First posted on March 12, 2014.
Far be it from me to compare myself to the distinguished former Chief Judge of the Federal Circuit, the Hon. Paul R. Michel — but I will say this: Last night in Cleveland we both said pretty much the same thing about a certain trend in intellectual property law. Coming from any judge, what he said would be remarkable. Coming from Judge Michel, well, it certainly was a breath of fresh air.
First, thanks again to the Cleveland Intellectual Property Association for inviting me to present at the March meeting last night. It was a great pleasure discussing the issues in PTO practice raised by our appeal of the refusal to register THE SLANTS to such a group of thoughtful and gracious people. (I have embedded the PowerPoint and the CLE materials at the top and bottom of this post respectively.) You can get the gist of the issues I raised, once again, from this post — but they aren’t my point here, and they were not in any way part of Judge Michel’s comments. No, it’s a little more complicated than that.
Unlike some of my best friends, I don’t necessarily take the position that Section 2(a) just has to go as a policy matter. But administering that statutory provision does, as this case demonstrates, comes with a lot of problems, which are only going to get worse. These problems include grand helpings of arbitrariness and caprice. And in the case of THE SLANTS application in particular, there is — as we will argue in our brief — a real equal protection concern. The PTO’s present policy is so concerned about ethnic offense through trademark that it will explicitly refuse to register a mark based on the applicant’s own ethnic identity. That was my main presentation, in short.
After the two CLE presentations at 4:30, there was a brief reception while dinner was being set up. I was in a group, mostly Pearne & Gordon people, raising interesting thoughts and questions about the issues addressed in my presentation, and it occurred to me to declaim as follows: Short of one or more judges throwing the whole thing out, all these 2(a) cases are being decided via countless isolated judgment calls by examining attorneys at the PTO and, if appealed, reviewed by judges — at the TTAB, the Federal Circuit and perhaps the Supreme Court. But, really, these are judgment calls that should not even be made by judges, much less non-judicial officers, at all. In the case of THE SLANTS, these include discrete questions such as:
- Is the applicant’s ethnic identity a legitimate factor for evaluation of trademark use?
- If the PTO’s refusal is based on use of the PTO’s determination that mark is used by the applicant “in connection with an all-Asian-American band,” what obligation is the examining attorney under to ascertain that the band is actually “all Asian-American”?
- How many non-Asian members of the band would, under the Lanham Act, make the use non-disparaging?
- How much Asian “blood” does the Lanham Act require the members to have to constitute unacceptable use, or does trademark law merely go by how Asian they look?
- Is a finding of unacceptable use under 2(a) with respect to a given application controlling with respect to consideration of a subsequent application for the same mark by the same applicant which, absent that identity, would be unobjectionable on its face?
- If a word mark such as SLANT, which could be neutral, is registered properly — such as by a musical band consisting of non-Asians — what does the Lanham Act require if that registration is licensed or assigned to another party, such as an Asian bandleader, or one who invokes prohibited ethnic “signals” or other “offensive” conduct per Section 2(a)? Does that assignment invalidate the registration retroactively?
If Section 2(a) of the Lanham Act is constitutional, and if it really does prohibit the registration of ethnic slurs as trademarks — still and all, it surely does not answer these hard questions. Should judges, then, answer them?
The law as it stands is that the PTO will not register every disgusting or slanderous thing people can come up with as a trademark. But the Lanham Act does not tell us that DYKES ON BIKES and QUEER EYE FOR THE STRAIGHT GUY are acceptable adoptions by formerly oppressed groups of now prideful group identities, but HEEB and NIGGA aren’t. Nothing in Section 2(a) explains how THE SLANTS would be okay to register if the applicant’s name were Thurston Howell III but not if it were Simon Shiao Tam.
There’s a lot of line-drawing going on here. How can we ask examining attorneys, the TTAB or the Federal Circuit to draw these lines? How can we let them? These are policy questions. They aren’t amenable to judicial, much less administrative, interpretation because their answers are not in the Lanham Act; because they conflict with other statutory or constitutional considerations; because they involve fundamental questions about how government, and in particular this relatively specialized, isolated and undemocratic piece of government, can and should balance controversial cultural and political interests.
Wow! So… what does all that have to do with Judge Michel?
First, to be clear, Judge Michel did not attend my presentation, and certainly did not comment on any aspect of it, or of the SLANTS case. Judge Michel was the CIPLA’s keynote speaker. He gave a great presentation about major changes in patent law that will affect patent prosecution, enforcement and litigation in the next few years. He was not sanguine. I am not going to summarize them here; they’d be off topic and I would not do them justice. Besides observing upon meeting and chatting with him briefly that Judge Michel is personally charming and gracious, even I, someone who is not a patent lawyer, was struck by his command over every aspect of his topic. I particularly enjoyed how he decried a pet peeve of mine — that judicial fetish, the “multi-part” test, which he described as a creature of constitutional law that is making an utter hash out of patent jurisprudence. That bit alone would have been worth the price of admission (or a trip to Cleveland in early March).
What struck me, however, was a comment he made at the end of his speech, when he extrapolated the likely effect on patent law of a number of judicial trends, both in the district courts and the Federal Circuit, that gave him great pause. After laying out a fairly intimidating future, he stopped and he said — this former judge’s judge, with 22 years on the bench behind him — “Of course, none of these are decisions judges should be making in the first place.” These were, he said, policy decisions — calls that should be made by legislators, not judges.
And they are calls that, he made it clear, he knew would not be made by legislators.
Oh, they will legislate. They will give us law, they will pander, they will complicate. They will deliver what they are paid to deliver.
But Congress will not make the hard, bona fide policy decisions that it their job to make — not in patent law, as he said. And, as I said, they won’t make them in trademark law, either.
So judges will make them. Or make multi-part tests about them. And then our friends, the hard-working but overworked (thanks again, Congress!) patent and trademark examiners, will try their best to administer these judge-made policies as filtered through their supervisors, doing their best to interpret these multi-part tests to real patent and trademark applications. In the process they will create micro-policy, affected as all such policies are by Washington’s cautious yet expansive bureaucratic culture, calculated to provide formulaic and, if applicable, politically correct answers to complex and esoteric intellectual property questions. These are questions on which may ride fortunes and careers — and, in the case of patents, economies and perhaps lives.
These are questions Congress won’t touch.
So, yeah, I had a really nice time in Cleveland, and I hope I get to back there again soon! Or wherever Judge Paul Michel is speaking… and agreeing with LIKELIHOOD OF CONFUSION®! Whether he knows it or not.