Wednesday, June 28, 2017
Constitutionality of Trademark Law's Scandalous Provision Remains Questionable after Supreme Court Decision Invalidating Disparagement
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Section 2(a) of the Lanham Act,
15 U.S.C. § 1052(a), bars registration of marks that consist of or comprise matter which may disparage persons, institutions,
beliefs, or national symbols, or bring them into contempt or disrepute (“the disparagement provision”), and marks
that consist of or comprise immoral or scandalous matter (“the scandalousness provision”). These provisions were challenged in separate court actions as unconstitutional under the Free Speech Clause
of the First Amendment. See Matal v. Tam, No. 15-1293 (U.S. Supreme Court
on petition for certiorari from in In re Tam, No. 14-1203 (Federal Circuit) (disparagement provision) and In
re Brunetti, No. 15-1109 (Federal Circuit) (scandalousness provision). In 2015,
the Federal Circuit held that the disparagement provision constitutes viewpoint discrimination and is facially unconstitutional
under the First Amendment’s Free Speech Clause. In re Tam, 808 F.3d
1321, 1358, 117 USPQ2d 1001, 1025 (Fed. Cir. 2015) (en banc), as corrected (Feb. 11, 2016).
On June 19, 2017, the Supreme Court of the United States decided Matal v. Tam, 582 U.S. ___ (2017), which
affirmed the judgment of the Federal Circuit. Id.
The Federal Circuit has ordered the parties to submit supplemental briefing in Brunetti explaining how the
constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in
States Trademark Office ("USPTO") has been suspending action on pending applications involving marks subject to
refusal under the disparagement and scandalousness provisions until the Tam and Brunetti litigations conclude.
Because the constitutionality of
the scandalousness provision remains pending before the Federal Circuit in Brunetti, the USPTO will continue to suspend
examination of an application based on the scandalousness provision of Section 2(a) until the Federal Circuit issues a decision
in Brunetti, after which the USPTO will re-evaluate the need for further suspension.
Thursday, June 22, 2017
You can go disparage yourself (or others)!
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The U.S. Supreme Court recently ruled that the Trademark Office's rejection of trademarks that "disparage" others
violates the First Amendment.
The decision may pave the way for the Washington Redskins’ to keep the team’s
The ruling came in a case that involved an Asian American rock group called the Slants, which tried
to register the band’s name in 2011. The band was turned down by the U.S. Patent and Trademark Office because of a law
against registering trademarks that are likely to disparage people or groups.
The Supreme Court ruled the “disparagement
clause” of the federal trademark law was not constitutional, even though it was written evenhandedly, prohibiting trademarks
that insult any group.
“This provision violates the Free Speech Clause of the First Amendment,” Justice
Samuel A. Alito Jr. wrote in a section of the opinion supported by all participating justices. “It offends a bedrock
First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”
Friday, March 20, 2015
WIEMELT KNECHTEL again ranked among the Top Trademark Firms in the U.S.
WIEMELT KNECHTEL was also ranked among the
"TOP TRADEMARK FIRMS" in the U.S. in the May 2014, May 2013, May 2012, May 2011, May, 2010 and
May 2009 issues of Intellectual Property Today, a monthly publication
focused on legal issues in patent, trademark and copyright law. WIEMELT KNECHTEL was also ranked
among the "TOP PATENT FIRMS" in
the U.S. in the March 2013, February 2012, and March 2010 issues of Intellectual Property Today.
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Monday, May 12, 2014
Wiemelt Knechtel was again ranked among the "TOP TRADEMARK FIRMS" in the U.S.
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Wiemelt Knechtel was again ranked
among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2014 issue of Intellectual Property Today, a monthly publication focused on legal issues in patent, trademark and copyright law. Wiemelt Knechtel was
also ranked among the "TOP PATENT FIRMS" in the U.S. in the March 2013, February 2012 and March 2010
issues of Intellectual Property Today. Wiemelt Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2013, May 2012, May 2011, May 2010 and May 2009 issues of Intellectual Property Today.
