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IPO Daily News™

Monday, 18 December 2017

18 December 2017

Federal Circuit Summaries Logo

* * * * FEDERAL CIRCUIT HOLDS IMMORAL OR SCANDALOUS PROVISION OF TRADEMARK ACT INVALID UNDER FIRST AMENDMENT

In re: Brunetti, 15-1109 — On Friday in an opinion by Judge MOORE, the Federal Circuit found the Trademark Act’s bar on registration for immoral or scandalous marks unconstitutional. Brunetti sought to register FUCT in connection with items of apparel. The USPTO rejected the application as immoral or scandalous under Trademark Act section 1052(a). Brunetti argued that substantial evidence did not support the USPTO’s finding that the mark was vulgar under section 1052(a) and challenged the constitutionality of the bar on registration.

The Federal Circuit said that substantial evidence supported the USPTO’s finding that the mark comprised immoral or scandalous material. However, the bar on registration was an unconstitutional content-based speech restriction that “target[ed] a mark’s expressive message, which [wa]s separate and distinct from the commercial purpose of a mark as a source identifier.” This restriction did not survive strict scrutiny review. Moreover, even if the bar were treated as “a regulation of purely commercial speech,” it would not survive intermediate scrutiny because there was no substantial government interest in regulating the speech. The Court rejected the government’s arguments that trademark registration was a government subsidy program or a limited public forum.

In a concurring opinion, Judge DYK argued that the Court was obligated to adopt a saving construction to avoid the constitutional question and suggested narrowing the scope of the immoral-scandalous provision to obscene marks.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO PARTICIPATES IN MEETING WITH IP ATTACHÉS

On Friday, 15 December, the USPTO’s IP Attachés met with representatives from IPO and other IP organizations. The IP Attachés serve around the globe with the goal of improving IP systems for the benefit of U.S. stakeholders. They returned to the U.S. last week for outreach and consultations in Washington, D.C. During Friday’s meeting, IPO’s international outreach efforts, including its work to curb trade secret misappropriation, were discussed. The IP Attachés addressed issues in the countries they serve, including counterfeiting issues. They encouraged submitting comments for the U.S. Trade Representative’s Special 301 Review.

IP stakeholders may contact the IP Attachés when they encounter IP issues abroad. IPO members are encouraged to inform IPO about their international IP concerns and to submit topics for potential inclusion in IPO’s comments for the Special 301 Review through their IPO committees.

MANAGE YOUR MEMBERSHIP BENEFITS

Are you using your IPO benefits to their fullest potential? Are you new to IPO? Would you like to get your staff more involved? Join us for a 30-minute IPO membership orientation call. Calls for corporate and small business members are held on the 3rd Tuesday of each month at 2:00p.m. ET. Calls for law firm members are held on the 4th Tuesday of each month at 2:00p.m. ET. Contact LORNA SODERBERG for further information or to sign up to participate.

IP IN THE MASS MEDIA

Times Discusses Planned IP Tax for Companies in Puerto Rico

On Saturday the New York Times reported that the current version of a tax bill Congress is hoping to pass this week would treat U.S. mainland companies operating in Puerto Rico as operating in foreign countries, imposing a 12.5 percent tax on income they receive from intellectual property.


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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Judge Sue Robinson, 2017 Distinguished IP Professional Award Winner