United States Annual Review: The Seventy-Fifth Year Of Administration Of The Lanham Act Of 1946

• Jurisdiction: United States,Federal
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Subject Matter: Intellectual Property, Trademark
• Author: John L. Welch and Theodore H. Davis Jr.
• Published date: 07 March 2023

In his most recent annual report on the state of the federal judiciary,¹ Chief Justice John Roberts noted a consistent decline in the number of civil filings in federal courts beginning in fiscal year 2020.² Whether because of the COVID pandemic or for other reasons, much the same decline was visited on litigation under the Lanham Act, related state statutes, and the common law of unfair competition during the Act's Diamond Anniversary. The reported opinions addressed by this Review therefore are conspicuously less numerous than those covered in past years, especially those originating in the federal courts and state courts of general jurisdiction.

Nevertheless, the past year was not without notable developments, including, most notably, those arising from the intersection of trademark law, on the one hand, and speech protected by the First Amendment to the federal Constitution,³ on the other.⁴ For years, courts entertaining infringement-based challenges to deliberate imitations of plaintiffs' marks for allegedly expressive purposes have had two frameworks available to them: (1) the standard multifactored test for likely confusion, typically applied to evaluate the lawfulness of alleged parodies;⁵ and (2) the test found in Rogers v. Grimaldi,⁶ which requires the plaintiff to demonstrate that the imitation of its mark in the title or content of an expressive work either has no artistic relevance to that work, or, if it does have artistic relevance, it is explicitly misleading.7 A plaintiff before a court that has adopted Rogers must also demonstrate that confusion is likely, whether as a standalone showing, as in the Ninth Circuit, or as an inherent part of the inquiry into whether the defendant's use is explicitly misleading, as in the Second Circuit.⁸

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Footnotes

1. John G. Roberts, Jr., 2022 Year-End Report on the Federal Judiciary 5 (Dec. 31, 2022), 2022year-endreport.pdf (supremecourt.gov).

2. The federal judiciary's fiscal year runs from October 1 to September 30 of each year, while the Lanham Act year for purposes of this Review runs from July 1 to June 30; there consequently is not a direct overlap between the two.

3. U.S. Const. amend. I.

4. That intersection has been addressed in numerous pieces appearing in the pages of this journal. See, e.g., Taylar E. Green, The Rogers Test Dances Between Trademark Protection Under the Lanham Act and Freedom of Speech Under the First Amendment, 112 TMR 843 (2022); Kathleen E....