Tag Archives: Section 2(a)

Indian givers (part 3)

Redskins British Style

Part one and part two of this three-part post were published earlier this week.

When the PTO’s decision revoking the REDSKINS registrations was affirmed by the TTAB, I asked, as others — including the NFL — have asked, whether such sociological (not to say historicist)  time travel concerning the REDSKINS mark comports with constitutional due process.  It’s a serious question.

Indeed, it seems that when it comes Section 2(a), pretty much anything goes, procedurally, at the PTO, as long as the outcome is “no.”  There’s one category of exceptions, as The Slants noted on their appeal.  And it’s the exception that proves the rule.  It’s hard to see how it can be otherwise when slurs referring to what was once called lifestyle choices have been allowed registration while those referring to ethnicity are not.

Could one answer by saying that the statute doesn’t prohibit disparagement of behavior or, even, perhaps, sexual identity, but it does prohibit disparagement of ethnic groups?

There’s only one problem with that.  Here’s the statute (emphasis added, obviously):

1052. Trademarks registrable on the principal register; concurrent registration No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . .

So, what are we talking about here?  The relevant language is “disparage . . . persons.”  Are ethnic groups “persons”?  Are any groups of persons, persons?

Not according to TMEP 1203.03(a), which explains, based on the cases, that “Section 45 of the Act, 15 U.S.C. §1127, defines “person” and “juristic person” as follows:

The term “person” and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term “juristic person” includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.

So what gives?  This definition of “person” doesn’t seem to include races, colors, “peoples,” or “nations” in the ethnic sense.

Read More…

“Indian givers” (part 2)

Washington-FredskinsYesterday I ended part one of this post about a proposed law to outlaw any trademark registration rights for the NFL’s Washington Redskins with this question:  Given the offensive nature of the trademark by all accounts and the strong  “political” (not, strictly speaking, congressional) support for such a measure, why didn’t Representative Mike Honda go all the way and propose outlawing any federal enforcement, including in the judiciary and including with respect to common law marks, state-granted registrations or any claim sounding in unfair competition, of any REDSKINS trademark?  Why stop at half-measures such as prohibiting past and future registrations?

I can think of at least three possible reasons.  One is that no one on his staff understands the difference between trademark registration and trademark rights either.  Don’t rule that possibility out — we’re talking about Congress here.

Number two is that such a bill would probably have to go through the Judiciary Committee.  Congressman Honda isn’t on that.  And the Judiciary people — they certainly do understand this stuff, which that raises the third possibility, separate and apart from committee assignments:  Namely, such an idea, no matter how you dress it up, was obviously beyond the pale.  Face it, even in Washington there are some assaults on the Constitution people won’t try, at least out in the open.

Which leads me to my next point:  Registration versus rights?  Really?  Is it really such a trifling thing to shut the door on a party seeking to register its trademark (much less depriving it of a mark it has already been granted)?

This is the point I arguably stumbled over arguing the appeal of the PTO’s rejection of THE SLANTS in the Federal Circuit, as discussed here.  But as we argued in our submissions, and did manage to say on rebuttal during oral argument, the Lanham Act, in its current form, cannot be said merely to give a procedural or ministerial benefit to trademark registrants.  Registration of trademarks does, in fact, have constitutional dimensions not present when the Federal Circuit’s precedent on this question, In re McGinley, was decided:

While many of the benefits conferred by a registration existed at the time of the McGinley decision, the Trademark Law Revision Act of 1988 significantly expanded the substantive rights afforded to owners of federal trademark registrations. See 1 McCarthy on Trademarks and Unfair Competition § 5:9 (4th ed.) One of the more notable amendments in 1988, was the introduction of the new concept of “constructive use” which provides that “[c]ontingent on the registration of the mark on the Principle Register, the filing of an application to register constitutes ‘constructive use’ of the mark. This confers a right of priority, nationwide in effect … .” Id.; see also 15 U.S.C. § 1057(c).

That’s the fact, Jack.  It’s not so much more a dubious proposition to limit the PTO’s ability to register REDSKINS trademarks than to make them unenforceable as a matter of federal law; both are incursions on free speech. Read More…

“Indian givers” (part 1)

redskins-logoFor years I’ve been complaining that so much of the excitement in intellectual property law jurisprudence these days involves policy-making by judges and the PTO.