Wednesday, May 15, 2013
Wiemelt Knechtel ranked again among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2013 issue of Intellectual Property
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Wiemelt Knechtel was ranked among the "TOP TRADEMARK
FIRMS" in the U.S. in the May 2013 issue of Intellectual Property Today, a monthly
publication focused on legal issues in patent, trademark and copyright law. Wiemelt Knechtel was also
ranked among the "TOP PATENT FIRMS" in the U.S. in the March 2013, February
2012 and March 2010 issues of Intellectual Property Today. Wiemelt Knechtel was
also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2012, May 2011, May
2010 and May 2009 issues of Intellectual Property Today.
Why You Should Hire a Trademark Lawyer
WHY SHOULD YOU CONSIDER USING THE SERVICES OF
AN EXPERIENCED TRADEMARK ATTORNEY TO FILE TRADEMARK APPLICATIONS?
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A recent study
indicates that hiring an experienced trademark attorney statistically gives you a much greater chance
of successfully registering your trademark or service mark.
“Do Trademark Lawyers Matter?” University of North Carolina School of Law faculty members
Jon McClanahan and Deborah Gerhardt studied applications filed from 1985 to 2010 to determine whether
having a trademark attorney makes a difference in getting your application approved by the USPTO.
The study concluded that yes, in fact, it does. “These data suggest that the presence of
a lawyer made a meaningful difference,” the researchers wrote.
The study found that inexperienced, non-attorney applicants’ chances for registration
would have increased by 50 percent if they had used an attorney to file their application.
Monday, March 11, 2013
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Wiemelt Knechtel ranked among the "TOP PATENT FIRMS" in the U.S.
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Wiemelt Knechtel was ranked among the "TOP PATENT
FIRMS" in the U.S. in the March, 2013 issue of Intellectual Property Today, a
monthly publication focused on legal issues in patent, trademark and copyright law. Wiemelt Knechtel
was also ranked among the "TOP PATENT FIRMS" in the U.S. in the February,
2012, March, 2011, and March, 2010 issues of Intellectual Property Today. Wiemelt
Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2012, May,
2011, May 2010 and May, 2009 issues of Intellectual Property Today.
Monday, February 18, 2013
Mark E. Wiemelt appears on WBBM Noon Business Hour to discuss Tiffany lawsuit against Costco
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Mark E. Wiemelt, of WIEMELT KNECHTEL, appeared on the WBBM Noon Business Hour,
on February 15, 2013, to discuss the Tiffany lawsuit against Costco for selling alleged counterfeit engagement rings
under the Tiffany name. Mr. Wiemelt and the WBBM Noon Business Hour hosts, Sherman Kaplan and Kris Kridel, discussed
issues regarding detection of counterfeit products and enforcement of intellectual property rights, including trademarks and
Wednesday, December 19, 2012
Supreme Court to hear case involving reverse payment settlement in generic drug case
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The Supreme Court has agreed to hear
the case of Federal
Trade Commission v. Watson Pharmaceuticals, et. al. (11th Cir.). This case involves the issue of “reverse payment”
settlement agreements. In these types of agreements, a generic drug company agrees to drop its challenge to a brand drug company’s
patent and refrain from entering the market for a specified period of time in exchange for a payment by the brand drug company
to the generic drug company.
There is a split in several
circuits with respect to the legality of reverse payment agreements. For example, the Third Circuit has found that “reverse
payments” are prima facie evidence of an unreasonable restraint of trade, which may result in a violation of
the antitrust laws. The Federal Circuit, however, has found that such agreements are valid if they do not extend beyond the
exclusionary scope of the patent.
The Supreme Court decision is expected by the end of June 2013. Until then, parties should continue
to be cautious about entering into such agreements and should consider
the circuit split when doing so.
Friday, September 28, 2012
Inventions take more than Eureka moment
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Mark E. Wiemelt, of WIEMELT KNECHTEL, was quoted in a September 26, 2012
Suburban Life article entitled Inventions take more than Eureka moment. The article addressed
the expense of defending patents during patent infringement lawsuits.
