Tom Dunlap HeadshotBy Thomas Dunlap

Partner at Dunlap Bennett & Ludwig

[12.19.2019 Leesburg] As 2019 comes to an end, we all are left to reflect and anticipate what’s to come in 2020.  In the legal world of Intellectual Property, 2019 proved to be influential with the outcomes in cases, such as Iancu v. Brunetti, one of the biggest cases in trademark law. When you combine that case with the recent Nantkwest case the legal world saw huge changes in the trademark and patent world when it comes to dealing with the USPTO that presage other changes to come in 2020.

To explain, Brunetti was a follow-up to the Supreme Court’s Matal v. Tam case where the Court unanimously ruled the Lanham Act’s ban on disparaging trademarks was a violation of First Amendment free speech rights.  The Brunetti case struck down the USPTO ban on “immoral or scandalous” trademarks.  The USPTO guidance now states

“The portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination of immoral or scandalous matter no longer apply. Applications that received an advisory refusal under the scandalousness provision and were suspended will be removed from suspension and examined for any other requirements or refusals. If an application was previously abandoned after being refused registration under the provision, and is beyond the deadline for filing a petition to revive, a new application may be filed.”

Examination Guide 2-19

This means retailers and other brand owners have some additional options to consider when pursuing a new mark and it changes the way the USPTO handles marks.

If you combine this case with the Supreme Court’s ruling from December 11, denying the USPTO the right to seek attorney’s fees in patent appeals under Section 145 of the Patent Act in Peter v. NantKwest, Inc., in part, because it was inconsistent with the “American Rule” on attorney’s fees. Which while it does not directly prevent the USPTO from asking (such as in the EDVA case BV v Matel) under § 1071(b)(3) where a trademark applicant who files a action in district court action challenging the final decision of the PTO, to pay, as ‘all expenses of the proceeding,’ the salaries of the PTO’s attorneys and paralegals attributed to the defense of the action.’

The striking similarity of the language in 107 – when compared with 145 which states the appellant must pay “[a]ll the expenses of the proceedings shall be paid by the applicant” when a decision of the Patent Trial and Appeal Board (PTAB) is appealed to the federal district court, leads me to believe that the next case before any district court on the payment of trademark attorney’s fees to the USPTO will be denied, relying on Nantkwest in 2020.

Further I think that in light of the dissent in the Nantkwest case – which laid out a path for potential legislation to address the first Amendment and viewpoint issues raised in both Matal v Tam and Iancu v Bruentti, I suspect that we will see at least a proposed amendment to the Lanham Act and other changes to how trademark are prosecuted.  Without the fear of having to pay USPTO fees, even if you win an appeal, combined with the ability to file what the USPTO had termed scandalous marks, I think we will see more marks and more contest of the will of the USPTO in 2020.

In addition, I believe Romag Fasteners, Inc., Petitioner v. Fossil, Inc., et al. which the Supreme Court will hear in June of 2020, will be a big trademark case – finally resolving a split in the circuits as to whether you have to prove willfulness to obtain lost profits in a trademark infringement case.  Personally, I would also like to see the Federal District Court in WDTX Waco division and Judge Albright beat a concurrently filed PTAB petition to trial and then have the Federal Circuit decide that the Article II Court’s decision on the merits renders the PTAB’s decision moot.  We will just have to wait and see…

Posted in: Intellectual Property, Intellectual Property - Trademarks

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