Funny thing!  So, as it happens, I was recently quoted in an article in the World Intellectual Property Review on the topic of our old favorite, the Redskins trademark case.  And it went like this:

Few intellectual property lawyers in the US (and elsewhere) will need reminding that professional American football team the Washington Redskins was stripped of six trademarks last year after a decision by the US Patent and Trademark Office’s Trademark Trial and Appeal Board.

The term ‘Redskin’—a slang word for a Native American and variations of which were used in all six trademarks—was deemed offensive.

In response to the ruling, the team filed a lawsuit against the Native Americans who initiated the challenge, in an attempt to keep its trademarks. The Native Americans, unable to dismiss the suit, will face off with the club at the US District Court for the Eastern District of Virginia this year.

Ron Coleman, partner at US law firm Goetz Fitzpatrick, says: “The drafters of the Lanham Act [the US’s federal trademark statute] never considered whether a registration could be revoked retroactively upon a finding that, when applied for, the trademark was not eligible for registration because late-coming petitioners succeeded in proving that it was derogatory of an ethnic group.”

Yes, I said that.  Now, a few things, both of which were pointed out by me in a post I wrote around the same time I was contacted by that reporter.  Well, first, one thing that was pointed out by John Welch:  the writer’s statement that “the Washington Redskins was stripped of six trademarks last year ” is inaccurate:  The Redskins were stripped of registrations, not trademarks.  They can still, and will still, sue your pants off for pretty much everything trademarky they could sue your pants off for before.
ImageChef.com
Secondly, yes, Congress never considered that stuff I said.  The whole of my argument, per my blog post, is this — indulge me here; there’s more to come:

While the goal of avoiding offense by government actions such as trademark registration is laudable, achieving that goal seems more than ever to embroil agencies and judges in deciding highly-politicized and sensitive issues that are arguably not appropriately determined by either. Adding “time travel” to their task only makes it more onerous. . . .

[T]he policy question of whether a registration should be revoked retroactively, after decades of use by the registrant following allowance and evidently with no time limit — as long as the evidence is found to support a contemporaneous finding of disparaging meaning — is probably one that Congress should address. Its application in this case, regardless of the merits under the standards applied by the TTAB, is certainly troubling.

Is what I said.  So now, I wonder, what should I say about this revolting development?: Read More…

Best of 2009: Jiggering it out at the PTO

Originally posted 2009-01-27 19:59:39. Republished by Blog Post Promoter

First posted January 29, 2009.

Oh, to be a hip, Jewish intellectual… property owner.

Stick with me here.nolj_small_150

A while back I was following the story of the PTO’s refusal to register the mark NIGGA.  As I put it then:

Forget “immoral or scandalous,” which, as we have said before, is an increasingly hopeless position for national government to take on almost anything in this enlightened era. Interestingly, though, this one will probably stick. Political correctness — in this case, quite correct!

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

(most of the time) — is the empty husk of what was once considered the public virtue of “decency.”

Read More…

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.

Best of 2013: False connections under the Lanham Act

Times and time buildings

No connection

First published on June 7, 2013.

John Welch has posted a collection of “false connection” claims under Section 2(a) of the Lanham Act (15 U.S.C. 1052(a)).

As it happens, a couple of weeks ago I mentioned that I had written a chapter in the New York State Bar Association’s new publication, In the Arena:  A Sports Law Handbook.  My contribution focuses on the how both trademark and other laws can be used to protect the persona in particular (i.e., for purposes of the book, the persona of a professional athlete), typically names.  An excerpt (footnotes omitted; I pulled a couple of sources out of them however and put them in the text here):

Trademark law’s main focus with respect to the protection of famous identities is on the names of the famous, although, as will be seen, this focus is not exclusive.When it comes to personal names, fame is the sine qua non for trademark protection. The word “fame” is not used here as it usually is in trademark law, referring to the requirement that a trademark be “famous” to qualify for federal protection against dilution. Yet in the ordinary sense of the word, fame is the relevant standard for trademark protection of names, because only “famous” names have secondary meaning.  See, Tonawanda St. Corp. v. Faye’s Drug Co., Inc., 842 F.2d 643, 648 (2d Cir. 1988).  As the Eastern District of Pennsylvania explained in the remarkable decision of Tillery v. Leonard & Sciolla, LLP, 437 F. Supp. 2d 312, 321 (E.D. Pa. 2006) investment of a personal name with trademark significance is not a casual process . . .

