DuetsBlog

Collaborations in Creativity & the Law

The Slants, The Redskins, and Free Speech for All Parties

Posted in First Amendment, Law Suits, Mixed Bag of Nuts, Trademarks, TTAB, USPTO

This week’s Matal v. Tam (formerly Lee v. Tam) Supreme Court ruling serves as a reminder that free speech is a two-way street.  It also suggests the value of a sympathetic litigant, at least in terms of public response.

Many rallied behind Simon Tam and his rock band, The Slants.  The band members, who are all Asian American, sought to reclaim and diffuse a historically derogatory term by naming their band “The Slants.”  The band first tried to register THE SLANTS with the Trademark Office in 2010.  The Office rejected the application under the disparagement clause of the Lanham Act.  15 U.S.C. 1052(a).  The band appealed to the Trademark Trial and Appeal Board, and later to the Federal Circuit, which ultimately led to review by the Supreme Court.

The resulting narrative told the story of a group of young musicians pushed out by a bureaucratic system and an antiquated law dictating morality.  Tam and his band were the good guys.  There was no public outcry calling for the band to change its name.  They were not viewed as insensitive or bigoted, at least in part because Tam and the other band members are Asian American and thus belong to the group presumably disparaged by the term.  For many, it was easy to rally behind the argument that The Slants have a First Amendment right to obtain federal trademark protections for their band name.  The Supreme Court’s decision that “the disparagement clause violates the Free Speech Clause of the First Amendment,” thus removing The Slants’ block to registration, was a well-received public victory.  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *20 (U.S. June 19, 2017).

However, as many have since pointed out, this decision was a win not only for The Slants, but for anyone seeking federal registration of an otherwise disparaging mark.

In 2015, a federal district court affirmed the USPTO’s cancellation of THE REDSKINS registered trademarks.  At the time, the district court’s decision that “the federal trademark registration program is government speech and is therefore exempt from First Amendment scrutiny” was lauded as a moral victory.  Pro-Football, Inc. v. Blackhorse, 112 F.Supp.3d 439, 452 (E.D. Vir. 2015).  The New York Times Editorial Board reported, “Slurs Don’t Deserve Trademark Protection.”  The Supreme Court’s First Amendment decision means the NFL team will now be able to recover their federal registrations for THE REDSKINS.

The Slants and The Redskins each wanted federal trademark protections for racially derogatory terms, but presented entirely different political positions and applicants.

The long-fought battle over cancellation of the Redskins marks began with a group of Native Americans arguing disparagement.  In this narrative, the team’s owners were often depicted as the villains callously profiting from a racial slur.  The Navajo Nation filed an amicus brief in support of the decision to cancel the trademarks.  Media outlets and NFL announcers refused to use the team’s name in their reporting.  While many also saw The Redskins as leading the charge in the fight against political correctness, The Redskins undeniably faced stronger public opposition than The Slants.

The differences in these cases, and in the  trademark applicants themselves, serve as a reminder that free speech for one necessarily means free speech for all.  Perhaps nothing underscores this point better than the New York Times Editorial Board’s recent statement that they have “reconsidered [their] underlying position” with respect to the team’s name following the Tam decision.

While many will surely still advocate for a new team name, if we are to allow The Slants to enjoy the benefits of federal registration, we must allow The Redskins–and others–the same opportunity.

Justice Kennedy said it best: “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.  The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *25 (U.S. June 19, 2017) (Kennedy, J. concurring).

The Covfefe Kerfuffle and the Rush to Register Trending Terms

Posted in Mixed Bag of Nuts, Trademarks, USPTO

While many of us are working our way through the flood of thought-provoking analysis of Matal v. Tam, I’m taking a break with some lighter fare, namely, covfefe. In case you missed it, the viral non-word “covfefe” was born out of a supposedly meaninglessly typo (perhaps a misspelling of “coverage”) in one of President Trump’s early morning tweets (alternatively, some suggest that covfefe has a secret meaning known only by a “small group” of officials–stay tuned!)

Mere hours after President Trump’s tweet came the predictable flurry of opportunistic trademark applications.  For example, only 3 hours after the tweet appeared, the first “covfefe” application was filed for COVFEFE COFFEE for various coffee-related goods.

