We report on important decisions from the U.S. Court of Appeals for the Federal Circuit that (i) invalidated the Lanham Act’s preclusion of disparaging marks; (ii) held that the International Trade Commission lacks jurisdiction over cases involving “intangible” goods; (iii) confirmed the constitutionality of the inter partes review provisions of the America Invents Act; and (iv) defined the scope of infringement liability for products manufactured abroad.
Anti-Disparagement
Section 2(a) of the Lanham Act precludes registration of “scandalous, immoral, or disparaging marks.” See In re Tam, No. 2014-1203, 2015 WL 9287035, at *4 (Fed. Cir. Dec. 22, 2015) (Tam II) (citing 19 U.S.C. §1052(a)). Where a proposed mark references a group of people, the Patent and Trademark Office (PTO) has refused to register the mark if it concludes that a substantial composite of that group would find the mark disparaging. See id. at *4. Although the statutory provision is not new, it saw only infrequent use until relatively recently.
