Virginia IP Law : Virginia Intellectual Property Lawyer & Attorney : Troutman Sanders Law Firm : Technology & Patent Litigation

In Renegade Tobacco Company, et al. v. FDA, E.D. Va. case no. 3:10-cv-265, the companies challenge 21 C.F.R. § 1140.16(a), which provides that tobacco product manufacturers:

shall not use a trade or brand name of a nontobacco product as the trade or brand name for a cigarette or smokeless tobacco product, except for a tobacco product whose trade or brand name was on both a tobacco product and a nontobacco product that were sole in the United States on January 1, 1995.

The Complaint alleges that the regulation applies even to wholly unrelated manufacturers and products, regardless of whether there is any likelihood of confusion by consumers, regardless of who first used or registered the name with the USPTO, and regardless of whether the products are sold in the same geographic markets.

For example, the Complaint alleges that Renegade, one of the plaintiff manufacturers, would be forced to stop using its “Tucson” cigarette trademark because of Hyundai’s SUV of the same name.  By contrast, names and marks like “Marlboro,” “Newport,” “Camel,” “Doral,” and “Winston” would survive under the 1995 grandfather clause.

The Complaint further alleges that the regulation invites brand/product name squatting and extortion, much like the problems with domain names that led to enactment the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d).

The claims in the Complaint are that the regulation violates the First Amendment’s free speech provision and the Equal Protection and Due Process Clauses of the Fifth Amendment, and that the regulation is ultra vires.

Although constitutional arguments may attract most of the legal ink, the case presents the fascinating IP situation of the federal government establishing rules that effectively disadvantage categories of trademarks and trade names for disfavored businesses.

The regulation is scheduled to take effect on June 22, 2010, but the FDA asserts that it is under review and that the agency has agreed not to enforce the regulation until that review is complete (and therefore that the case seeks relief not yet necessary and premature adjudication of constitutional issues).  For more information, see the memorandum in support of and opposition to the plaintiffs’ motion for a preliminary injunction, upon which a hearing has been set for May 27, 2010, before Judge Henry E. Hudson of the Eastern District’s Richmond division.