Note that under contemporary trademark law, the question of actionable confusion is not merely as to source identification but can also be based on “association.” Read More…

Slanted against him

Originally posted 2012-12-20 16:39:02. Republished by Blog Post Promoter

Another not-safe-for-work story is out there about a trademark registration denied under Section 2(a) of the Lanham Act as “immoral or scandalous.”  John Welch and Marc Randazza address the issue brilliantly here and here.

The Slants - 2012

No trademark registrations for an “all-Asian American band”: How Asian is too Asian under the Lanham Act?

Well, in April of last year, in fact, I wrote about the trademark application for THE SLANTS by a musical band called The Slants.  I noted how the certain obviously derisive trademarks, supposedly forbidden under 2(a), aren’t always.  It seems to depend on how the political winds blow.

That post was so “brilliant” that I ended representing The Slants pro bono on a new application.  And now, once again, it’s up to the TTAB on this.  With, yes, a different slant.

The set of relevant documents at the PTO level can be found here.  The question is:  Can the words THE SLANTS be registered as a trademark… by this applicant, as opposed to any other?

In fact, there are many trademark registrations for the word SLANT. But what if the person who wants to register the mark is Asian? According to the PTO, then the mark may not be registered — or at least not if, in the past, he has been too Asian about being Asian.

The applicant, leader of the musical band The Slants (Simon Tam), seems to be the victim of a policy that has at once narrowed, and broadened, the concept of forbidden “disparaging” trademarks. It has broadened the concept to include any mark that COULD be deemed disparaging, or any user that may ever have, in the past, made “disparaging use” of an otherwise inoffensive word.  And it has narrowed the standard so that, as set out in these documents, no matter what Simon Tam does or says in a trademark application, he, personally, is — by all indications — barred forever from registering these words, no matter how he uses them.

A notice of appeal to the TTAB has been filed.

Trademark Application, Office Actions and Responses for THE SLANTS trademark

False connections under the Lanham Act

Times and time buildings

No connection

John Welch has posted a collection of “false connection” claims under Section 2(a) of the Lanham Act (15 U.S.C. 1052(a)).  As it happens, a couple of weeks ago I mentioned that I had written a chapter in the New York State Bar Association’s new publication, In the Arena:  A Sports Law Handbook.  My contribution focuses on the how both trademark and other laws can be used to protect the persona in particular (i.e., for purposes of the book, the persona of a professional athlete), typically names.  An excerpt (footnotes omitted; I pulled a couple of sources out of them however and put them in the text here):

Trademark law’s main focus with respect to the protection of famous identities is on the names of the famous, although, as will be seen, this focus is not exclusive.When it comes to personal names, fame is the sine qua non for trademark protection. The word “fame” is not used here as it usually is in trademark law, referring to the requirement that a trademark be “famous” to qualify for federal protection against dilution. Yet in the ordinary sense of the word, fame is the relevant standard for trademark protection of names, because only “famous” names have secondary meaning.  See, Tonawanda St. Corp. v. Faye’s Drug Co., Inc., 842 F.2d 643, 648 (2d Cir. 1988).  As the Eastern District of Pennsylvania explained in the remarkable decision of Tillery v. Leonard & Sciolla, LLP, 437 F. Supp. 2d 312, 321 (E.D. Pa. 2006) investment of a personal name with trademark significance is not a casual process . . .

Note that under contemporary trademark law, the question of actionable confusion is not merely as to source identification but can also be based on “association.” Read More…

Best of 2012: Sing, sing, sing!

Benny Goodman website thumbnail

The King of Swing

First published August 1, 2012.

John Welch suggests the musical question, “How is Section 2(a) false association like 43(c) dilution protection?”

Great question.  In other words, are the famous — even dead — different from the rest of us?

It came up in the context of this post on the TTABlog:

The Board affirmed a Section 2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized), shown below, for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggests a connection with the late band leader, composer, and clarinetist, Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (July 11, 2012) [precedential].

. . .

The Board applied the four-part test of University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217 USPQ 505 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982), to determine whether Section 2(a) applied:

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

2. The mark would be recognized as such because it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.
As to factor (1), the Board not surprisingly found that the applied-for mark is a close approximation of the name BENNY GOODMAN.

