Previous related documents:
Well, of course there’s another side to this, and it has been heard. Here is the brief of the PTO seeking affirmance. Then came the brief of amicus curiae, and in particular friends of the PTO, the South Asian Bar Association; and here is the submission of Richard L. Stanley.
Amanda Blackhorse — adversary of the Redskins in that litigation — has also filed in support of the PTO, which makes sense, considering that the Redskins (i.e., the NFL) filed a brief in support of The Slants.
As soon as the clerk-approved brief is released for publication, I will add that too. Here’s the Blackhorse amicus brief.
Wait — Richard L. Stanley? Who? Unlike some people, Richard is not a big Internet personality. No website, no blog. Richard doesn’t talk the talk but, as set out in this article (and, I assume, in his brief; I haven’t read it yet) he does walk the walk.
Let Richard explain himself here, though, as he does in the first section of the filing. It’s at least as interesting as anything in any of these submissions: Read More…
The approved and publishable amicus briefs in the appeal regarding the trademark registration of THE SLANTS are trickling in. Certainly interesting to see who is saying what. So far, they all seem to be on the side of The Slants, though interestingly the INTA amicus brief does not take a position on the First Amendment issue (maybe because that’s usually a subject raised by defendants in infringement cases?) but instead addresses, as is appropriate given INTA’s level of trademark expertise, the issue of 43(a) of the Lanham Act. INTA urges, understandably, that the constitutionality question “does not turn” on the availability or interpretation of 43(a) protection for unregistered marks.
What do we have? Here’s the amicus brief of Public Knowledge, styled as “in support of neither party”; here is Pro Football, Inc.’s (i.e., the Washington Redskins’) amicus brief very much in support of appellant; and now comes the First Amendment Lawyers Association (that’s Randazza and friends).
Here’s one we hadn’t counted on: a submission by the Rutherford Institute together with the Cato Institute. Cato’s blog post, authored by Ilya Shapiro, is here; the Cato / Rutherford amicus brief is here.
Hey, what happened to the ACLU, which, formerly (you should pardon the expression) confused, has now seen the light on this business? Evidently the dog ate their ECF registration, and the ACLU amicus brief was filed a day late — today — along with a motion seeking permission to do that, for reasons set out therein. Enough said — they are our friends (now) and, unlike those stinkers at Public Knowledge, say so right on the cover of their submission.
Okay, and what about those guys over at Public Knowledge? Read More…
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…
UPDATE: When this post was written, the world we lived in was one particular kind of world. Then the morning of Monday, April 27, 2015 came, and we were living in a very different world. I spoke about The Slants’, and my, transition to that world here … and a few other places. So, that’s The Slants’ juridical world now, their only one, and having said what I’ve said — which, you’ll grant, is plenty — while I won’t delete any posts, I won’t be commenting on the case any more on LIKELIHOOD OF CONFUSION® until it’s over.
UPDATE: When this post was written, the world we lived in was one particular kind of world.
Then the morning of Monday, April 27, 2015 came, and we were living in a very different world.
I spoke about The Slants’, and my, transition to that world here … and a few other places.
So, that’s The Slants’ juridical world now, their only one, and having said what I’ve said — which, you’ll grant, is plenty — while I won’t delete any posts, I won’t be commenting on the case any more on LIKELIHOOD OF CONFUSION® until it’s over.
I said that, right?
I thought I said that. I thought I wrote that. I thought I argued that.
Evidently, however, someone wanted to write an opinion on constitutional law. Maybe someone wanted to write it in another case, even, but that case wasn’t before that someone. So someone thought this case would be a good substitute for that case.
So the issues we appealed on got an amount of shrift which you are free to measure for yourself, and THE SLANTS lost their appeal.
And you’re wondering, by the way, was it unanimous? Is there a dissenting opinion, perhaps, such as might form the basis for automatically taking the appeal to the full panel?
Well, go to page 12 of the opinion, and tell me the answer to that. I’m always interested in additional views.
Fed Cir refuses TM registration of The Slants for rock band as disparaging. Concurrence says law is unconstitutional. http://t.co/g6ztVXtbhL
— Mark Lemley (@marklemley) April 20, 2015
UPDATE, April 27, 2015, from the Federal Circuit: Never mind; please come back soon.
Here’s some news: The American Civil Liberties Union says the Redskins are wrong, damned wrong — but they’ve got every right in the world to be that way.
They even filed an amicus brief in the District Court in support of the Redskins’ right to be wrong. Amicus briefs at the trial level are quite unusual.
The ACLU’s brief, and an earlier blog post on its site, both make explicit reference to the appeal of the PTO’s rejection of The Slants’ application to register their trademark, THE SLANTS, and to the inconsistency of the PTO in permitting “reappropriation” of derogatory terms when it comes to certain categories but not others: Read More…
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.
Yesterday 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…
For 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.
- How and what is secondary liability for trademark infringement, and what isn’t?
- Are defendants entitled to attorneys’ fees when they win a copyright infringement case?
- How much ethnic identity is too much for a trademark to be used in an ethnically offensive manner?
- How much, really, should the PTO’s determinations in a trademark registration proceeding preclude its substantive rights in other contexts?
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.
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.
It was exciting last Friday, arguing the appeal of the THE SLANTS*, at the Court of Appeals for the Federal Circuit! A little too exciting, so much so that, for a moment there, I was — the Recorder explains — actually my own worstest enemy!:
At the Federal Circuit, Tam and attorney Ronald Coleman are swimming against 34 years of precedents [sic]. But it sounded from Friday’s argument as if at least one judge wants to reconsider them. Judge Kimberly Moore described the seminal decision upholding Section 2(a) of the Lanham Act as outdated, cursory and a candidate for en banc review in light of “an immense evolution of Supreme Court jurisprudence on this point.”
Coleman at times seemed to be his own worst enemy during the 30-minute argument. The Goetz Fitzpatrick litigator sought to frame the case as one of administrative law, and had to be coaxed into making the constitutional case. When Judge Alan Lourie suggested that rejecting a trademark doesn’t limit speech, but actually expands it, Moore tried to help Coleman. “I would think you wouldn’t agree with that,” she told him. “Just to help you out a little bit, say no. Just say no.”
“I would agree with it,” Coleman told Lourie.
“You agreed with what he just said?” asked Moore.
Finally, Coleman got the hint. “I would agree that this court has every opportunity to make the First Amendment point,” he said. “I do believe this court has the opportunity to revisit its own precedent.”
Kind of. It’s not that I didn’t get the hint. Read More…
Originally posted 2013-10-25 12:41:04. Republished by Blog Post Promoter
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:
This is an appeal from the determination of a federal agency, so 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)). See below for a link to the brief we filed.
Now, 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.
First posted on March 12, 2014.
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…