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John K. Burke is a Shareholder at Vedder Price and a member of the Intellectual Property group in the firm’s Chicago office. Mr. Burke counsels clients in patent, trademark, copyright and trade secret matters. He has prosecuted patent and trademark applications before the U.S. Patent and Trademark Office (USPTO) and has drafted patent applications covering a variety of technologies, ranging from electrical and mechanical devices to software and business methods. Mr. Burke has experience assisting clients in enforcing intellectual property rights in U.S. district court and before the Trademark Trial and Appeal Board. Mr. Burke also advises clients on monetizing intellectual property through licensing and sales agreements and by conducting patent validity and infringement analyses.

On June 19, 2017, the United States Supreme Court held that a portion of the first clause of the U.S. Trademark Law (the “Lanham Act”), which is commonly known as the disparagement clause, was facially unconstitutional under the First Amendment. Specifically, the Supreme Court found that a denial of registration of a mark under the disparagement clause of the Lanham Act, which prohibits registration of a mark that may “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead,” violates the Free Speech Clause of the First Amendment. The ruling, while rather shocking as to its reach, came as no surprise to the trademark community. This decision now casts a shadow on the remainder of what is called Section 2(a)1 and opens the door to further expansion of our understanding of speech.

This litigation began when Mr. Simon Shiao Tam, a humble guitar player in a band made up of Asian-American men that called itself The Slants, pushed to change the law. Mr. Tam’s fight began at the Trademark Office in 2010, when he filed an application to register the name of his band as a trademark.2 In 2011, Mr. Tam’s first application to register the band’s name as a trademark was denied under the disparagement clause. After Mr. Tam refiled a second application for the mark THE SLANTS and was rejected on the same grounds, he appealed the rejection to the Trademark Trial and Appeal Board, the Federal Circuit Court of Appeals, and ultimately the Supreme Court.3
Continue Reading The Slants Win in Matal v. Tam: Trademark Registration Cannot Be Denied for Offensive Terms

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act (DTSA). Unlike other forms of intellectual property, trade secrets issues have been addressed mainly through state law. The DTSA provides a new federal court civil remedy for acts of trade secret misappropriation, among other key provisions:

Ex Parte Seizure of Property

The most controversial aspect of the DTSA is the ex parte seizure provision, which permits a court to order the seizure of property if deemed necessary to prevent the propagation or dissemination of the trade secret. A party seeking an ex parte seizure will have to demonstrate that “extraordinary circumstances” exist warranting the seizure. The ex parte provision also allows a defendant to seek damages for abusive or wrongfully-acquired seizure orders.

Jurisdiction

The DTSA provides that the U.S. district courts have original jurisdiction over civil actions brought under the law. Such jurisdiction is not exclusive. To establish jurisdiction in federal court, a plaintiff will have to show that the trade secret is “related to a product or service used in, or intended for use in, interstate or foreign commerce.”
Continue Reading President Obama Signs the Defend Trade Secrets Act into Law: What You Need to Know Now