United States: National
The United States remains the primary playing field for the world’s pre-eminent rights holders; home-grown branding titans and foreign contenders alike strive to retain their place in this fiercely competitive market. The US trademark scene has enjoyed robust growth over the past year; nevertheless, ever-increasing pressure to reduce costs is forcing law firms to move with the times. The landscape has been significantly reshaped by expectations of alternative fee arrangements, the consolidation of work and a number of headline-grabbing mergers.
In 2015 the Supreme Court ruled in B&B Hardware v Hargis Enterprises that Trademark Trial and Appeal Board (TTAB) decisions have a preclusive effect on federal court actions. Very few trademark cases have cited this judgment thus far; however, it has certainly percolated through the collective consciousness of lawyers and businesses, as there has been a noticeable shift in the thinking and approach to TTAB matters. Practitioners are already treading more carefully than before, but the ruling will be a point of interest for years to come and its full effects are yet to be felt. The TTAB also introduced a handful of administrative changes in 2016.
Section 2(a) of the Lanham Act, which refuses protection for disparaging marks, also continues to spark heated debate. National Football League team the Washington Redskins has been embroiled in a fight with the US Patent and Trademark Office since its mark was cancelled in 2014 on grounds of disparagement. The latest development in the dispute came in late 2015, when the Court of Appeals for the Federal Circuit held the clause unconstitutional in a case involving The Slants, an Asian-American rock band. All eyes are now on the Supreme Court, which is expected to decide on the issue in 2017.
US market players are more compelled than ever before to compete at an international level, due to the growing globalisation of brands. Multi-jurisdictional quarrels and the development of cross-border strategies have become the norm, even for start-ups and smaller companies. Further, copycats are becoming progressively bolder and more sophisticated in their transgressions, making counterfeiting a persistent – and crucial – concern. The easing of the US-Cuba embargo is yet another reason why international collaboration and strong overseas networks have become paramount.
Meanwhile, the increasing number of avenues for trademark misuse in cyberspace – from the proliferation of social media to the roll-out of new generic top-level domains – means that there is no shortage of work in the digital sphere. Social media as a promotional platform remains a source of both opportunities and headaches for brand owners. Despite an uptick in trademark registrations for hashtags, the question remains as to which hashtags can be protected and the extent to which they can be enforced.
As a vibrant and sophisticated market, there is little doubt that the United States is a global leader in intellectual property. Although the country may occasionally pose navigational challenges for newcomers and veterans alike, brand owners of all stripes can rest assured, since many of the world’s finest legal minds reside here. The WTR 1000 provides a comprehensive list of these leading trademark professionals, state by state, in the following pages.
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