SW Legal studies in Business

Congress Has Ability to Cancel Trademarks
Description Appeals court held that when a clause was put in an appropriation bill for the Patent and Trademark Office that said for it to kill a specific trademark, the Office had the ability to cancel the mark immediately.
Topic Intellectual Property
Key Words Trademark; Cancellation; Congressional Action
C A S E   S U M M A R Y
Facts

The writer William Kittredge invented the phrase “The Last Best Place” in 1988 as a title for a book he wrote about Montana. The phrase was widely used in the state. In 2001, Last Best Beef, a Nevada company, filed trademark registrations for “The Last Best Place” for cover various goods and services. Many people in Montana were irked that the company claimed the mark. In 2005, the President signed an appropriations bill that included funding for the Patent and Trademark Office (PTO). The bill contained a line that stated that the PTO would not “register, issue, transfer, or enforce any trademark of the phrase ‘The Last Best Place.’” The PTO then canceled existing trademarks and stopped processing other applications. The company sued, contending the bill was improper. The trial court held for Last Best Beef, finding that the law improperly circumvented the Lanham Act and ordered the trademarks reinstated. The PTO appealed.

Decision

Reversed and remanded. By implication, Congress suspended the application of the Lanham Act to the registration of the phrase “The Last Best Place.” When Congress clearly specified that the PTO was not to register, issue, transfer, or enforce any mark with that phrase, the PTO has the authority to cancel trademark registration for the phrase. The agency could do so immediately and did not have to conduct hearings on the validity of the trademark.

Citation The Last Best Beef, LLC v. Dudas, 506 F.3d 333 (4th Cir., 2007)

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