As of now, there are 32 applications pending at the USPTO to register a mark containing the word “covfefe.”  Although many of them are filed with an intent-to-use basis, there are also some interesting applications that claim actual use in commerce. For a couple examples, see the following:

  • COVFEFE for an odd variety of goods including “Party favor gift boxes sold empty”; “Nylon flags”; “Swimming floats”; and “Christmas tree ornaments.”  The specimen of use is an Amazon.com product page showing six empty “Covfefe” treat boxes for the bargain price of $99 plus $4.49 shipping.  (You would think some treats would be included for shelling out over a hundred bucks!)
  • COVFEFE for “sandwiches” by the applicant Seattle Biscuit Company.  The specimen is humorous but also a bit disconcerting — it is a photograph of a restaurant’s “specials” menu for various types of biscuits, most of which sound delicious except the “Covfefe” biscuit, which is described only as “???” for 10 bucks. Not sure if I would be adventurous enough to try that mystery biscuit.

As we’ve written before (for example, here and here), it is common to see a rush to register trending or viral terms. But such efforts are usually unsuccessful and often arise from a misunderstanding of trademark law, perhaps the thinking that merely filing the first application would confer exclusive rights over a popular term. Trademark registrations are not simply awarded to whomever is the quickest to file an application. Among the many requirements for registration, there are two hurdles that most often block the “trending term” applications.

First, registration requires that the applicant demonstrate actual use in commerce, i.e., use of the applied-for mark in connection with the sale of goods or services. This of course requires that the applicant have the capacity (and willingness) to operate a business to make such sales. Many trending-term applications die after the applicant fails to submit a proper statement of use and specimen of use.

Second, the applied-for term must function as a trademark, i.e., it must point uniquely to the applicant as the source of the applicant’s goods or services. This is a particularly difficult showing in the trending-term context as such terms are inherently used by many third parties. This hurdle blocks many trending-term applications. The USPTO frequently concludes that such trending terms are merely ornamental or merely convey an informational message, and do not function as a trademark that points to the applicant as the unique source.

In addition, as a practical matter, the viral popularity of a certain trending term is typically short-lived and tied to some recent event or circumstance, rather than being tied to the applicant’s goods or services–thus such popularity is unlikely to provide sustained commercial benefit to the applicant. Overall, rushing to adopt and register a trending term is usually not the best branding strategy, both as a legal and practical matter. What do you think?

 

THE SLANTS Decision Affects More than a 2(a) and an (R)

Posted in First Amendment

In Monday’s decision in the newly minted Matal v. Tam case, the Supreme Court affirmed the Federal Circuit decision that the Trademark Office’s refusal to register THE SLANTS mark on disparagement grounds was unconstitutional.  Many were not surprised by this decision, foreshadowed in part by the transcript of the January oral argument where the justices leaned heavily into the government’s position.  If anything surprised me here, it was that the Court unanimously affirmed the Federal Circuit in an IP case.  The Court held that Section 2(a) of the Lanham Act was unconstitutional as being viewpoint discrimination by the government.

Many of the news articles that I read about the decision on Monday suggested this decision would open the floodgates to disparaging or offensive marks.  But they’re already there, as many of the briefs in this matter pointed out.  Some have even been found disparaging by other government agencies.

Take, for example, the RAGING BITCH mark that I discussed two years ago.  The Trademark Office stamped a brilliantly gold seal of approval on a registration certificate for that mark for beer, yet the Michigan liquor commission refused to allow the label because it was deemed disparaging and offensive to women.  The Sixth Circuit found the Michigan authority’s refusal unconstitutional on First Amendment grounds, perhaps a prelude to the Court’s decision here.

