I’m kind of tired of In re Tam also. But I have been a bit surprised that there has not been a more discussion, or as far as I can tell, hardly any, of a proposition pushed by the “amicus” brief filed by INTA, the International Trademark Association, on the en banc appeal — and how that proposition was most definitively rejected by the Federal Circuit in its December 22, 2015 opinion.
That’s the question of whether a would be trademark registration, barred by Section 2(a) on the grounds of disparagement (or, perhaps, any grounds), can still find some solace — or at least a federal forum for enforcement — by making a claim under 15 U.S. § 1125(a), otherwise known as Section 43(a) of the Lanham Act, which prohibits any false designation or description regardless of whether a mark is registered.
I use the scare quotes around “amicus” because with amici like this… well, in fact, I can and will say very little at this procedural moment, but will let the papers speak for themselves and invite the learned community to be heard.
First, some background on the INTA part of it, which may or may not have anything to do with the court’s decision to address Section 43(a), but is a story in and of itself. INTA does not get involved as an amicus unless it is asked. Read More…