You are here

Stay in the Know: Recent Developments in Trademark Law

Retailers generally appreciate that their brands are among their most valuable assets. But it can be challenging for them to know how current trademark law will affect their selection, registration, and enforcement of those brands. The following are some recent developments in U.S. trademark law that brand owners should understand.
Certain Cannabis and Cannabis-Related Trademarks Are Registrable
It has long been held that obtaining a federal trademark registration requires use of a mark in commerce that is lawful under federal law. For this reason, the U.S. Patent and Trademark Office (USPTO) has traditionally refused registration of trademarks for cannabis and cannabis-related goods or services.  In light of the enactment of the 2018 Agricultural Improvement Bill (aka the Farm Bill), on May 2, 2019, the USPTO released a new examination guide concerning marks for cannabis and cannabis-related goods and services. In sum, for trademark applications filed after December 20, 2018, the USPTO clarified that registration is available only for marks covering hemp-derived goods with less than 0.3% THC and for services associated with such goods. Consequently, applications for goods derived from hemp or services related to such goods must explicitly state that the goods contain less than 0.3% THC. Applications for goods containing hemp for human or animal consumption, however, will be refused because such hemp-based products have not been approved by the FDA.

Supreme Court Finds “Immoral or Scandalous” Marks Registrable
In 2017, the U.S. Supreme Court held in Metal v. Tam that the provision of the federal trademark act (the Lanham Act) prohibiting the registration of “disparaging” marks violates the First Amendment’s protection of free speech. In that case, the members of a rock band were refused registration of a mark for the name “the Slants” for their “all Asian-American band.” It thus came as no surprise when, on June 24, 2019, the Supreme Court found a similar provision of the Lanham Act prohibiting the registration of “immoral or scandalous” marks was likewise unconstitutional. In Iancu v. Brunetti, the owner of the FUCT brand of hats was denied registration of the mark FUCT on the grounds that it was “immoral or scandalous.”  Citing its 2017 “Slants” case, the Court held the prohibition discriminates on the basis of viewpoint. Retailers with creative brand names may consider filing trademark applications that previously may have been rejected.

Licensees Retain Trademark Rights in Bankruptcy
In a previous post, we discussed the split among federal courts concerning whether a trademark licensor in bankruptcy may reject the license and deprive the licensee of the use of the brands. On May 25, 2019, the U.S. Supreme Court issued its decision in Mission Product Holdings, Inc. v. Tempnology LLC, which is likely to impact valuations of distressed brands. Specifically, the Court held that a trademark licensee may continue to use a licensed trademark despite the bankrupt debtor-licensor’s rejection of the related trademark license. Since the purchaser of a debtor’s licensed brand can no longer expect to use the threat of termination as leverage to renegotiate licenses that are unfavorable to the brand owner, this ruling is likely to result in lower valuations of trademark portfolios that are encumbered by such below market licenses (i.e., licenses that are unusually favorable to the licensee).

By keeping informed of developments such as those highlighted above, owners of retail brands can put themselves in the best position to maximize the value of those brands.

Subscribe to The Journal

* indicates required
Areas of Interest

Pragma International will use the information you provide on this form to be in touch with you and to provide updates and marketing. Please let us know all the ways you would like to hear from us:

You can change your mind at any time by clicking the unsubscribe link in the footer of any email you receive from us, or by contacting us at We will treat your information with respect. For more information about our privacy practices please visit our website. By clicking below, you agree that we may process your information in accordance with these terms.

We use Mailchimp as our marketing platform. By clicking below to subscribe, you acknowledge that your information will be transferred to Mailchimp for processing. Learn more about Mailchimp's privacy practices here.

Article Rating: 
Average: 4.5 (8 votes)
Total reads: 871
Andrew J. Ferren's picture

Intellectual property advice, commercial agreements, and technology transfer and licensing matters are the focus of Andy Ferren’s practice. Andy handles a wide range of business matters for established and emerging companies, non-profit organizations, closely-held businesses, and individual entrepreneurs. Additionally, he helps to coordinate the firm’s trademark and copyright practices.


Andrew O’Connor's practice focuses primarily on securing and protecting clients' intellectual property rights. With extensive experience in matters concerning patents, design patents, trademarks, trade dress, false advertising, product disparagement, trade secrets and copyrights, Andrew devotes extensive strategic planning and skilled advocating both in and out of the courtroom in order to assist clients with successfully navigating the constantly evolving intellectual property law landscape. Andrew also prosecutes and manages the trademark portfolios of clients before the U.S. Patent and Trademark Office.

Andrew focuses on the broader goals of each client’s business model and overall brand, negotiating intellectual property license agreements, corporate mergers and intellectual property asset management projects for a broad array of companies, ranging from entrepreneurs, start-ups and laboratories to Blue Chip multi-national corporations. Andrew’s extensive experience in the pharmaceutical, medical device, retail and video gaming industries has produced consistent and successful implementation of each individual client’s specific goals and interests in highly sophisticated industries.