Tag Archives: Scandalous or offensive marks

Redskins redux 2

Originally posted 2014-02-27 18:10:01. 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).

Laws don’t kill free speech, legislators do

The statute that keeps on giving

PTO15_LongBannerV2I 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.

Stephen Baird

Steve Baird: Unlikely to be Confused.

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.

John Welch:  Inherently Distinctive

John Welch: Inherently Distinctive

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?

So don’t be pokey about it!  The program is here, if for some reason you need to know more; click here to register.

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.

UPDATE:  Excellent analysis on our little piece of it by Tamlin Basin of BNA.

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

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.

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)

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.

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

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

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.

Immoral / scandalous test lives at PTO

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.