Trademarks consisting of or comprising “scandalous or immoral” matter still won’t be granted federal registration “in the name of the United States of America,” at least for the time being.

Immediately on the heels of the International Trademark Association’s 140th Annual Meeting in Seattle, and our well-received panel discussion concerning Trademarks and Free Speech, the United States Patent and Trademark Office announced it will continue to hold on to and suspend trademark applications containing scandalous or immoral matter, until further notice.

The Trademark Office is waiting to see whether the federal government will appeal the Brunetti decision to the U.S. Supreme Court. What I would give to be a fly on the wall in those discussions.

As you may recall, a three-member panel of the Court of Appeals for the Federal Circuit (CAFC), ruled last December that the “scandalous or immoral” statutory bar to registration violates a trademark applicant’s Free Speech, overturning a part of trademark law in existence since 1905.

Since the federal government’s request that the entire CAFC reconsider the three-member panel decision Brunetti was denied in April, the government now has until July 11 to seek Supreme Court review or ask for more time to decide, stay tuned. Learned John Welch predicts no appeal.

During our INTA panel discussion, I predicted the government will seek review of Brunetti by the U.S. Supreme Court. I also predicted the Supreme Court will pass on the request, stay tuned.

Even if it might be tempting to believe that — in our present culture — anything goes and nothing can rise to the level of scandalousness any longer, so why bother trying to salvage a statutory relic from more than 100 years ago, I’m thinking the federal government won’t throw in the towel yet.

As we’ve written before, the Brunetti decision, didn’t anchor itself to the viewpoint discriminatory requirement from the Supreme Court in Tam, instead focusing on mere content discrimination to justify invalidation of a more than a century old part of federal trademark law.

This much easier test for invalidation puts at risk many other portions of federal trademark law, so I’m thinking the federal government can’t let the mere content discriminatory requirement of Brunetti stand without at least trying for Supreme Court review for further direction and guidance.

It’s also hard to believe the federal government is truly ready to have the USPTO knowingly begin to federally register obscene, profane, and sexually explicit matter as trademarks, “in the name of the United States of America,” for the first time in history. What’s your prediction?

UPDATE: Susan Decker of Bloomberg interviewed and shares quotes yours truly on the subject, here.

Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:

Before:

 

During:

 

 

After:

Steve Baird, Amanda Blackhorse, Joel MacMull, Simon Tam
Professor Lisa Ramsey, Steve Baird, and Professor Christine Haight Farley whispering in Steve’s ear

Highlights:

Amanda Blackhorse:

Message to Daniel Snyder: “You cannot force honor on someone.”

Steve Baird:

“Federal trademark registration is a giant exception to Free Speech.”

Other messages drawn from here, here, here, here, and here.

Simon Tam:

Interpreting USPTO: “They said we were too Asian!”

Joel MacMull:

The Tam case never should have been decided on Constitutional grounds!

Great questions from the engaged crowd, wish there had been much more time!

What were your highlights from the panel discussion?

UPDATE: Simon Tam, writing about Paper Justice, here.

In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The company instituted an opposition (which I cannot help but note is #999,999), arguing that “Trader Schmo” will confuse consumers because consumers will naturally switch “Joe’s” with “Schmo,” given the popular phrase “Joe Schmo.”

This is not the first time Trader Joe’s has taken legal action to protect its brand. Notably, just a couple years ago the company sued “Pirate Joe’s,” a counterfeiter with a backstory almost too unbelievable to be true. Pirate Joe’s was a “rebel Canadian grocery operation,” which bought Trader Joe’s products in the United States and “smuggle[d] them across the border to Vancouver” to sell them. Pirate Joe’s eventually ran aground under the immense pressure of its legal fees.

Pirate Joe’s Comes Crashing Down, Credit: Georgia Straight

This new dispute reminds me of the famous “Dumb Starbucks” experiment by comedy TV series Nathan For You. Over one weekend in 2014, the show opened a coffee shop that looked just like a real Starbucks, except that its name and every drink it sold was preceded by the word “dumb.” The comedian behind the prank (or “art“) claimed that “Dumb Starbucks” was permissible fair use because both the use of the Starbucks mark, as well as the store itself, was one big parody. One cannot help but notice some parallels to Trader Schmo; the latter word refers to a hypothetical “dumb” person.

