“Indian givers” (part 2)

[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.  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)? [UPDATE:  See here. — RDC]

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.

And this is not, by the way, to abandon the point I did make at oral argument — namely that sensitive policy decisions about ethnic offense, rife with constitutional implications no matter how you slice it, should not be entrusted to an administrative agency whose expertise and Congressional writ extends only to the actually mundane subject of registering trademarks.  Indeed, the Slants’ initial brief argues that little regard was paid even to the form of administrative legal norms in the PTO once the application was tagged as a Section 2(a) stinker.

Ah, so isn’t it then true, Mr. LIKELIHOOD OF CONFUSION®, that by passing legislation such as this, you at least solve that problem?  Isn’t it that what you want — for Congress to decide which terms are scandalous and offensive, and not deserving of the moral sanction of that most moral of institutions, the United States government?  Isn’t the legislature, as you say, where policy should be made?

Congress as opposed to an agency?  I guess so, yes.  Obviously my answer to the question I loaded is going to be longer than one word, however.

Before answering the rest, though, one more point — one that came up at one of the many fine professional discussions on this topic that have taken place recently:  Not all Section 2(a) refusals are equal.  Don’t throw us “disparaging” trademark registrants in the same pot as the “scandalous and offensive” ones.  That’s a topic for another post on another day, but the legal issues are not identical.

But how about it, then?  If Congress votes on each and every one of the bothersome, hurtful trademarks, will that make it all good, Mr. Judicial Restraint?

No, of course not.  Now, you have to be thick not to recognize the categorical political (and moral) problem facing the PTO regarding applications to register really ethnically disparaging trademarks. But while the dreaded theoretically-valid-but-for-section-2(a) NIGGER trademark is a good-government nightmare no matter how you approach it, that very real problem cannot suffice to deprive every other applicant with a valid trademark to his place on the Register.  Hard cases make bad law, but where the Constitution is at stake our obligation is not to punt but to strive to make good law all the same.

My tongue-in-cheek comment at oral argument that the First Amendment is “number one” for a reason was not necessarily taken the way I’d hoped it would be (understandably), but the comment in the World Intellectual Property Review quoted in yesterday’s post didn’t refer to the tippy-top of the Bill of Rights at all.

The constitutional issues are not only free speech ones.  For example, is retroactive revocation of a legal privilege (substantive or otherwise) granted by lawful process, and absent any showing of fraud or illegality, really defensible, especially after many years and the investment of great sums in reliance on that determination, merely because our sensibilities have changed?

Didn’t they used to call that sort of thing “Indian giving“?  We don’t use that offensive phrase in conversation any more, and understandably so.  It’s not a nice quality to ascribe to people.  But isn’t that what the PTO did to the Redskins?  The Redskins seem to have a takings argument.

There are other constitutional issues too.   I discuss them in part 3 of this post here.

Originally posted 2015-02-17 08:00:11. Republished by Blog Post Promoter