unconstitutional viewpoint discrimination. The decision in this case will affect the rights of trademark holders, as well as the protections of those whose political, social, and artistic work utilizes the trademarks of others.

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KP Permanent Make-up, Inc. v. Lasting Impressions, Inc., MCN International, Inc. tests whether a showing of the absence of a likelihood of confusion is necessary before a defendant may invoke the classic fair use defense in a trademark infringement suit. By statute, incorporating cases at common law, there appears to be no such requirement. In this case, the Court will determine whether the Ninth Circuit erred in applying such a rule.

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Petitioner Lexmark International, Inc., a major producer of laser printers, developed a microchip for its toner cartridges to restrict third-party businesses from replacing Lexmark cartridges. Respondent Static Control Components, Inc. replicated that microchip, thereby allowing third parties to refill and resell used Lexmark cartridges. Lexmark responded by telling businesses that the use of Static’s replicated microchips would infringe Lexmark’s patent. In a 2004 lawsuit, Static brought false advertisement claims against Lexmark under the Lanham Act. The district court dismissed those charges, concluding that Static lacked standing. The Sixth Circuit reversed that dismissal, reasoning that Static had a cognizable business interest that was harmed by Lexmark’s remarks; therefore, Static had standing and qualified for protection under the Lanham Act. The Supreme Court’s ruling in this case will resolve a circuit split over the proper framework for determining prudential standing in false advertising claims under the Lanham Act. Accordingly, this case will determine who can assert false advertising claims under the Lanham Act.

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The Coca-Cola Company sells a “Blueberry Pomegranate” beverage blend containing less than 1% pomegranate and blueberry juice.  Federal statutes and regulations provide specific guidelines for juice labeling, which are enforced by the Food and Drug Administration (“FDA”). However, the FDA has not sued Coca-Cola, and Coca-Cola asserts that it has followed the federal law. Pom Wonderful LLC, a competitor that sells pomegranate juice, alleges that Coca-Cola’s juice label constitutes an unfair trade practice and sued Coca-Cola under the Lanham Act. Pom argues that the Lanham Act’s provisions deterring unfair trade practices complement federal food-labeling laws. Coca-Cola, however, argues that the Lanham Act cannot apply to issues of food labeling, and that food-labeling statutes narrow the scope of a general statute for unfair trade practices. The Court’s decision will impact the uniformity of food-labeling rules, and private parties’ right to sue for unfair trade practices in the food and drug industries. 

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This case asks the Supreme Court to determine whether a plaintiff must show that an entity willfully infringed on a trademark in order to be awarded the infringer’s profits for violating the Lanham Act. Romag Fasteners, Inc. argues that the plain text of Section 1117(a) and the structure of the Lanham Act omits a willfulness requirement, and the phrase “subject to the principles of equity” in Section 1117(a) does not justify such a requirement. Fossil, Inc. counters that the textual analysis of Section 1117(a) should incorporate traditional principles of equity that require willfulness for profits awards because the text expressly allows for consideration of equitable principles. The outcome of this case has important implications for the rights of trademark holders and awards of damages.

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This case asks the Supreme Court to determine whether the addition of a domain suffix such as “.com” to a generic term like “booking” can create a protectable trademark. The Petitioners, United States Patent and Trademark Office and the Department of Justice, contend that the Court’s decision in Goodyear that the addition of a corporate designation such as “Company” or “Inc.” to a generic word does not render the combination protectable, extends to adding a “.com” suffix. The Respondent, Booking.com, counters that the Lanham Act repudiated Goodyear, and advocates for the application of the “primary significance” test which focuses the genericness inquiry on whether the consuming public views the term as signifying the producer rather than the product. The Court’s decision will have implications for online companies that have invested resources in developing their brand recognition using generic terms. 

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Vidal v. Elster asks whether a federal statute prohibiting the use of a living individual’s name in a trademark without their advance consent violates the Free Speech Clause of the First Amendment. Katherine Vidal, director of the U.S. Patent and Trademark Office, argues that the law does not offend the First Amendment because it is viewpoint-neutral. But even if it did, she contends, the law would stand because it advances the important government interest of protecting individuals’ rights to exploit their identity for profit and protects against false endorsements. Challenging the law is Steve Elster, whose “Trump Too Small” trademark kicked off the dispute. Elster argues that the statute is not content-neutral since its prohibitions are triggered by invoking the specific “content” of an individual’s name. In this way, the rule allegedly differentiates certain speech for more intensive scrutiny by the Patent and Trademark Office.  The outcome of this case will have an impact on general rights of publicity and privacy as well as on the freedom of political speech.

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