The holding in Tam seemingly applies not only to trademark law, but also at least to patents and alcohol labels.  Section 1504.01(e) of the Manual of Patent Examining Procedure (MPEP) says that “design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171.”   Section 608 of the MPEP also states that an examiner should object to any papers during the course of the examination of a patent that use language “that could be deemed offensive to any race, religion, sex, ethnic group, or nationality.”  The Tax and Trade Bureau that regulates the alcohol industry from a federal level also includes language that is obscene or indecent from appearing on a label.  See 27 CFR 4.39(a)(3)27 CFR 5.42(a)(3) ; and 27 CFR 7.29(a)(3).  While much has been said about the government’s position in Tam not limiting Tam’s ability to use THE SLANTS, at least this TTB labeling provision in fact does prevent an alcohol manufacturer from using the offensive language.  In the wake of Tam, we are likely to see new challenges to these and other regulations that apply viewpoint discrimination by the government in a manner similar to that of Section 2(a).

Many have exclaimed “how will we stop all these offensive marks?”  This problem doesn’t require a government solution.   Just this April 2017, the Brewers Association recently updated their Marketing and Advertising Code to prevent the use of marks and materials that “contain sexually explicit, lewd or demeaning brand names, language, text, graphics, photos, video or other images that reasonable adult consumers would find inappropriate for consumer products offered to the public” and/or “contain derogatory or demeaning text or images.”  Perhaps other industries – and even the NFL – could take a cue from this self-policing strategy.

 

Section 2(a), a Happy-Talk Clause, Really?

Posted in Articles, Branding, First Amendment, Trademarks, USPTO

We can be certain of one thing for sure, the Supreme Court’s decision today, striking down the disparagement clause of Section 2(a) of the Lanham Act will be analyzed for some time.

The Court called the provision of the Lanham Act barring the federal registration of trademarks that consist of or comprise matter that may disparage persons, a “happy-talk clause,” concluding it violates the First Amendment.

The debate over the implications of the Tam decision has commenced, so stay tuned.

Those of you who know me well can appreciate, this is a tough pill to swallow, we’ll have to see what good can come from it.

And, the answer to a question I raised back in 2015 apparently will be answered “no,” but not for reasons I had hoped.

Ron, I had envisioned writing a very different post about the Supreme Court’s long-anticipated decision in Tam, you, your team, and Mr. Tam have made history.

By the way, anyone know who coined the phrase Happy-Talk Clause, I must have missed that in the briefing?

The Missing Apple Trademarks

Posted in Articles, Branding, Famous Marks, Marketing, Squirrelly Thoughts, Technology, Trademarks

Far be it from me to criticize a company hoarding over $250 billion in cash reserves – but, hey Apple, why aren’t you filing trademark applications?

Perhaps no company’s IP portfolio is of greater interest to the general public than Apple, Inc.’s colossus. (If you disagree, find me another website dedicated solely to one company’s patent filings.) It’s certainly a company about which we (read: I) have posted before. So when Apple’s Worldwide Developer Conference kicked off earlier this month, and the tech giant unveiled new products, it’s mere reflex to check the Trademark Office for new filings.

Two of Apple’s newest offerings – the HomePod smart speaker, and the macOS High Sierra operating system update – generated considerable buzz and, well, “mixedreactions for the naming decisions. Even Apple joked that the High Sierra software name was “fully baked.”

But a check of the Trademark Office reveals Apple has not sought federal trademark protection for these new names – at least not yet. A search of the TESS database for “HOMEPOD” finds only two dead applications from 2009 and 2008, and a “HIGH SIERRA” search produces 71 matches (including, naturally, HIGH SIERRA VAPES), but no applications owned by Apple.

It stands to reason this may be part of a change in strategy for Apple. One might think the “iPhone” trademark was a slam dunk for the company, as the name is so closely associated with its ubiquitous smartphone. But in fact Apple’s use of the iPhone trademark was made possible only after negotiations with Cisco, Inc., which continues to own a registration for IPHONE dating back to 1999, some eight years prior to the Apple smartphone’s introduction.

And a look at Apple’s PR page reveals a certain irreverence for typical trademark branding and notice standards. A press release for the new iPad models contains nary a single ® or ™ symbol, and makes deliberate use of “iPad” as a noun for the product itself (instead of, say, “iPad tablet”). Even Apple’s boilerplate press release biography shies away from any mention of a registered trademark:

Screen Shot 2017-06-15 at 7.05.56 AM

As the slogan suggests, when it comes to trademarks, Apple and outside trademark counsel may well Think Different.

On Flag Day, What Flag Can You Protect?

Posted in First Amendment, USPTO

Today is Flag Day, which commemorates the adoption of the Stars and Stripes as our national flag 240 years ago.  Although maybe more obscure than Fourth of July or Memorial Day since it is not a federal holiday, this has always been one of my favorite American holidays.  There’s just something nostalgic, reverent, and almost pure about a street lined with even small American flags, which is how my neighborhood acknowledges the day.  For me, the flag is symbolic of freedom, of our nation’s values, of our veterans, and of hope for America’s future.

Although the flag itself was adopted over a decade before the Bill of Rights, the protection of free speech allows for irreverent use of the flag by burning it or otherwise desecrating it as a form of expressive speech.  While state and federal authorities have attempted to criminalize flag burning through several statutes, SCOTUS repeatedly struck down in the late 1980s and early 1990s such statutes as an unconstitutional impringement on free speech rights.

However, one of the only remaining codified restrictions on one’s ability to use the flag is the right to register it as a  trademark.  Section 2(b) of the Lanham Act prohibits registration of a mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”  This restriction, as you may find through the examples below, seems to be inconsistently applied.  You will see registered marks that incorporate the Stars and Stripes, but other marks that were refused registration.

Compare these marks of recently filed applications.  Which do you think were abandoned after being refused registration under 2(b)?  Which do you think are allowed or registered?  (Answers below).

(A) and (B) were both filed in class 25 on apparel goods.  (C) was filed for pet cremation urns.  (D) was filed by the Shooting Star Flag Company and (E) was filed by the Everytown for Gun Safety Action Fund.  (F) and (G) were obviously filed related to the marijuana industry.

Screen Shot 2017-06-13 at 10.57.00 PM

Screen Shot 2017-06-13 at 10.57.19 PM

We are expecting a decision from SCOTUS any day now regarding its review of the Federal Circuit’s holding in THE SLANTS case that Section 2(a) of the Lanham Act is unconstitutional on free speech grounds.  It will be interesting to see whether SCOTUS discusses Section 2(a) relative to Section 2(b) at all in the context of whether the USPTO’s prior practices have amounted to unconstitutional content-based restrictions of speech.

(Answers:  B, C, E, F and G are allowed or registered marks.  Only A and D received 2(b) refusals.  Did you get them all right?)

Rapala’s Public Service Announcement?

Posted in Advertising, Articles, Branding, Marketing, Social Media, Social Networking, Trademarks

RapalaDontTextandFishSorry for my delay in reporting Rapala’s annual billboard campaign, which began about a month ago, right around the fishing opener, more on my delay later.

As you can see, it reads more like a tongue-in-cheek public service announcement than past billboards, playing on the serious problem of texting while driving.

Anglers probably handle their cell phones more now than ever before while fishing, otherwise how would they capture notable moments for social media bragging rights?

Hopefully the humor in this Rapala ad won’t dilute the effectiveness of the many other ad campaigns designed to curb the dangerous activity of texting while driving a motor vehicle.

How would you assess this Rapala campaign?

Acceptable Identification of Goods/Services

Posted in Advertising, Articles, Branding, Food, Genericide, Marketing, Trademarks, USPTO

JackLinksMeatSnacks

Beef jerky is one of my favorite snacks, so while strolling through the Minneapolis skyway, I captured the above floor-to-ceiling advertisement to tell another trademark story.

It’s been a while since we’ve written about the importance of brand owners not only thinking hard about their brand names, but also devoting thought and care to the generic name of the goods or services too.

Generic names for goods/services are not ownable or protectable, they are what the thing is, they are free to use by anyone, including direct competitors, as part of the public domain.

Yet, there can be a fair amount of legal strategy in selecting to use the best generic name for a brand that is broad in scope, but is still bite size, memorable, and easily embraced by consumers. Similar strategy is required when seeking federal registration at the USPTO.

For example, if your brand is only currently being offered in connection with “tie tacks,” why not seek federal registration in connection with “jewelry” too, combining broad and narrow?

The far narrower “tie tack” description is a type of “jewelry” so use of the brand name in connection with “tie tacks” also supports use of the more expansive “jewelry” category.

Moreover, both terms are allowed and listed within the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual), allowing for this broader claim of rights.

