United States: Trademark Year In Review And What Lies Ahead: The Lanham Act's New Year's Resolutions For 2017

Last Updated: January 9 2017
Article by Anthony Rufo and Meagen K. Monahan

2016 is now in the rear view mirror. At the beginning of a new year, we often take a moment to reflect on the past year, while setting goals for the present. It's a time to say, "Last year had its ups and downs, but this year I'm going to . . ." There are so many choices; what will 2017 hold? Between this article's two authors, one of us resolves to finally learn Japanese and the other resolves to run a marathon, but we'll leave it to you to guess who is who. Setting personal goals aside, as two trademark attorneys we also both wonder what we can expect from The Lanham Act in 2017.

The truth is that 2016 was a somewhat busy year for trademark law, although, upon reflection, several important trademark issues are still unresolved. Given the number of unresolved trademark issues from last year, we can probably expect some pretty big decisions to come down the pike over the next twelve months. While we don't know for certain just how the Lanham Act will resolve these open questions, we thought it would be fun to imagine what some of the Lanham Act's own 2017 resolutions might be, while highlighting some of the more notable trademark cases of 2016, and in particular, the issues they left unresolved before the ball dropped in Time Square.

The Lanham Act's List of Either/Or Resolutions for 2017:

"I resolve to let go of my need to control. If others want to be offensive, provocative, and disparaging, who am I to judge?"

– OR –

"I resolve to protect the sensibilities of others. What harm does it do if I'd rather you be agreeable, pleasing, and nice?"

2017 should be the year that reveals whether the Lanham Act can continue to prohibit disparaging marks from being registered before the U.S. Patent and Trademark Office (USPTO) or instead, resolve to (maybe sometimes) be a bit more offensive.

Over the past few years, two different cases have asked whether Section 2(a) of the Lanham Act, which bars registration of marks that may disparage or bring into contempt or disrepute people, institutions, beliefs, or national symbols, violate the First Amendment as a viewpoint-based restriction on speech. In Blackhorse v. Pro Football, Inc., the Trademark Trial and Appeal Board cancelled several trademark registrations owned by the Washington Redskins, finding that they were offensive to Native Americans. A federal district court judge later agreed, and now the Fourth Circuit Court of Appeals has taken up the case. The appeal has been fully briefed, so a decision is imminent.

In In re Tam, the Federal Circuit Court of Appeals concluded that Section 2(a) does indeed violate the First Amendment, striking down the disparagement provision. The owner of the trademark THE SLANTS had argued that his all Asian-American rock band had the right to "take back" a traditionally offensive term, and that the Lanham Act unconstitutionally barred registration. The Court of Appeals agreed. The USPTO appealed to the Supreme Court. The High Court took the case, and the Washington Redskins even tried (to no avail) to get in on the action.

In re Tam is scheduled for oral arguments on January 18th. As we eagerly await this decision, we can enjoy the Slants' latest song, "From the Heart," which the band describes as "an open letter to the trademark office."

"I resolve to build a wall around the United States. U.S. trademark law is for U.S. trademark owners only."

– OR –

"I resolve to open the borders. Why can't we all just get along?"

This past year, we saw a number of cases wrestle with the extraterritorial reach of the Lanham Act. The courts will eventually need to decide whether to close the Lanham Act's territorial borders to foreign registrants and marks.

In 2016, the Fourth Circuit Court of Appeals extended the Lanham Act's southern border in respect to unfair competition and false advertising. In Belmora v. Bayer, the court held that Bayer could sue Belmora for its deceptive use of the mark FLANAX, in connection with ibuprofen within the U.S., notwithstanding the fact that Bayer only uses the mark FLANAX for the over-the-counter pain reliever in Mexico. Meanwhile, on the northern front, in Trader Joe's, Co. v. Hallatt, the Ninth Circuit Court of Appeals permitted Trader Joe's to sue a Canadian citizen for his use of Trader Joe's marks at his Canadian grocery store, Pirate Joe's. The Ninth Circuit held that the extraterritorial reach of the Lanham Act is not a jurisdictional question but rather a merits question, and remanded the case back to the district court. We hope to learn in 2017 whether Hallatt's use of Trader Joe's U.S. trademarks in Canada is sufficient to warrant liability under the Lanham Act.

In Sojuzplodoimport v. Spirits International, et. al, the Second Circuit Court of Appeals, relying upon the doctrine of comity, deferred to Russian government authority when it assigned its trademark rights to STOLICHNAYA (a/k/a, STOLI) to a purported Russian state agency. Possibly the beginning to warmer relations with our Russian counterparts? Well, maybe not. The Second Circuit ultimately dismissed the agency's claims due to laches and res judicata. In addition to this extraterritorial matter, the Second Circuit, in a hotly contested parallel imports case, affirmed the district court's issuance of a preliminary injunction against wholesaler H&H Services in Abbott Laboratories, et al. v. H&H Wholesalers, Inc., et al. We look forward to seeing whether H&H will prevail in arguing that it cannot, as a distributor, control down-stream confusion as to foreign-market goods.