Wednesday, July 25, 2012
Slep-Tone lawsuit in Chicago appears to be subject to a Motion to Dismiss and/or Sever
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The recent lawsuit filed by Slep-Tone Entertainment Corporation against numerous
karaoke DJs (“KJs”) and venues in Chicago for alleged infringement of its SOUND CHOICE trademark and related trade dress appears to be subject to a Moton to Dismiss and/or Sever
for Improper Joinder. (Case No. 12-5750 in the Northern District of Illinois.)
In addition, the Defendants
may have insurance coverage for the lawsuits. Of course, it may not always be in the Defendant's best interest
to trigger insurance coverage. This decision should be made by counsel familiar with the merits of the intellectual property
claims, as well as the insurance coverage issues. Click here for an overview of FREE DEFENSE for IP infringement lawsuits.
If you have questions, please feel free to contact Attorney Mark Wiemelt at 312-372-7664 or by email
Tuesday, July 17, 2012
Supreme Court Decision Favors Generics
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On April 17, 2012, the Supreme Court, in Caraco Pharmaceutical Laboratories,
Ltd. v. Novo Nordisk A/S, confirmed that generic drug manufacturers can challenge brand-name use-code descriptions in
The Supreme Court interpreted a portion of the Hatch-Waxman Act dealing with section
viii statements. In particular, it addressed use codes and carve-out drug labeling and ruled
that it does not make sense to allow patentees to block unpatented treatment methods by filing inaccurate use
codes with the FDA. "Congress meant (as it usually does) for the provision it enacted to fit within the statutory
scheme—here, by facilitating the approval of non-infringing generic drugs under section viii.”
have questions, please feel free to contact Wiemelt Knechtel at 312-372-7664 or 602-910-4250 or by email at email@example.com or firstname.lastname@example.org.
Thursday, July 12, 2012
Seventh Circuit Ruling Favors Trademark Licensees
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On July 9, 2012, the U.S. Court of Appeals for the Seventh Circuit issued its
decision in Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, ruling in favor trademark licensees
whose licenses are rejected in bankruptcy by trademark owners. Under Sunbeam, rejection of a trademark
license by a trustee does not terminate the license rights.
The full impact of the Seventh Circuit's
Sunbeam decision is yet to be determined and many questions remain. However, because the Seventh Circuit's
opinion creates a split of authority with the Fourth Circuit's 1985 decision in Lubrizol Enterprises, Inc. v. Richmond
Metal Finishers, Inc. it may lead to a Supreme Court review. Significantly, the Seventh Circuit sided
with scholarly criticism of the Lubrizol decision and soundly rejected same, and Sunbeam is the first
court of appeals decision in 27 years to challenge Lubrizol's view of how rejection impacts an intellectual
property license. Accordingly, the Sunbeam decision has the potential to impact licensee rights in cases
across the country.
If you have questions, please feel free to contact Wiemelt Knechtel at 312-372-7664 or 602-910-4250
or by email at email@example.com or firstname.lastname@example.org.
Monday, July 9, 2012
U.S. Patent Office Issues Prometheus Examination Guidelines
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Tuesday, May 29, 2012
Wiemelt Knechtel again ranked among TOP TRADEMARK FIRMS in U.S.
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Wiemelt Knechtel was ranked among the "TOP TRADEMARK
FIRMS" in the U.S. in the May, 2012 issue of Intellectual Property Today, a monthly publication
focused on legal issues in patent, trademark and copyright law. Wiemelt Knechtel was also ranked among the "TOP PATENT
FIRMS" in the U.S. in the February 2012 and March 2010 issues of Intellectual Property Today. Wiemelt
Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2011, May
2010 and May, 2009 issues of Intellectual Property Today.
