trademark

Abitron Austria GmbH v. Hetronic International, Inc.

Issues

Does the Lanham Act apply extraterritorially to trademark infringement by a foreign entity’s conduct outside of the United States, including those foreign commercial activities that never took place in the United States or confused U.S. consumers?

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.

Questions as Framed for the Court by the Parties

Whether the U.S. Court of Appeals for the 10th Circuit erred in applying the Lanham Act, which provides civil remedies for infringement of U.S. trademarks, extraterritorially to Abitron Austria GmbH’s foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.

In the 1980s, a German engineer developed radio control products and established a German company, Hetronic Steuersysteme GmbH, which was the predecessor of one of the parties in this case, Abitron Austria GmbH, et al. (“Abitron”). Brief for Petitioners, Abitron Austria GmbH, et al. at 8. The German engineer later established Hetronic International, Inc.

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Already, LLC v. Nike, Inc.

Nike, Inc., sued Already, LLC d/b/a Yums, for selling shoes that allegedly infringed on Nike’s trademark covering the Air Force 1 shoe line. Yums counterclaimed to cancel Nike’s trademark. Shortly after Yums’s counterclaim, Nike dropped its claim and promised Yums that Nike would not assert its trademark against any of Yums’s current or previous products. The district court dismissed Yums’s counterclaim and the court of appeals affirmed the dismissal. Yums argues that a controversy remains after Nike’s promise not to sue because Nike’s trademark continues to hinder Yums’s ability to compete in the athletic footwear business. Nike argues that a court cannot hear a trademark claim without a controversy, and that Nike’s promise not to sue eliminated any controversy involving the Air Force 1 trademark. The Supreme Court’s decision here may determine whether intellectual property owners can drop infringement actions without having to defend counterclaims challenging their intellectual property rights. This decision may have a significant impact on intellectual property litigation and on the risks associated with commencing an infringement action.

Questions as Framed for the Court by the Parties

Whether a federal district court is divested of Article III jurisdiction over a party's challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party's then-existing commercial activities?

Issue

Does a federal district court lose jurisdiction over a trademark cancellation claim after the trademark holder terminates any infringement actions and promises not to assert its trademark against the party seeking the trademark’s cancellation?

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B&B Hardware, Inc. v. Hargis Indus., Inc.

Issues

Does the Trademark Trial and Appeal Board’s (“TTAB”) likelihood-of-confusion determination have a preclusive effect in a trademark infringement claim; or, alternatively, should federal courts defer to the TTAB’s findings on likelihood-of-confusion absent strong evidence to rebut the finding?

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. 

Questions as Framed for the Court by the Parties

  1. Whether the TTAB’s finding of a likelihood of confusion precludes Hargis from relitigating that issue in infringement litigation, in which likelihood of confusion is an element.
  2. Whether, if issue preclusion does not apply, the district court was obliged to defer to the TTAB’s finding of a likelihood of confusion absent strong evidence to rebut it.

For over fifteen years, B&B Hardware, Inc. (“B&B”), doing business as Sealtight Technology, and Hargis Industries, Inc. (“Hargis”), doing business as Sealtite Building Fasteners, have been involved in trademark litigation over the similarity of their marks. See B&B Hardware, Inc. v.

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Dewberry Group, Inc. v. Dewberry Engineers, Inc.

Issues

Can a judge include the profits of corporate affiliates who are not named as defendants in a trademark infringement case when calculating damages under the Lanham Act?

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.

Questions as Framed for the Court by the Parties

Whether an award of the “defendant’s profits” under the Lanham Act can include an order for the defendant to disgorge the distinct profits of legally separate non-party corporate affiliates.

The Lanham Act protects trademark holders against other individuals and corporations from reproducing, counterfeiting, copying, or imitating their registered trademark by allowing the registrants to file a lawsuit against infringers. Dewberry Eng’rs v.

Acknowledgments

The authors would like to thank Professors Oskar Liivak and Charles K. Whitehead for their insights into this case.

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Hana Financial v. Hana Bank

Issues

Is trademark tacking an issue of law or fact?

The Supreme Court will have the opportunity to address the issue of whether trademark tacking is a question of law or fact. In this case, Hana Bank argues that its use of “Hana Overseas Korean Club” should be tacked to its use of “Hana World Center”—as the district court jury seemingly allowed. Hana Financial counters, argues that a judge, not a jury, should decide the tacking issue; and, Hana Bank’s tacking claim fails as a matter of law. The outcome of this case may touch on judicial efficiency, predictability of trademark law, and consumer protection. 

Questions as Framed for the Court by the Parties

To own a trademark, one must be the first to use it; the first to use a mark has “priority.”  The trademark “tacking” doctrine permits a party to “tack” the use of an older mark onto a new mark for purposes of determining priority, allowing one to make slight modifications to a mark over time without losing priority. Trademark tacking is available where the two marks are “legal equivalents.” The question presented, which has divided the courts of appeals and determined the outcome in this case, is:

Whether the jury or the court determines whether use of an older trademark may be tacked to a newer one is a question of fact?

In the mid-1990s two companies began providing financial services in the United States. See Hana Financial, Inc. v Hana Bank, 735 F.3d 1158, 1161 (9th Cir.

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Iancu v. Brunetti

Issues

Does the Lanham Act’s prohibition on registration of scandalous or immoral trademarks violate free speech rights guaranteed by the First Amendment?

