— Ron Coleman (@RonColeman) September 10, 2015
I am grateful for a break in the Section 2(a) action long enough that I could sneak in some blogging about another topic this week. Apropos that post’s nostalgic subject, it even generated some old-fashioned comments-section debate about fair use with me on the unaccustomed side of things before breaking developments returned us to our monotonously scheduled programming.
Yes… the thing about Section 2(a) of the Lanham Act — have you heard about that one? — is that, much like whatever it was Yogi Berra was talking about, it’s not over till it’s over. And it is most assuredly not over.
And neither are the disparaging, immoral and scandalous panels. So I’d be remiss not to use this space to invite readers to the Intellectual Property Owners Association 25th Annual Conference on USPTO Law & Practice, or “PTO Day,” on March 10, 2015. Because of my involvement in a certain appeal relating to that law, I will be participating in just such a panel at that conference.
Join LIKELIHOOD OF CONFUSION® (we are one and the same) along with my friend (and past Minnesota CLE host),über-trademark-blogger Stephen Baird (got logrolling?); Jesse Witten — with whom I have also been, um, impaneled recently; and Cynthia Lynch of the PTO in an afternoon session on the trademark track.
Other friendly mustachioed faces will include that of John “Keeping Tabs on the TTAB®” Welch, who will be presenting, with characteristic wit and grace on recent trademark case law earlier in the day. Who better?
UPDATE: See below for my CLE supplement distributed to attendees. Much of it will appear familiar to readers of the blog, in substance if not quite in tone.
Tomorrow 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 star, Pamela 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.
Now I have a chance!
And do the unhappy Indians have a chance? They think they do.
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.
UPDATE: More, and related, here.
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 scandalousness 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.)
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.
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.
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.
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.
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 PÃ©ralte 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.
Am I missing something here?
Did you know that the terms “Black Power,” “Black Supremacy,” and “La Raza” (The Race) are all trademarks that have long been approved by the U.S. Patent and Trademark Office? Even the Black Panther Party’s slogan “Burn, Baby, Burn” (which still evokes the threat of rioting and mayhem), had no problem winning official trademark recognition. And then there’s “African Pride,” “Black Pride,” “Chippewa Pride,” “Cuban Pride,” “Indian Pride,” “Jewish Pride,” “Red Pride,” and lots more — all aimed at acknowledging a race or ethnicity. And all terms approved by the U.S. government.
As Reported by American Renaissance and Free Republic, when Justin Moritz, a former law enforcement officer, applied to trademark the phrase “White Pride Country Wide,” he was rejected in no uncertain terms. Registration of the words was not only denied, but the phrase was ruled “offensive” and “immoral.” More succinctly, the trademark office claimed, “… the proposed mark consists of or comprises immoral or scandalous matter.”
I am the last guy — I mean, if not the last, very low on the list — to want to have much, or hardly anything, to do with someone who espouses “White Pride.” But if this article is correct, every color of pride is amenable to trademark registration except the lack of color itself.
I have argued that the government is in a huge pickle trying to choose appropriate moral contours for the application of the “immoral or scandalous” ground for the rejection of a trademark registration. This is just another example of it. But this rejection seems quite heavy-handed. [UPDATE: See here for a similar, and entirely different, angle on this.]
The good news for the protagonist here is that, actually, despite his research and his claims of being singled out, he is not alone. He just may not particularly enjoy the company he’s in.