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? Read More…