United States: National
At the centre of the IP world, the United States plays host to a phalanx of much-loved, globally recognised brands. On the back of an improving economy, trademark filings and enforcement actions are on the rise; conversely, the general appetite for fullblown litigation has waned, as rights holders continue to look to more cost-efficient resolutions. However, fights that do spill over into the courtroom are being taken more seriously than ever before; as evidence of this, an unusually high number of landmark trademark and patent disputes have reached the Supreme Court in recent years. This is surely testament to the growing importance of intellectual property and the notion that the United States is at the forefront of cutting-edge IP issues.
Most recently, the Supreme Court provided an answer to the long-running debate over the constitutionality of Section 2(a) of the Lanham Act, which prevents the federal registration of disparaging marks. In Matal v Tam the court unanimously held that the disparagement clause violated the free speech clause of the First Amendment. The result was also a victory for the Washington Redskins, a National Football League team which had been embroiled in a series of high-profile legal battles over its REDSKINS mark since 1992. The momentous verdict drew a mixed pool of responses: some commentators considered it a significant setback for minority groups, while others contended that in practice it will have little impact on future registrations.
In 2015 the Supreme Court also handed down a significant decision in B&B Hardware Inc v Hargis Enterprises, holding that US Patent and Trademark Office (USPTO) proceedings can have a preclusive effect on subsequent district court litigation. The ruling has rarely been cited since its issuance, meaning that the complete set of circumstances where issue preclusion can be applied remains indeterminate. This continues to be a hot talking point, especially for those heavily involved with Trademark Trial and Appeal Board (TTAB) actions.
In part because of the B&B Hardware decision, commentators have noted an increasing emphasis being placed on TTAB proceedings. This can also be attributed to new TTAB rules – the largest changes seen in over a decade – introduced at the beginning of 2017. These alterations have mostly been met with warm applause, as procedures have been simplified and sped up.
The USPTO has undergone further change following the unexpected resignation of its director, Michelle Lee, in 2017. This has been one of many key points of interest for rights holders and lawyers alike since US President Donald Trump came into office. The new administration’s impact on the wider trademark market remains characterised by uncertainty, as inhabitants of the IP world take a wait-and-see approach.
In addition to these legal and administrative developments, brand owners must contend with the growing threat of counterfeiters and the proliferation of crossborder infringements. Sophisticated online transgressors are another mounting area of concern; the rise of social media has substantially increased the volume of work that is needed to establish and protect a mark, and amplified the pace at which rights holders must move in order to keep up with their brands.
For newcomers hoping to break into the US trademark market, as well as long-time players aiming to solidify their presence, there is clearly no shortage of work at the moment. Although there is a prevailing feeling of uncertainty in light of the abovementioned developments, with great risk comes an abundance of opportunity. Those hoping to capitalise on the situation would do well to seek out the leading US trademark professionals listed in the following pages – many of whom are the finest branding lawyers in the world.
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