Thursday, April 26, 2012
The United States Patent and Trademark Office is including a WARNING FROM THE
USPTO CONCERNING UNOFFICIAL TRADEMARK SOLICITATIONS when issuing Certificiates of Registration for trademarks and service
marks. A copy of the Warning is reproduced below:
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Wednesday, March 21, 2012
In a unanimous decision, the United States
Supreme Court yesterday issued its opinion in Mayo Collaborative Services
v. Prometheus Laboratories. In an opinion authored by Justice Breyer, the Court found that the patent
claims at issue were not patent eligible and reversed the Court of Appeals. We first wrote about this case
on December 13, 2011. Briefly, the case addresses whether there is a right to
gain patent monopoly over a medical diagnostic technique, or more generally, whether a patentee can monopolize basic, natural
biological relationships claimed as a diagnostic procedure. (For a more detailed discussion of the
background and pre-Supreme Court procedure, see our December 31, 2012 blog entry.) The Court held no, there
is no such right.
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for this author, really brought nothing new to light and was, for all practical purposes, a fact specific
case that really shed no new light on the scope of the patent law and where natural phenomenon fit in it. Instead
of taking the opportunity to clarify the issue of patentability of inventions containing natural phenomenon, the Court merely
rehashed prior cases and found that the patents at issue fit somewhere between Diamond
v. Diehr (patent found claim eligible- “‘a process is not unpatentable
simply because it contains a law of nature or a mathematical algorithm.’”) and Parker v. Flook (patent
found claim ineligible- provid[ing] a[n unpatentable] formula for computing an updated alarm limit). The
Court found that the Prometheous patent were more similar to the Flook patent.
The Court also reiterated, as it had in remanding this
case back to the Court of Appeals after hearing it the first time, that the Bilski, “machine or transformation”
test was not an absolute but merely one marker of patentability. The Court then re-stated that is has repeatedly emphasized a
concern that patent law not inhibit future discovery by improperly tying up the use of laws of nature and the like, and there
is a danger that granting patents that tie up their use will inhibit future innovation, a danger that becomes acute when
a patented process is no more than a general instruction to “apply the natural law,” or otherwise forecloses
more future invention than the underlying discovery could reasonably justify.
Perhaps the most instructive sections of the opinion
were when the Court: (1) appeared to say, indirectly, that Prometheous claimed to broadly: [“o]ne problem with
[process] patents is that the more abstractly their claims are stated, the more difficult it is to determine precisely what
they cover.” (quoting C. Bohannan & H. Hovenkamp, Creation without Restraint: Promoting Liberty and Rivalry in Innovation
112 (2012) and (2) admitted “Courts and judges are not institutionally well suited to making the kinds of judgments
needed to distinguish among differ-ent laws of nature. And so the cases have endorsed a bright-line prohibition against patenting
laws of nature, mathematical formulas and the like, which serves as a somewhat more easily administered proxy for the underlying
“building-block” concern” (in other words, we can’t figure it out so this is what we came up with
for the time being).
While the outcome of the case is sensible, the approach by the Court was not as strong as it could have been.
So, the long and short of it appear to be that: (1) when dealing with any invention that includes natural phenomenon
(but don’t all inventions at some level) do not claim them too broadly and (2) be sure, when including natural phenomenon
in a claim, to subordinate the natural phenomenon to a defined process.
Please contact Wiemelt Knechtel at 602-901-4250 or 312-372-7664
or by email at email@example.com or firstname.lastname@example.org to
discuss how we can help you protect your intellectual property.
Monday, March 12, 2012
11:43 am cdt
Choice of a New Generation
Mark E. Wiemelt, of WIEMELT KNECHTEL, was quoted in a March 12, 2012 Advertising
Age feature article entitled Decades After Pepsi, MOM Is 'Choice of a New Generation'. The article
addressed potential trademark rights ownership, abandonment and residual goodwill issues in the context of MOM Brands'
(Malt-O-Meal) use of Pepsi's iconic slogan "Choice of a New Generation." Advertising Age is "is
the leading global source of news, intelligence and conversation for marketing and media communities."
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