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.

In its Dec. 22, 2015, decision in Tam II, the Federal Circuit invalidated Section 2(a) on First Amendment grounds.

Simon Shiao Tam is the frontman of an Asian-American rock band called “The Slants,” which seeks to reclaim ownership of Asian stereotypes and draws inspiration from “childhood slurs and mocking nursery rhymes.” Tam sought to register the mark, “The Slants.” Id. at *4. The PTO examiner rejected the application, finding that the term “slants” would likely be disparaging to people of Asian descent. The Trademark Trial and Appeal Board (TTAB) affirmed, as did a Federal Circuit panel. See id. at *4–6.