Tomorrow 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 star, Pamela 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.
Far be it from me to compare myself to the distinguished former Chief Judge of the Federal Circuit, the Hon. Paul R. Michel — but I will say this: Last night in Cleveland we both said pretty much the same thing about a certain trend in intellectual property law. Coming from any judge, what he said would be remarkable. Coming from Judge Michel, well, it certainly was a breath of fresh air.
First, thanks again to the Cleveland Intellectual Property Association for inviting me to present at the March meeting last night. It was a great pleasure discussing the issues in PTO practice raised by our appeal of the refusal to register THE SLANTS to such a group of thoughtful and gracious people. (I have embedded the PowerPoint and the CLE materials at the top and bottom of this post respectively.) You can get the gist of the issues I raised, once again, from this post — but they aren’t my point here, and they were not in any way part of Judge Michel’s comments. No, it’s a little more complicated than that.
Unlike some of my best friends, I don’t necessarily take the position that Section 2(a) just has to go as a policy matter. But administering that statutory provision does, as this case demonstrates, comes with a lot of problems, which are only going to get worse. These problems include grand helpings of arbitrariness and caprice. And in the case of THE SLANTS application in particular, there is — as we will argue in our brief — a real equal protection concern. The PTO’s present policy is so concerned about ethnic offense through trademark that it will explicitly refuse to register a mark based on the applicant’s own ethnic identity. That was my main presentation, in short.
After the two CLE presentations at 4:30, there was a brief reception while dinner was being set up. I was in a group, mostly Pearne & Gordon people, raising interesting thoughts and questions about the issues addressed in my presentation, and it occurred to me to declaim as follows: Short of one or more judges throwing the whole thing out, all these 2(a) cases are being decided via countless isolated judgment calls by examining attorneys at the PTO and, if appealed, reviewed by judges — at the TTAB, the Federal Circuit and perhaps the Supreme Court. But, really, these are judgment calls that should not even be made by judges, much less non-judicial officers, at all. In the case of THE SLANTS, these include discrete questions such as:
- Is the applicant’s ethnic identity a legitimate factor for evaluation of trademark use? Read More…
Now I have been to Cleveland a couple of times and I can’t say I actually saw this rocking take place. I mean, this whole “rocking” concept, frankly, eludes me, as most people who have made my acquaintance for more than a minute or two since the 1980′s will attest.
I’m fine with that!
Still and all, Cleveland will rock in the fullest intellectual property sense of the word next Monday night, when LIKELIHOOD OF CONFUSION® presents at the March 2014 meeting of the Cleveland Intellectual Property Law Association! Look, it says right here:
I will be discussing questions raised by the pending appeal to the Federal Circuit in connection with the registration refusal by the PTO and TTAB of a trademark registration for THE SLANTS — not questions about free speech or ethnic identity, which anyone in a bar can and will opine about, but about:
- Whether there are, or should be, any guidelines governing the use of information about a mark’s use obtained and considered by an examining attorney beyond the four corners of an application to register a trademark, and
- Whether an individual applicant can, based on use of a mark at a given time in history regardless of how information about that use was obtained, be forever barred from registration because the use at that time was unacceptable.
I write more about all that here, for now.
Don’t worry, it will be short, and hopefully entertaining, and there will be other presentations and a talking judge and food. Read More…
There has been some press coverage of the intention of my client, The Slants, to appeal the denial of their application to register THE SLANTS. Some of what has been reported is inaccurate or imprecise. This is not the place to argue the appeal, but because the case has garnered some extra-judicial attention and there has been a great deal of extra-judicial misunderstanding, here is a bit of clarification:
No appeal or federal action has been filed; it is merely being prepared. Because this is an appeal from the determination of a federal agency, under 28 USC § 2107(b) the time to appeal is 60 days after the September 26, 2013 date of the order. (This differs from the usual 30 day deadline to appeal from a court order under 28 USC § 2107(a)).
What is also unfortunate is that some reports and commentators have given the impression that the applicant is fighting the PTO’s conclusion that “slants” is an ethnic slur, or that the Slants argue that it was one in the past but is not one any more, along the lines of the unsuccessful TTAB appeal of the PTO’s denial of the HEEB application.
This is error. That was not the applicant’s argument in the TTAB with respect to the application that was actually denied in this proceeding — here’s the Slants’ TTAB brief. I tried to get that across in this earlier post, but I will try again:
The assertion that “slants” is not an ethnic slur, based on evidence that contradicts what the PTO claimed as the evidentiary basis for its determination, was the applicant’s argument — but that was in an earlier application for the same trademark. Indeed, rejection of that argument was, we assert, one basis of the TTAB’s affirmance of the PTO’s refusal to register. We argued in our TTAB brief that in refusing to allow the registration based on the Slants’ second application — the one before the TTAB — the PTO rejected an argument the Slants did not make in its response to the Office Action.
This is not to say that the applicant concedes the underlying substantive point. It does not, but this is not the subject of the appeal. Read More…
Everybody can have an IP blog. But hardly anybody, it seems, is prepared to do the work required to blog.
I refer now to the decision in The Slants case, which has been covered by various news outlets and a number of trademark-related blogs. To be honest, I … don’t really have time to read blogs, and I don’t. (With one exception, mainly; see below.) But The Slants do, and they send me links to blog posts about their case. And what I saw, after the first couple — with one notable exception — was that these bloggers have read the opinion, not asked themselves any particularly difficult questions, and done.
To those who came in late, your blogger represented The Slants at in the PTO and at the TTAB on this, and will be doing so in the Federal Circuit. I am not going to argue the merits of their appeal here, of course — I did that in the papers I have already submitted, and will do it in papers to come.
But I am going to argue with
bloggers people who have blogs who can’t be bothered to even think about the questions raised in the case, but simply report, “Yup, the TTAB made sure another racist word doesn’t get registered as a trademark!” How comfortable! How, you know, politically you-know-what. (Your girlfriend will really like how you came out on this one, dude!) And how little that question has to do with the issue that, in our view, was before the PTO in this application, and which was then before the TTAB.
And I’m going to argue it here: Read More…
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.
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.
Remember the SLANTS trademark appeal to the TTAB? Here’s the decision (below).
For the TTAB, there’s only one answer to the “disparaging” question — well, actually, that’s not true I guess, depending on the PC winds. But if the disparaging term is ethnic — for that, there’s no forgiveness, at least if the applicant is ethnic, too:
Who am I to say?
I’m not. But there is the Federal Circuit, and they are. We’ll give them their chance.
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.