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Trademarks That Violate Public Policy

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, Trademarks, TTAB, USPTO

As our friend John Welch reported last week, the place to be on March 10, 2015, is Washington, D.C., at the 25th Annual “PTO Day,” sponsored by the Intellectual Property Owners Association:

PTODay

John will be part of the panel update on TTAB practice, and I’ll be providing the overview of Section 2(a) of the Lanham Act, that pesky provision of the federal trademark statute that bars registration of certain types of marks that violate public policy, including any trademark that “[c]onsists of or comprises immoral . . . or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .”

The “scandalous” prong of Section 2(a) has barred registration of vulgar marks like 1-800-JACK-OFF, MOMSBANGTEENS, SEX ROD, and BULLSHIT, to name a few.

The “may disparage” prong of Section 2(a) has been invoked to refuse registration of racially-slurring marks like THE SLANTS, HEEB, and SQUAW, and to revoke registration of the R-Word, as disparaging to Native Americans, because it was found to be improperly issued.

No doubt, there are critics of Section 2(a) that question the constitutionality of these statutory bars to registration — I’m alright withholding registration and use of ® — the federal registration symbol — next to those words, because doing so doesn’t prevent their commercial use.

I’m looking forward to hearing Ron Coleman’s perspective on Section 2(a), as counsel for The Slants, a case currently on appeal to the Court of Appeals for the Federal Circuit, and Jesse Witten, as counsel for Amanda Blackhorse and other Native American petitioners who prevailed against the Washington R*dskins last June.

Ron has provided a preview of his thoughts on his Likelihood of Confusion blog, in a three-part series scandalously titled “Indian givers” (parts 1, 2, and 3), suggesting the USPTO assumed this role in ordering the cancellation of the R-Word trademarks of the NFL professional football franchise located in the nation’s capital.

From my perspective, scandal aside, the title of Ron’s series is a misnomer, since the evidence of record in Harjo and Blackhorse showed that the R-Word was improperly granted registration in the first place, so I’m thinking, it looks far more like a windfall to the team than a taking.

In any event, sympathy for the team and other Section 2(a) losers is also unwarranted given the law for some seventy-five years: “The field is almost limitless from which to select words for use as trade-marks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration.”

Do you think that the registration prohibitions of Section 2(a) will withstand constitutional scrutiny? The Justice Department intends to see to it.