Tag Archives: Scandalous or offensive marks

Explicitly yours

American University Law ReviewTomorrow I will be on a panel called “Warning, the Following Material May Be Explicit: Addressing the Efficacy of §2(a) of the Lanham Act” as part of American University Law Review’s annual Federal Circuit Symposium. It’s being held at Arent Fox, whose web page promoting the event says:

The American University Law Review’s Volume 63 Federal Circuit Symposium will assess the Lanham Act’s section 2(a) bars to registration for immoral, scandalous, and disparaging marks. Prominent legal academics, practitioners, and a Trademark Trial and Appeal Board judge will discuss relevant cases, the provision’s varying effects, and its remaining value.

You can also register at the link and you should do that ASAP!

Obviously I will once again be discussing the Federal Circuit appeal by our client, Asian-American musical performing ensemble group The Slants, from the TTAB decision affirming the denial of a trademark registration for THE SLANTS on the ground that they are Asian-Americans.

I had the opportunity to present on this topic in Cleveland exactly a month ago.  That, however, was an hour of stand-up; this is a panel, which mostly features sitting and nodding.  My fellow panelists are Jim Bikoff from Silverberg, Goldman & Bikoff LLP, Professor Michael Bressman of Vanderbilt Law School and — yes, Finnegan again! — Doug Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner.  The program starts at 1:00 PM with my panel, which will last from 1:00-2:30.

The second panel features my friend Professor Christine Farley from American, TTAB Judge Linda Kuczma, and Professor Sarah Hinchliffe, visiting professor at William and Mary Law School. Arent Fox’s resident rock starPamela Deese, will act in all things as moderator.

As interesting as that is, my real point is that you are not exempt from attending this event just because you think you already heard “this” in Cleveland.

Redskins redux 2

Originally posted 2009-06-09 12:37:25. Republished by Blog Post Promoter

I didn’t have a chance to mention that last month, the order denying the legal challenge to the Washington Redskin’s use of its trademark American Indian logo was upheld.

Now I have a chance!

And do the unhappy Indians have a chance?  They think they do.

UPDATE: They don’t (via @ABAJournal).

Mark their words

Originally posted 2010-05-16 20:48:22. Republished by Blog Post Promoter

Stop Islamization of America Logo

Very incorrect.

Jihad Watch and Atlas Shrugs — two websites run by friends of mine who have very clearly articulated views about Islamic radicalism, and controversial ones about what to do about it — are busy, and then some, with this story:

A federal agency has rejected a request for a trademark by the organization “Stop Islamization of America” because its name may “disparage” Muslims.

The group launched by Atlas Shrugs blogger Pamela Geller and Robert Spencer of Jihad Watch has drawn national attention for its bus-sign campaign offering support for Muslims who want to leave Islam. SIOA currently is organizing opposition to plans for an Islamic mosque at Ground Zero in New York City.

Now the group reports the U.S. government has refused its request for a trademark designation for its name.

The government response, posted on the site, states, “The applied-for mark refers to Muslims in a disparaging manner because by definition it implies that conversion or conformity to Islam is something that needs to be stopped or caused to cease.

“The proposed mark further disparages Muslims because, taking into account the nature of the services (‘providing information regarding understanding and preventing terrorism’), it implies that Islam is associated with violence and threats,” the government agency said.

This is the application; the Office Action is here.

Forget the politics of this.  Besides the fact that I have no idea why these two thought a word trademark (as opposed to protection for the logo) was needed here — being dubious, as I am in general, to the extension of trademark protection to words people say to mean things in English — I’m not too surprised about the outcome of their application on the “scandalous or offensive” denial.

This is because, as I’ve written before (and of course I’m in good company), while the PTO’s criteria for “scandalous and offensive” denials under Section 2(a) of the Trademark Act are a conceptual and a practical mess, the outcome’s certainly predictable when it comes to racialethnic or other “protected class” categories:  Only the politically correct need apply.

That’s a “criterion” Pam and Bob are not going to meet!

Predictable or not, though, that “standard” doesn’t have much to recommend it as either law or policy.  But I can’t blame these two bloggers for not knowing this when they dove head-in to their trademark registration application the way they do with everything else in life:  With passion and abandon.  They know more than I’ll ever forget (maybe more than I want to remember; certainly more than others want to even think) about radical Islam.

But what could they do if they just didn’t know a decent radical trademark lawyer?

