Federal Circuit – Page 5

Federal Circuit Sitting En Banc Declares Section 2(a) of the Lanham Act Unconstitutional

December 22, 2015Matthew L.M. Fletcher1 Comment

Here is the opinion in In re Tam:

An excerpt:

Section 2(a) of the Lanham Act bars the Patent and Trademark Office (“PTO”) from registering scandalous, immoral, or disparaging marks. 15 U.S.C. § 1052(a). The government enacted this law—and defends it today— because it disapproves of the messages conveyed by disparaging marks. It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys. That principle governs even when the government’s message-discriminatory penalty is less than a prohibition.

Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech. Another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and should be stopped. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech.

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.

Federal Circuit Rejects Yurok Tribe’s ISDEAA Contract Claim

May 8, 2015Matthew L.M. Fletcher

Here are the materials in Yurok Tribe v. Dept. of Interior:

CAFed Opinion

An excerpt:

The Yurok Tribe (Tribe) appeals from the Civilian Board of Contracting Appeals’ (Board) dismissal for failure to state a claim upon which relief may be granted. J.A. 2–3. Because the Tribe has not been awarded a contract, we affirm.

1 Yurok Opening Brief

2 Interior Answer Brief

3 Yurok Reply Brief

Federal Circuit to Decide En Banc if Lanham Act § 2(a) Banning “Disparaging” Marks is Constitutional

April 27, 2015Matthew L.M. Fletcher

Here are the materials in In re Tam:

CAFED Panel Opinion

Sue Sponte Hearing En Banc Order

Panel materials:

Tam Opening Brief

USPTO Brief

Tam Reply

Federal Circuit Rejects Shinnecock Nation’s Judicial Takings Claims re: Dismissal of Land Claims under Sherrill

April 7, 2015Matthew L.M. Fletcher

Here is the opinion in Shinnecock Indian Nation v. United States.

An excerpt:

Accordingly, we affirm the United States Court of Federal Claims’ determination that the Nation’s breach of trust claims are not yet ripe for review, vacate its ruling that it lacked jurisdiction over those claims, and remand the case with instructions to dismiss the breach of trust claims without prejudice.

A similar analysis applies here. The Nation alleges that in applying the doctrine of laches to bar its land claim, the district court improperly “took away the Nation’s legal right to sue for compensation for its stolen land.” The Court of Federal Claims, however, is without authority to adjudicate the Nation’s claim that it suffered a compensable taking at the hands of the district court. See Allustiarte, 256 F.3d at 1352; Joshua, 17 F.3d at 380. The court has no jurisdiction to review the decisions “of district courts and cannot entertain a taking[s] claim that requires the court to scrutinize the actions of another tribunal.” Innovair, 632 F.3d at 1344 (alteration in original) (citations and internal quotation marks omitted). As the government correctly notes, “[d]eciding whether the district court’s judgment resulted in an unconstitutional taking of the Nation’s property would require the Court of Federal Claims to review the judgment and pass on its correctness.” Just as the plaintiffs’ takings claim in Allustiarte was an improper collateral attack on the judgment of the bankruptcy courts, the Nation’s proposed judicial takings claim is an attempt to mount an improper collateral attack on the judgment of the district court.

Briefs here. Lower court materials here.

Federal Circuit Briefs in Shinnecock Indian Nation v. United States

November 5, 2014Matthew L.M. Fletcher1 Comment

Here:

Shinnecock Opening Brief

US Response Brief

Shinnecock Reply Brief

Lower court materials here.

Federal Circuit Briefs in Hopi Tribe v. United States

July 7, 2014Matthew L.M. Fletcher

Here:

Hopi Opening Brief

US Answer Brief

Hopi Reply Brief

Lower court materials here.

Guest Post — Anthony Jones on the Federal Circuit’s Recent Trademark Decision and Its Import for the Washington Football Team’s Nickname

May 15, 2014Matthew L.M. Fletcher

Patently-O commentator Mark Bartholomew points to this Federal Circuit case. The issue is when a trademark may be denied for containing “matter which may disparage” a group of persons. At issue in this case is a proposed mark of STOP THE ISLAMISATION OF AMERICA which was denied for violation of this disparagement provision. The Federal Circuit approved a two-prong test. Bartholomew further states:

“Under the first prong of that test, a court must determine the likely meaning of the mark in question. Under the test’s second prong, the court examines whether the likely meaning refers to an identifiable group and, if so, whether that meaning is disparaging to a substantial composite of that group.”
“The stakes are high here because the Federal Circuit is the typical route for appeals of [Trademark Trial and Appeal Board] decisions, and a highly anticipated decision from the TTAB on disparagement involving the WASHINGTON REDSKINS mark is due soon.”

There ought to be little doubt that the term “Redskins” refers to an identifiable group – i.e., American Indians. As to the issue of disparagement, the Federal Circuit has endorsed a rather permissive evidentiary standard, which allowed for consideration of anonymous blog posts to show public perception and reaction to a proposed mark, and statements from members of the disparaged group stating concern over such disparagement. One key issue that the Court did not address is what constitutes a “substantial composite” of the referenced group.