Erik Brunetti founded a clothing brand named “FUCT” and applied to register the name as a trademark. The registration was denied by the examining attorney at the United States Patent and Trademark Office for not complying with Section 2(a) of the Lanham Act, which prohibits registration of scandalous or immoral marks. On appeal, the United States Court of Appeals for the Federal Circuit concluded that the provision was an unconstitutional violation of the First Amendment of the Constitution. Brunetti asks the Court to affirm the lower court’s invalidation of the provision because it amounts to viewpoint discrimination warranting strict scrutiny review, which the provision then fails. Iancu asks the Court to reverse the lower court decision because the scandalous marks provision is viewpoint neutral and does not impose an unconstitutional burden on speech. Iancu argues that the Court should instead apply the rational basis review standard and recognize that the provision serves legitimate government interests in protecting the moral sensibilities of all audiences as well as the orderly flow of commerce. The Court’s decision may have a chilling effect on free speech in commercial contexts and make it difficult for owners of marks deemed scandalous or immoral to reap commercial benefits from their marks.

Questions as Framed for the Court by the Parties

Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the free speech clause of the First Amendment.

Respondent Erik Brunetti founded a clothing brand, “FUCT,” in 1990. In re: Erik Brunetti, 877 F.3d 1330 (Fed. Cir.

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Jack Daniel’s Properties, Inc. v. VIP Products, LLC

Issues

Does the humorous use of another’s trademark as one’s own on a commercial product receive heightened First Amendment protection, and is such use “noncommercial” and therefore immune from a dilution by tarnishment claim?

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.

Questions as Framed for the Court by the Parties

(1) Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, 15 U.S.C. § 1125(a)(1), or instead receives heightened First Amendment protection for trademark-infringement claims; and (2) whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c)(3)(C).

VIP Products, LLC (“VIP”) sells dog toys that parody well-known beverage brands on its website, MyDogToy.com. VIP Prods. LLC v. Jack Daniel’s Props. at 1172. These products, called “Silly Squeakers,” are in the shape of beverage bottles and cans but contain dog puns and other alterations.

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Lee v. Tam

Issues

Is the disparagement clause of the Lanham Act, which allows the USPTO to refuse federal registration to marks which “may be disparaging” to persons of a certain race, ethnicity, gender, religion, or sexual orientation, invalid under the Free Speech Clause of the First Amendment

This case will address the constitutionality of the disparagement clause, or §2(a) of the Lanham Act. Simon Tam, spokesperson for THE SLANTS, an Asian-American dance-rock band, argues that this provision, which allows the USPTO to deny federal registration to marks that “may be disparaging,” poses impermissible censorship of political speech in instances where registrants seek to reappropriate a previously disparaging term. Michelle K. Lee, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, maintains that this provision merely denies federal registration for a government program but does not restrict an individual’s political or commercial speech. The resolution of this case will determine whether the owners of potentially disparaging marks, such as the Washington Redskins, have the right to register their marks, bring suit for infringement, and use government resources for policing new trademark applicants and potential infringement. 

Questions as Framed for the Court by the Parties

Section 2(a) of the Lanham Act, 15 U.S.C.  1052(a), provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of * * * matter which may disparage * * * persons, living or dead, institutions, beliefs, or nation-al symbols, or bring them into contempt, or disrepute.”

The question presented is as follows:

Whether the disparagement provision in 15 U.S.C.  1052(a) is facially invalid under the Free Speech Clause of the First Amendment.

On November 14, 2011, Simon Tam filed an application to register the name of an Asian-American dance-rock band, THE SLANTS, with the United States Patent and Trademark Office (“USPTO”). In Re Simon Shiao Tam, 808 F.3d 1321, at 10–11 (2015). Tam and his fellow band members have used this mark in commerce since 2006, when they first formed the band.

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Mission Product Holdings Inc. v. Tempnology, LLC

Issues

Does a trademark licensee retain any rights under a licensing agreement following the debtor-licensor’s “rejection” of the agreement under Section 365 of the Bankruptcy Code?

In this case, the Supreme Court will decide whether a debtor-licensor’s “rejection” of a trademark licensing agreement terminates the licensee’s rights under the agreement. Mission Product Holdings Inc. argues against termination, claiming that no such termination would occur from a breach of contract outside of the bankruptcy context, and that, in any case, there is a statutory exception that protects a licensee’s rights to use intellectual property post-rejection. Tempnology, LLC counters that rejection limits the licensee to the sole remedy of seeking monetary damages, and that the statutory exception for intellectual property does not contemplate trademarks as intellectual property. The outcome of this case will clarify the effect of rejection on contractual rights and whether trademarks are distinguishable from other types of intellectual property under Section 365 of the Bankruptcy Code.

Questions as Framed for the Court by the Parties

Whether, under Section 365 of the Bankruptcy Code, a debtor-licensor’s “rejection” of a license agreement—which “constitutes a breach of such contract,” 11 U.S.C. § 365(g)—terminates rights of the licensee that would survive the licensor’s breach under applicable non-bankruptcy law.

Respondent Tempnology, LLC (“Tempnology”) designs and manufactures accessories—such as towels, socks, and headbands—that remain cool while a user exercises. Mission Product Holdings, Inc., v. Tempnology, LLC, n/k/a Old Cold LLC at 3. In connection with these products, Tempnology owns a significant amount of intellectual property.

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