Redskins redux

Originally posted 2006-08-09 23:33:11. Republished by Blog Post Promoter

Redskins Logo

Remember the Washington Redskins trademark tussle? CNBC reports that it’s back — again — and better than ever. This time the focus is an interesting technical tactic related to an aspect of the case involving the equitable doctrine of laches:

[T]he U.S. District Court of the District of Columbia . . . in 2003 reversed the TTAB’s decision on disparagement. The court also determined that the petitioners were barred by laches, a legal doctrine applied when a court decides that a party has taken too long to assert a right or claim and that the passage of time is deemed prejudicial to an adverse party.

”The way laches works is that it looks at the delay from when the petitioners are roughly 18 years old,” Mause said. Because of the age of many of the original petitioners, the U.S. District Court of the District of Columbia determined that too much time had passed before they filed suit.

In 2005, the U.S. Court of Appeals for the District of Columbia Circuit reversed the lower court’s ruling on the grounds that the youngest petitioner, Mateo Romer, only reached the age of majority in 1984 and, therefore, may not be chargeable with prejudicial delay (laches). The appeals court sent the case back to the district court, ordering it to determine whether Romero’s case is barred by laches. The case is pending. Mause said the firm will continue to fight Romero’s claim.

The six new American Indian petitioners are between the ages of 18 to 24, so laches should not be applicable in their petition. Mause said the new petition will force the courts to look at the real issue.

The trademark “disparagement” claim is a dubious issue in a time when nothing is deemed offensive save for the politically incorrect, but the idea that laches should play into it is fairly hard to fathom. If I were a legal realist I would suggest that the courts don’t want to touch this with a first-down chain*, but readers know me too well to ascribe such a philosophy to Likelihood of Confusion.

UPDATE: The case, glacially, moves again.

*Apologies to foreigners and other non-Americans, native or otherwise. This is a first-down chain.

No, no, a thousand times no. Homey.

Originally posted 2006-05-11 13:18:53. Republished by Blog Post Promoter

Dead Honky

Damon Wayans is rejected again in his attempt to file a trademark that only black people would be allowed to use. Or am I missing something?

UPDATE:  More, and related, here.

Best of 2008: “‘Scandalousness’ Remains a Lightning Rod at the TTAB'” (September)

Originally posted 2008-12-31 10:49:35. Republished by Blog Post Promoter

This was posted on September 24, 2008:

John Welch reports on an interesting, not quite safe for home viewing case called Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman in which the TTAB sustained an opposition to a trademark brought by the Boston Red Sox, owners of the RED SOX mark, regarding a mark we will not name here that the Bosox argued was, among four other things, scandalous and therefore not registrable. The The Splendid Rod... uh, Splinterscandalousness ground — a topic we’ve visited here frequently – was among those upheld by the panel:

Scandalousness: Applicant Sherman contended that [the mark] is a parody of the RED SOX stylized mark, comprising an “elegant and symmetrical transposition” of RED SOX, a subtle play on words that “enhances the humor.” According to Sherman, “the elegance of the execution mitigates any perceived vulgarity of the resulting turn of phrase.” In his view, the mark “represents the at once clever yet sophomoric sense of humor that prevails in those venues in which apparel bearing the [applicant’s] Stylized mark would likely be worn, e.g., ballparks, sports bars, and university campuses.”

The Board, however, noted that the marketplace includes all public places where clothing would be worn or purchased. Sherman’s mark would convey “not a sexually suggestive connotation as applicant contends, but rather a sexually explicit message to the viewer.” Use of the term on children’s and infant clothing “makes the term particularly lurid and offensive.” Whether Sherman intended the mark to be humorous, or whether some people would see it as humorous, is immaterial. A substantial portion of the public would see it as vulgar.

Well that sounds pretty reasonable. Read the item at John’s blog and the narsty content of the trademark application, and see if you disagree.

(We are now just going to sit here and wait for Marc Randazza‘s comment to constitute the continuation of this item.)

Comments here.

Scandalous mark by anybama’s standard

Originally posted 2007-02-13 21:41:54. Republished by Blog Post Promoter

We’ve wondered aloud here whether there’s any life left in the “scandalous or immoral” ground for refusal of trademark registration. Looks like there’s plenty. The Smoking Gun reports:

Government officials have rejected a Florida man’s bid to trademark the term “Obama bin Laden,” ruling that the conflation of the names of a U.S. Senator and the world’s leading terrorist was “scandalous” and wrongly suggested a connection between the politician and the mass murderer.

(Hat tip to David Krell.) On the one hand, at least someone, in the worst possible taste, has perhaps alerted the two men of each others’ existence, as incomparable as they are.  That is something, evidently — as far as I can tell, the Senator doesn’t seem to have much to say about the murderer. Okay, so I’m not the biggest Barack Obama fan — but this is disgusting, on a lot of levels. Thanks to the PTO for dealing with it swiftly.