As to factor (2), the Board noted that performers commonly capitalize on their renown by licensing their names for collateral products, and so it found that consumers would associate Applicant’s goods with the “well-known bandleader, composer and clarinetist.”

Applicant argued that no one under 40 would know Benny Goodman, and moreover that there are Benny Goodmans “galore” on Facebook. However, Applicant failed to provide any evidence to support these assertions, and thus it failed to rebut the PTO’s evidence.

As to factor (3), there was no evidence of a connection between Benny Goodman and Applicant’s business.

And as to factor (4), the Board concluded that “Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection.”

The King of Bling

“Significant segment” means fuddy-duddies (like John) and people with the cultural memories of fuddy-duddies (like your blogger, who in fact saw Benny Goodman perform live).  Seems neat and clean, yeah?

So a commenter on the post asked as follows:

Perhaps my biggest objection to this opinion is the statement that “it is commonplace for performers and owners of well-known marks to expand their product lines to incorporate a diverse set of goods….” This opinion nearly states that names of famous people essentially is entitled to all the benefits of 43(c) famous mark protection. Despite the relative obscurity of Benny Goodman, whom I never heard of even though I am over 40, he is given dilution protection.

Now, I can’t help if Anonymous doesn’t know who Benny Goodman is — indeed the description of the King of Swing as “obscure” raises questions as to the validity of anything he or she might say.  But John  responds, restraining himself with his legendary gentility, as follows:

Interesting point. Maybe you should write an article: How is Section 2(a) false association like 43(c) dilution protection?

Maybe.  Who would read an article by someone who thinks Benny Goodman is obscure?  But maybe the answer is not only that the Board is not granting these rights to the “names of famous people,” but rather to the present Goodman estate, in the corporate person of CMG Worldwide, which is actively working to exploit the rights; and that it is granting far narrower rights than would be available under dilution. Read More…

Sing, sing, sing!

Benny Goodman website thumbnail

The King of Swing

John Welch suggests the musical question, “How is Section 2(a) false association like 43(c) dilution protection?”

Great question.  In other words, are the famous — even dead — different from the rest of us?

It came up in the context of this post on the TTABlog:

The Board affirmed a Section 2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized), shown below, for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggests a connection with the late band leader, composer, and clarinetist, Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (July 11, 2012) [precedential].

. . .

The Board applied the four-part test of University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217 USPQ 505 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982), to determine whether Section 2(a) applied:

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

2. The mark would be recognized as such because it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.
As to factor (1), the Board not surprisingly found that the applied-for mark is a close approximation of the name BENNY GOODMAN.

As to factor (2), the Board noted that performers commonly capitalize on their renown by licensing their names for collateral products, and so it found that consumers would associate Applicant’s goods with the “well-known bandleader, composer and clarinetist.”

Applicant argued that no one under 40 would know Benny Goodman, and moreover that there are Benny Goodmans “galore” on Facebook. However, Applicant failed to provide any evidence to support these assertions, and thus it failed to rebut the PTO’s evidence.

As to factor (3), there was no evidence of a connection between Benny Goodman and Applicant’s business.

And as to factor (4), the Board concluded that “Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection.”

The King of Bling

“Significant segment” means fuddy-duddies (like John) and people with the cultural memories of fuddy-duddies (like your blogger, who in fact saw Benny Goodman perform live).  Seems neat and clean, yeah?

So a commenter on the post asked as follows:

Perhaps my biggest objection to this opinion is the statement that “it is commonplace for performers and owners of well-known marks to expand their product lines to incorporate a diverse set of goods….” This opinion nearly states that names of famous people essentially is entitled to all the benefits of 43(c) famous mark protection. Despite the relative obscurity of Benny Goodman, whom I never heard of even though I am over 40, he is given dilution protection.

Now, I can’t help if Anonymous doesn’t know who Benny Goodman is — indeed the description of the King of Swing as “obscure” raises questions as to the validity of anything he or she might say.  But John  responds, restraining himself with his legendary gentility, as follows:

Interesting point. Maybe you should write an article: How is Section 2(a) false association like 43(c) dilution protection?

Maybe.  Who would read an article by someone who thinks Benny Goodman is obscure?  But maybe the answer is not only that the Board is not granting these rights to the “names of famous people,” but rather to the present Goodman estate, in the corporate person of CMG Worldwide, which is actively working to exploit the rights; and that it is granting far narrower rights than would be available under dilution. Read More…