"I resolve to redistribute the wealth among trademark attorneys. I was always told that 'sharing is caring.'"

– OR –

"I resolve to let the winners pay their own way. I mean, that is the American way, right?"

In the upcoming years, we may see the Lanham Act resolve its fee-shifting issues. In 2014, the USPTO announced that sections of both patent and trademark statutes permit it to recover attorneys' fees from an applicant that appeals an administrative decision to a federal district court. The USPTO's position stems from language requiring an appealing applicant to pay "all expenses of the proceeding" in Section 145 of the Patent Act and Section 1071(b)(3) of the Lanham Act. Prior to 2014, the USPTO interpreted these sections to only include routine expenses, such as travel and printing costs. Understandably, recent trademark and patent litigants have pushed back against the USPTO's new understanding.

For example, in 2015, the Fourth Circuit Court of Appeals accepted the USPTO's interpretation as applied to the Lanham Act, and required an appealing trademark applicant to pay the USPTO's attorneys' fees. But in 2016, in NanKwest v. Lee, a patent dispute in which NanKwest challenged the USPTO's motion for attorneys' fees, a district court judge rejected the USPTO's interpretation of Section 145, finding that it violates the "American Rule," which typically prohibits fee-shifting. The USPTO has appealed the case to the Federal Circuit Court of Appeals. Going forward, if some courts adopt the NanKwest position for trademark cases over the Fourth Circuit's position to the contrary, will the forum in which trademark applicants file their district court appeal determine whether they must pay the USPTO's legal bill?

In other news, the Fifth and Ninth Circuit Courts of Appeals have joined the Third, Fourth, and Sixth Circuits in adopting the Supreme Court's Octane Fitness fee-shifting test for the Lanham Act. Now, in determining whether a prevailing party should be awarded attorneys' fees, courts must consider only two factors: (1) whether the case stands out from others with respect to the substantive strength of the litigants' positions; and (2) whether the unsuccessful party has litigated the case in an unreasonable manner. Will the remaining circuits, where fee-shifting law is more convoluted, jump on the band wagon and adopt the Octane Fitness test?

"I resolve to do the bare minimum that is required of me. I've always heard that less is more."

– OR –

"I resolve to go the extra mile. It can't hurt to require just a bit more, right?'"

How much use is enough use under the Lanham Act? To the surprise of many, the answer is not very much. In Christian Faith Fellowship Church v. Adidas AG, the Federal Circuit Court of Appeals examined the level of commercial activity necessary to be considered "use in commerce" under the Lanham Act. According to the Federal Circuit, a sale of two branded hats to an out-of-state customer is sufficient for federal registration purposes. Moreover, the court's dicta suggests all sales of branded goods, even purely in local commerce, could potentially be considered "use in commerce." We will have to wait to see the extent in which this decision impacts trademark law.

"I resolve to keep things short and simple. It seems a three-prong test is sufficient for nominative fair use."

– OR –

"I resolve to be mysterious and complex. The more factors, the more substantive I am, right?"

Finally, at least three circuit courts of appeals disagree on how to consider a defendant's claim of nominative fair use, potentially requiring future resolution. Where the Third Circuit Court of Appeals treats nominative fair use as an affirmative defense once a likelihood of confusion is shown, the Ninth Circuit Court of Appeals employs its three factor test to determine whether there is likelihood of confusion. This past year, the Second Circuit weighed in with its own unique approach in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC by adding the Ninth Circuit's three factors to its standard eight-factor likelihood of confusion test. As a result, Second Circuit practitioners can look forward to briefing eleven factors in trademark disputes involving nominative fair use.

With an apparently busy year ahead for the Lanham Act, we will continue to keep you posted on any resolutions in 2017. In the meantime, if you are in the Boston area and interested in hearing a more thorough analysis of the cases discussed herein, please join Julia Huston on January 26, 2017 when she will be presenting The "Metes and Bounds" of the Lanham Act: A Trademark Year in Review at the Boston Bar Association's 17th Annual Intellectual Property Year in Review. For more information about the event, please visit the BBA's webpage.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
18 Sep 2018, Webinar, Boston, United States

What does the generalist in-house counsel need to know about patents and patent litigation? Protecting, exploiting, and enforcing new ideas and inventions are key considerations for any company.

12 Oct 2018, Other, Boston, United States

The New England Electricity Restructuring Roundtable has been meeting bimonthly since 1995 to discuss current topics related to important changes in the electric power industry in Massachusetts and throughout New England.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions