Tag Archives: Section 2(a)

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…