Acting as counsel of record, Intellectual Property Partner Dyan Finguerra-DuCharme and Associates Danielle Tepper and Vinodh Jayaraman co-authored an amicus brief in conjunction with the New York Intellectual Property Law Association (“NYIPLA”) urging the U.S. Supreme Court (“SCOTUS”) to clarify the scope of trademark protection afforded to unregistrable marks under Section 43(a) of the Lanham Act – the primary federal trademark statute within the U.S. 

Is the “anti-disparagement” bar to trademark registration constitutional?

Filed on November 21, 2016, the amicus brief concerns Lee v. Tam, a case before SCOTUS in which the Court will determine the constitutionality of the “anti-disparagement” bar to trademark registration contained in Section 2(a) of the Lanham Act.

While NYIPLA does not take a position as to whether Section 2(a) is constitutional, the brief seeks clarification on whether the owner of a mark that was refused registration under Section 2(a)’s anti-disparagement provision may nevertheless assert an unfair competition claim under Section 43(a) of the Lanham Act.

Trademark Protection Under Section 43(a): Federal Unfair Competition Claims

Finguerra-DuCharme and her co-authors argue that the legislative history of the Lanham Act demonstrates that Section 43(a) is expansive, and intended to create a federal unfair competition claim to assure that consumer confusion does not arise by the concurrent use of two marks. In furtherance of this purpose, the Section allows a brand owner who has not received a federal trademark registration to nonetheless enforce its mark against another who is using a mark that is likely to cause confusion.

Additionally, the authors contend that the U.S. Patent and Trademark Office’s (“PTO”) denial of an application on the grounds that the mark “may disparage” is wholly irrelevant to the question of whether the trademark owner can utilize Section 43(a) to prevent another from using their mark in a way that will likely cause consumer confusion, mistake or deception as to source or origin of the goods.

Moreover, the brief asserts that a mark can still distinguish the source of goods or services even if it conveys a message that “may disparage.” And, as the authors explain, because the disparagement clause of Section 2(a) is not designed to address distinctiveness, the fact that a mark may disparage certain persons should not vitiate its owner’s ability to protect its distinctive designation and sue for unfair competition under Section 43(a) to prevent consumer confusion.

NYIPLA’s Request to SCOTUS

For these reasons, Finguerra-DuCharme and her co-authors impelled the Court to make clear that owners of common law marks should not be precluded from asserting unfair competition claims, even if the PTO has denied their application under the anti-disparagement bar of Section 2(a).

The full text of the amicus brief can be found here.

More About Pryor Cashman’s Trademark Practice

Pryor Cashman’s Trademark Practice manages large-scale trademark maintenance and enforcement programs for some of the world’s most recognizable brands and celebrities. The firm advises on all aspects of trademark law, from establishing vigilance programs to litigating disputes, and has won numerous cases which have become the gold standard for addressing conflicts between intellectual property rights and the First Amendment.

To learn more about our work in this area, please visit here.