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.

Football Redskins live to fight another day

Originally posted 2008-09-02 00:01:43. Republished by Blog Post Promoter

This story won’t die — especially judging from the prominence of related words among search terms that reach this redskins-logoblog.  The latest, which we missed when it came out in July and we were otherwise engaged, is that the NFL’s Washington Redskins again prevailed in a lawsuit brought by a group of American Indians, but by all lights not on the central question of whether the REDSKINS trademark should be canceled on the ground that it is “immoral” or “scandalous”:

In a ruling dated June 25 and first circulated [in early July], U.S. District Judge Colleen Kollar-Kotelly ruled that the youngest of the seven Native American plaintiffs waited too long after turning 18 to file the lawsuit that attempts to revoke the Redskins trademarks.

The lead plaintiff, Suzan Shown Harjo, said Friday the group will appeal.

“She ruled as we anticipated she would: for the loophole that would allow everyone to avoid the merits of the case,” said Harjo, president of the Washington-based Morning Star Institute that advances Native American causes.

Harjo and her fellow plaintiffs have been working since 1992 to have the Redskins trademarks declared invalid. They initially won — the U.S. Patent and Trademark Office panel canceled the trademarks in 1999 — but Kollar-Kotelly overturned the ruling in 2003 in part because the suit was filed decades after the first Redskins trademark was issued in 1967.

The U.S. Court of Appeals then sent the case back to Kollar-Kotelly, noting that the youngest of the plaintiffs was only 1 year old in 1967 and therefore could not have taken legal action at the time.

But Kollar-Kotelly’s new ruling rejects that possible argument. She wrote that the youngest plaintiff turned 18 in 1984 and therefore “waited almost eight years” after coming of age to join the lawsuit.

The judge did not address whether the Redskins name is offensive or racist. She wrote that her decision was not based on the larger issue of “the appropriateness of Native American imagery for team names.”

Well, from our point of view, “avoiding” the merits is the right thing for a judge to do when “mere technicalities” actually preclude a court’s legal authority to decide the merits.  But sooner or later, we’re going to have to deal with this claim, and the whole rat’s nest of problems arising from the “immoral and scandalous” provision of the Trademark Act.

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.