Beyond an enhanced scope of rights, doing so would give the brand owner some comfort over time while expanding the offerings to commercially grow into the broader description, subject to any Section 18 challenges, of course.

Turning back to the meat of the story, Jack Link’s has adopted a nice and broad generic yet bite size description to categorize many of its products: Meat snacks. As it happens, or perhaps by design, it is included within the USPTO’s ID Manual too, so a real win-win there.

Also included within Int’l Class 29 of the USPTO’s ID Manual is “Beef Jerky” and more broadly “Jerky,” but at least as of yet, no listing exists for “Protein Snacks”:

JackLinksProteinSnacks

What are the odds the USPTO approves “protein snacks” and includes that bite size description of goods within the ID Manual any time soon? Not good, I suspect, know why?

Or, might Jack Link’s be able to convince the USPTO that its Beef Jerky and other Meat Snacks are “protein supplements,” which is an allowed bite size ID for goods in Class 5?

An Update on the M22 Road Sign Dispute

Posted in Branding, Law Suits, Marketing, Mixed Bag of Nuts, Trademarks

A brief update on my post last year regarding the “M22” road sign trademark lawsuit, Michigan v. M22 LLC, No. 1:16-cv-01084 (W.D. Mich.)

As a quick refresher, Michigan State Highway M-22 is a popular, scenic route that borders Lake Michigan along the Leelanau Peninsula. Along this route, there are numerous “M22” route marker signs. The Michigan company M22 sells a wide variety of merchandise bearing the “M22” mark, such as clothing, hats, stickers, magnets, glassware, and wine. M22 has been granted several federal trademark registrations, including an “M22” word mark and several M22 design marks. Pictured below is M22’s design mark under U.S. Registration No. 3992159, along with a photo of an M-22 route marker sign.

U.S. Registration No. 3992159

Posted to Flickr by Larry Page. License: CC BY 2.0.

Posted to Flickr by Larry Page. License: CC BY 2.0.

Last year, the State of Michigan filed a lawsuit against M22 seeking declaratory relief. Michigan alleged that trademark protection for the M22 design in Michigan’s M-22 route marker signs is prohibited under the Manual on Uniform Traffic Control Devices (MUTCD). More specifically, Michigan argues that the Federal Highway Administration promulgated a MUTCD standard under which any road signage designs (“traffic control devices”) required by the MUTCD on federally funded highways, including the M-22 signs, are in the public domain and shall not be protected by patent, trademark, or copyright.

The court recently issued an opinion in favor of M22, holding that the court lacked jurisdiction over Michigan’s claim for declaratory relief. First, the court held that there was no justiciable controversy to invoke the court’s jurisdiction. The court found that Michigan failed to allege that M22 had threatened to sue the state for trademark infringement, or that the state was planning to engage in any conduct that would give rise to a trademark infringement suit by M22 (such as selling goods or services bearing the M22 marks).

Second, the court held that Michigan lacked standing as there was no concrete injury alleged. Michigan’s main argument as to concrete injury was that Michigan risks losing federal highway funding if it does not comply with and enforce state and federal laws and regulations, including the MUTCD. The court disagreed, determining that Michigan had not alleged facts showing how the registration of M22’s marks would prevent Michigan from complying with the MUTCD, that there was any risk of losing federal funding, or that Michigan has any power to enforce the MUTCD against private third parties.

This decision is a big win for M22 LLC and its business line based on the M22 marks. It is also encouraging for many other trademark owners, as there are hundreds of registered trademarks that include designs of road signs (e.g., US-1). What do you think about this case?

 

What Do You Think Of Having ® On Your Store Sign

Posted in Advertising, Branding, International, Marketing, Squirrelly Thoughts, Trademarks

I traveled to Barcelona last week to attend the International Trademark Association (“INTA”) Annual meeting.

I arrived at the Barcelona Airport the requisite three hours before your international flight.  During my long stay at the Barcelona airport I saw three store signs with ® on them.  They included the following signs:

IMG_0502  IMG_0503

Although many stores have registered trademarks, the stores usually do not have the ® symbol on the actual store sign.

Have you noticed other store signs with ® included on them? Why don’t more signs have them?