Lanham Act boundaries brought to fore in 2016

By Molly Buck Richard and David J Diamond

Notable decisions in 2016 expanded the Lanham Act’s borders of extraterritorial application, while the constitutional debate over Section 2(a) is poised for resolution in 2017

Significant decisions and pending cases in 2016 underscored the boundaries of US trademark law, whether geographic, constitutional or as applied to emerging fields such as social media. Trademark decisions reinvigorated the discussion over when foreign trademark activity is actionable under the Lanham Act, while the major constitutional question of 2015 over the content-based restrictions of Section 2(a) posed by the Tam and Pro-Football cases remains pending. The Trademark Trial and Appeal Board (TTAB) enforced a more discriminating standard for acceptable social media specimens through FTD, curtailing the scope of registrable social networking services. The more permissive Octane Fitness standard for recovery of attorneys’ fees gained greater traction with its adoption by the Fifth and Ninth Circuits, which may serve as the tipping point for adoption by remaining circuits.

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Issue 71