— Ron Coleman (@RonColeman) April 20, 2016
Originally posted 2015-02-16 17:37:02. Republished by Blog Post Promoter
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.
Originally posted 2015-02-17 08:00:11. Republished by Blog Post Promoter
[Note: This post was written before the December 22, 2015 Federal Circuit opinion in In re Tam, and, of course, subsequent developments.]
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. Read More…
The official website of the thing is here. Register to attend by clicking here. I’ll be speaking about In re Tam but don’t worry, there will be thrills and chills and stuff you won’t read on LIKELIHOOD OF CONFUSION® … for the foreseeable future.
Originally posted 2014-03-12 15:58:32. Republished by Blog Post Promoter
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…
I’m kind of tired of In re Tam also. But I have been a bit surprised that there has not been a more discussion, or as far as I can tell, hardly any, of a proposition pushed by the “amicus” brief filed by INTA, the International Trademark Association, on the en banc appeal — and how that proposition was most definitively rejected by the Federal Circuit in its December 22, 2015 opinion.
That’s the question of whether a would be trademark registration, barred by Section 2(a) on the grounds of disparagement (or, perhaps, any grounds), can still find some solace — or at least a federal forum for enforcement — by making a claim under 15 U.S. § 1125(a), otherwise known as Section 43(a) of the Lanham Act, which prohibits any false designation or description regardless of whether a mark is registered.
I use the scare quotes around “amicus” because with amici like this… well, in fact, I can and will say very little at this procedural moment, but will let the papers speak for themselves and invite the learned community to be heard.
First, some background on the INTA part of it, which may or may not have anything to do with the court’s decision to address Section 43(a), but is a story in and of itself. INTA does not get involved as an amicus unless it is asked. Read More…
I’ve been writing about the Redskins and the tribulations — and, as it turns out, trials — of their REDSKINS trademarks since long before that first post about that rock band in Portland — a blog post that presented me with the opportunity to actually change the law I’d been kvetching about in those early Redskins posts, though I hardly thought that was the assignment I was accepting at the moment. More on that later.
Still and all, that’s not something a blogger gets to do every day.
So, now, how about those Redskins?
Most of the reporters I spoke to after the opinion in In re Tam came out last week wanted to know how I thought our case would affect the NFL’s case. Though we had very pleasant conversations, and often very long ones, the fruits of these discussions were seldom reflected in what was published, to put it mildly, if they were reflected at all. This is the way of journalism, of course.
The good thing is that if I have something to say I can say it here. I do, and based on what I’m seeing out there, I think it should be said, because I don’t believe that, so far, anyone else is saying it.
Again, first, let’s step back to when the original TTAB decision was issued in the Redskins appeal of the PTO’s unprecedented cancellation of its REDSKINS registrations. I did post here on the topic, but gingerly, because our appeal of the denial of THE SLANTS registration was still working its way through the system. The heart of what I wrote was this: Read More…
@TTABlog This was the result of the best of intentions executed by fine professionals trying to divine their duties in a world gone mad.
— Ron Coleman (@RonColeman) December 24, 2015
You might want to click through and read the whole exchange between me and a few interested (and interesting) friends last night about the trademark news of the day, if that stuff intrigues you at all after the deluge, or just for laughs.
Here are other places people have talked about the case since the last roundup: Ars Technica; Eugene Volokh; The Washington Post; Forbes — an article that makes important points omitted in most non-legal publications; IP Watchdog; The National Law Review; TTABlog, of course; Duets Blog; Eric Goldman; and I really don’t get the point of why I’m doing this. It’s a famous case, and they’re mostly saying the same thing.
UPDATE: Lawrence E. Ashery of Caesar Rivise actually doesn’t say the same thing as everyone else; he actually gets what everyone else missed, and which I come to terms with here. Yes, this is kind of hidden. That’s how it’s going to be.
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.
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.
Originally posted 2011-04-07 13:42:39. Republished by Blog Post Promoter
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.