He don’t lie, he don’t lie, he don’t lie…

Originally posted 2008-10-27 20:07:59. Republished by Blog Post Promoter

Marc “Hussein” Randazza — who hardly needs extra stimulants in his life right this second — brings his “A-game” to this very thorough consideration of the failure of the applicant for COCAINE as a trademark for soft drinks to overcome a PTO refusal to register on the grounds that the mark is … you guessed it! … immoral and scandalous.

For a change, we have nothing to add.  Really.

No respect

Originally posted 2008-02-15 11:17:48. Republished by Blog Post Promoter

More aggressive branding gone bad:  A Singapore cosmetics company has withdrawn a line of makeup based on complaints concerning its whimsical connections to the founder of Christianity:

The products included a “Virtuous vanilla” lip balm and a “Get Tight with Christ” hand and body cream, featuring a picture of Christ flanked by two adoring women.

Hat tip to LOC client Robert Burch.

Hardware trademark rejected in UK

Originally posted 2006-08-22 20:27:38. Republished by Blog Post Promoter

The Register reports:

A businessman has failed to win the right to register the term “screw you” as a wide-ranging European trademark because it is offensive. It can be used, but only for goods sold in sex shops, the European trademark authority has ruled.

Hard to harmonize with this, I would think, and actually quite hard for me to understand even on its own terms, but perhaps these are subtleties that escape the morally hidebound here at Likelihood of Confusion.

Immoral / scandalous test lives at PTO

Originally posted 2006-09-11 10:48:21. Republished by Blog Post Promoter

John Welch reports on a denial of a Spanish-language mark upheld on that basis, which continues to puzzle me, though it does not bother me in the least.

Welch, ever the responsible adult himself, offers both adult and minor links for your consideration.  It is not clear which one is in worst taste, however.

Theologically misdescriptive

Talk about “scandalous and offensive” marks!:

[P]hrases containing some form of “God” have been trademarked [sic] more than 3,400 times in the United States: “God answers knee-mail” and “All God’s Children Got Issues” and, of course, “T.G.I. Friday’s,” the restaurant chain.

But where you have trademarks, you also have trademark infringement. Which is how Megan P. Nicholson of Marietta, purveyor of merchandise bearing the logo “Handmade by God,” came to file suit in Atlanta federal court against [Arthus Gross III], owner of [the trademark registration for] “Made by God.”

Asked what he thought God would do in this case, Gross said, “He’s got the right to use thunderbolts and stuff; God doesn’t like competition.”

That’s an understatement.  But God’s “jealousy” may not be quite what Arthur Gross III thinks.  Still, I wouldn’t want to stand next to either Megan P. Nicholson or Arthur the Third in a thunderstorm.

Trademark Assignment?

But he understands the irony of the dispute.

“When you’re dealing with the trademark ‘Made by God,’ you don’t want to be the mean guy,” said Gross, who was raised Episcopalian. “At the end of the day, I just want them to go away.”

Well, there may have been as many as three Arthur Grosses, and there’s only one God, of course, but there are usually two sides to every trademark dispute, which is well set out in the Atlanta Journal Constitution article (branding note:  Just try and find the words JOURNAL CONSTITUTION on the paper’s own home page!):

So who’s right? Both sides have a point, trademark attorneys say.

Though Gross trademarked[sic] it first, Nicholson began marketing her clothes before he did, so she has what’s called common law trademark rights in the region where she sells, said Mike Hobbs, a partner with Troutman Sanders. “What a federal registration gives you is nationwide priority, but it’s subject to prior common law use,” Hobbs said.

“The overall test for the trademark is not whether the marks are identical,” Hobbs explained. “The test is, is there a likely confusion? It’s a fairly subjective test; there’s not a mathematical formula.”

A federal registration doesn’t mean Gross owns “God,” or even has a monopoly on the phrase “made by God,” said Frank S. Benjamin, a partner with McKenna Long & Aldridge.

“What you’re getting is the exclusive rights to use the words “made by God” in connection with certain specific goods and services that you sell under that name,” Benjamin said.

Yea, verily!  Praise to attorneys Hobbs, whose firm bio shows him to be ultra-distinguished, ur-published and crazy accomplished, and Benjamin, younger but on the rise, and featuring both an appropriate biblical moniker and quite the snappy profile in the bio-page head-shot department, for the pithy and on-point sound bites.  And blessings on the head of Péralte C. Paul a newspaper reporter, nay, a veritable scribe!, who bothers to ask well, quote accurately and get it right!

But above all, praise, of course, to the One Above, Who, famously, continues to put up with all this nonsense.  Only He knows why.