Tag Archives: Section 2(a)

THE SLANTS wins

If you haven’t heard, the Court of Appeals for the Federal Circuit has ruled and THE SLANTS trademark has won.  Section 2(a) has been invalidated with respect to “disparaging” trademarks.

Here’s the opinion; some links reporting on the case can be found below.
Here’s Eric Garder (Hollywood Reporter); here’s Bloomberg; NPR News; Billboard; Reuters.  You get the picture!

We represented The Slants at Archer & Greiner, P.C.  The appellate team consisted of John Connell, Joel MacMull, and our former colleague Darth Newman.

Winning  this was nice. It appears that our work here is probably not yet done.  But I will write more, however.

UPDATE: Paul Alan Levy; Mike Masnick (TechDirt); The Wall Street Journal; Sports Illustrated; the Daily Mail (UK).

A different Slant

Originally posted 2011-04-07 13:42:39. Republished by Blog Post Promoter

The Slants

Does this story in the Northwest Asian Weekly about the trademark registration woes of a rock band called The Slants sound familiar?

The Slants, whose members are of Asian descent, have amassed fans nationwide, taking the stage at dive bars, Asian festivals, anime conventions, and even serving on panels to discuss racial stereotypes.

But behind the scenes, the band is fighting a battle with the United States Patent and Trademark Office USPTO. The office has twice denied The Slants’ request to obtain federal trademark registration of its name, or “service mark,” on the grounds that it is “disparaging to people of Asian ethnicity.”

The band denies that its name is offensive to Asians and is preparing to file a second appeal.

Good luck with that, fellows. I’ve addressed this issue here before in the context of such charming would-be trademark registrations such as HEEB and NIGGA, rejected as scandalous and offensive by the same PTO that granted that coveted registration status to such fabulous acts as, uh, this and this, and this.  And, of course, this.

All those thisses have to do with alternative lifestyles, once considered highly scandalous but now quite socially acceptable.  Ah, but nicknames to describe those who so alternate?  Perfectly fine when adopted by the object of former derision with “pride.”

That rule, however, does not apply to ethnic groups.  As I said in the above-linked posts regarding the HEEB and NIGGA applications, racism remains the third rail of American bureaucratic practice — ironic self-descriptive pride notwithstanding.

Is there any good policy reason behind this?  Or is it, as I suggested in the NIGGA post, merely a way to avoid even having to read, much less type out, the word “nigger” in a government building near Washington, DC?

That is not a good reason.

Hat tip to Reid Wilson via this tweet.

The Redskins appeal brief in Pro-Football v. Blackhorse

Friday in Washington with a dozen of my closest friends

That’s probably the best way to write this post; indeed, I sat down before completing my allotted time on rebuttal on Friday, before the Federal Circuit en banc — all twelve of them, 1-2-3-4-5-6-7-8-9-10-11-12, walking out in their black robiness, thank-you-please-be-seated, because at that point there were no more points to which to point.  If you  click that link you can hear the arguments, but what really seems to have survived was what went down Friday, though one never really knows.

If you came in late, this is the en banc brief of The Slants; these are the briefs of amici in support; the government filed this saying nay, nay; and the amici supporting the PTO can be found here.

There is a lot of news reporting, some of it insightful, on the case, though.  Here is the story from the always fine Recorder out west; Reuters; Courthouse News ServiceFox News; and an insightful piece from a site called The Conversation.

I’ll catch up on rounding up blog commentary next week; there will be none from me now, save what I’ve already said via Twitter — mainly that it was a great professional experience and I am grateful to my colleagues for their help in getting me as prepared as I was for it. 

There’s more to say, so very very very much more, but it will have to wait.

One more thing, though: If you will please consider this bleg?:

UPDATE:  It was was an even better professional experience than I’d realized.  The Slants win!

 

 

En Banc: Son of THE SLANTS Appeal Brief to the Federal Circuit

We’ve got your First Amendment right here:

Props to my partner John Connell and associates Darth Newman and, of course, the redoubtable Joel MacMull — who has now joined me at Archer & Greiner, P.C. and whose contribution to crafting the constitutional argument in the first round of CAFC briefing played a huge part in getting us here (in more ways than you will ever know).

From the Summary of Argument: Read More…

B&B Hardware: Beyond Nuts and Bolts

SealtiteI’d promised I’d wait on this, but I couldn’t, and you’ll see why.  Here’s my take on today’s Supreme Court decision in B&B Hardware v. Hargis Industries Inc., which — notwithstanding my reluctance to be accused of being that hammer to which everything looks like a nail — may very well have implications for some of the pending litigation involving that popular topic of late, Section 2(a) of the Lanham Act.

First, the analysis of the main holding.

I was struck by the court’s point that Congress could not have been too concerned about making efficiency or cost-effectiveness a priority in the registration process when it authorized de novo challenges of TTAB decisions under 15 U. S. C. §1071(b).  Having established that there was nothing in the Lanham Act that made TTAB decisions different from other agency determinations for purposes of issue preclusion principles, the court then stated that preclusion based on TTAB determination could be applied following those principles.  In other words, there is preclusion where “the issues in the two cases are indeed identical and the other rules of collateral estoppel are carefully observed.”

What the Eighth Circuit had said, of course, was that under these principles, preclusion did not apply, because the “rules” were not be the same: different standards are applied in evaluating likelihood of confusion in inter partes proceedings as opposed to District Court actions.

Certainly I agree with the Supreme Court that the different circuits’ formulations of the likelihood of confusion standards and the way likelihood of confusion is understood and applied in the PTO do not constitute different “rules”; practitioners know these are all essentially different formulations of the same test – they certainly should be!

My concern was far more with the procedural differences between the two kinds of proceedings.  The B&B decision deals with this issue in rather cursory fashion, stating that

The ordinary law of issue preclusion, however, already accounts for those “rare” cases where a “compelling showing of unfairness” can be made.

This formulation is problematic, because, while there may be (I hope) exceptions, there are few times a court is going to be inclined to find “compelling unfairness” in a TTAB determination.  Moreover, the argument, after all, is not about unfairness, but differentness.  Under the Supreme Court’s analysis, however, there’s no room for that; if there’s preclusion, it’s presumptive, and you need that “unfairness” level of badness to uproot the TTAB’s ruling.  That’s a problem.

As the court says, however, there is a solution for a party worried about how a TTAB finding on likelihood of confusion might affect its rights:  De novo review of TTAB decisions in the District Court, with full evidentiary submissions — with all the expense that entails.  The only alternative appears to be amendment of the Lanham Act, which is probably one thing that should be considered to establish a streamlined, economical quality of PTO proceedings the Supreme Court has determined is not a policy of the Act now.

So… what was I saying about Section 2(a)?   Read More…

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-Logo-Wallpaper-03For 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

First posted January 29, 2009.

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

Stick with me here.nolj_small_150

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

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

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

No, the real problem is this: Can the Patent and Trademark Office register as a trademark a word that is, culturally (and almost legally) restricted for use to members of one race only — and that is considered practically a “hate crime” for members of other races to utilize? (As opposed to trademarks that no one can pronounce!) Now that seems as if it would be a bad policy decision for any government agency, much less one (i.e., the PTO) that takes eight months just to queue up a trademark application — no offense intended.

kungfujew_150Now come the heebs — or, more specifically, racy, but not racist, Heeb magazine — and, in very much the same vein, the TTAB has bounced its appeal of the PTO’s refusal to register a (second) trademark for HEEB, on the grounds that the term heeb disparages persons.  Hebrew persons, of course.  Heeb-rews.  Juice.

A similar argument to that utilized in connection with the NIGGA application was attempted by Heeb, mainly along the lines of, hey, we’re hip, we’re past all that, we’re taking the oppressive language of past repression and wearing it like a badge of pride.  (See John Welch’s coverage here.)

I think* that’s a very good argument.  And I think the whining of the usual suspects, professionals in the outrage and offendedness fields, cited in the opinion as tisk-tisking this and the previous (successful, as it turns out) application for a HEEB registration, is mostly pathetic.

RDC-greyIn fact, unlike NIGGA or “nigger,” the turn-of-the-century-vintage slur heeb has lost virtually all its punch or offense.  When you want to insult Jews these days, in fact, you just call them “Zionists Nazis” — that gets you, not opprobrium, but a job at the BBC or Columbia University.

In short, bubbele, the PTO — which has found a way to register numerous terms once considered derogatory when referring to those,  fabulous or otherwise, who have adopted non-standard sexual practices — can’t open this Pandora’s box.  The PTO acknowledges, implicitly, the objectively demonstrable fact that words that once shocked and offended are now ironic, defiant playthings of the hip, comfortably assimilated (in a multi-culti way) descendants of the former targets of some kinds of opprobrium.  But the PTO ignores this fact when it comes to trademarks for kikes, shvartsers and the rest of us.

store_300

Get the point? “Hip.”

Well, it doesn’t ignore it, or the inconsistency involved, so much as hide behind a thick lens of pretended obtuseness, relying on “proof” of offensiveness such as outdated dictionaries and statements by such cultural barometers as the Anti-Defamation League.

No, it’s okay to “get it” when it comes to alternative-lifestyle terminology.  But the PTO is, as we said, boxed in on  the issue of racial slurs.  For it is above all terrified of the prospect of what would happen politically if it issued a NIGGA or NIGGER trademark registration for anything, anyone, any time.

And if they can’t have theirs, the Jews can’t have ours, either.  Sorry, my heebs.

UPDATE:  Well, I’ve stepped in it now [Slants]… and it’s coming full circle here [Geller] and — sickeningly — here [DOJ /  Redskins ]….


* I was consulted by Heeb in connection with this appeal, but I was not retained.  You know — they wanted a bargain.