Comedian Nathan Fielder, Credit: New Yorker

Dumb Starbucks and Trader Schmo raise difficult questions about permissible comedic use under trademark law. On the one hand, the marks free ride on the notoriety of other marks, bringing attention. On the other, it seems unlikely the marks would cause actual consumer confusion, making them harmless jokes. Whether Trader Schmo runs afoul of the Lanham Act will likely depend on two major inquiries: (1) whether it constitutes infringement or dilution, and (2) whether statutory fair use defenses apply.

InfringementPreviously on this blog, I explained that infringement usually centers on likelihood of confusion, which is evaluated using a variety of factors:

whether the use is related, the strength of the mark, proximity of the use, similarities of the marks, evidence of actual confusion, marketing channels employed, the degree of care likely to be exercised by consumers, the user’s intent in selecting the mark, and the likelihood of expansion of product/service lines.

The factors could support a finding of infringement here. The uses are related (food). The strength of the Trader Joe’s mark rides the line between arbitrary and fanciful to descriptive; who is Trader Joe in the abstract, and what does he sell? Surely the marks are similar…sounding. But on the other hand, would an average Joe really mistake Trader Schmo for Trader Joe’s? As a counter, though, it seems reasonable to infer that Trader Schmo was selected because it is similar to Trader Joe’s.

Dilution: So there might be infringement. How about dilution? This occurs when the similarity between the accused mark and a famous mark is likely to impair the distinctiveness or reputation of the famous mark. Dilution does not require any actual or likely consumer confusion. Depending on how good Trader Schmo’s Baba Ganoush, Gefilte fish, Matzo ball soup, and Borscht taste, Trader Joe’s could have an argument for dilution–especially if Trader Schmo’s grows large enough to undermine the distinctiveness of Trader Joe’s as a famous brand.

Fair Use: Generally speaking, the fair use provisions for infringement and dilution both require: (1) that the accused mark be used in a descriptive sense and not as a mark, and (2) that use of the accused mark be fair and in good faith. However, fair use does not provide a defense to infringement if there is likelihood of confusion–but we’ll gloss over that for now.

First, Trader Schmo could arguably be descriptive, delineating traded products. And the word ‘schmo’ has Jewish roots, which could describe the Kosher foods the mark designates. On the other hand, Trader Schmo isn’t inherently descriptive in that it actually describes a product or a characteristic or quality (e.g., Vision Center, a store for glasses). And it’s being used as a mark. So fair use might not even apply.

Assuming descriptiveness, the second element (the ‘fair’ aspect of the doctrine of fair use) often implicates the kinds of First Amendment interests that protect parody, satire, and criticism. But there’s no indication that Trader Schmo is intended to comment on Trader Joe’s. Moreover, courts have rejected the idea that a use is “fair” or in good faith if its similarity to a protected mark is deliberately concocted to garner attention. Trader Joe’s could have a good case for that here–just as Starbucks likely had against Dumb Starbucks.

A high-level analysis of the Trader Schmo mark suggests it could constitute infringement or dilution and is not fair use. This conclusion underscores trademark law’s general distaste for humor when it comes to commerce, as opposed to actual social commentary and comparison.

Not all ambush marketing is created equal. Some can cross the line and create a likelihood of confusion as to sponsorship. Some falsely advertises. But, some is totally fair use and lawful.

This current promotional banner by La-Z-Boy is capitalizing on the excitement surrounding the upcoming Super Bowl weekend festivities, but without reasonable risk of heat from the NFL:

The same can be said for this Lunds & Byerlys in-store signage, with the local grocery chain having tiptoed around the issue entirely by using the Big Game code word instead:

Love the fine-print shout out to local darling, Surly’s Cynic Pale Ale, and the additional shout out to Surly’s “Over Rated” — and clever jab at West Coast IPAs — thankfully no risk of offending all the visiting fans from the East Coast for Super Bowl LII.

By the way, since the Home Team, won’t be playing, merely hosting, which team do you favor from the East Coast, the Philadelphia Eagles or the New England Patriots?

We follow closely and write a lot about what goes on with the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO); these ironmongers do too, really well.

Serious trademark and brand owners care about TTAB decisions because many trademark disputes begin and end there, as the TTAB determines the important right to federally register trademarks.

What I mean by beginning there is, discreetly-used third party conflicting marks “flying under the radar,” rise to another level of trademark enforcement importance for a trademark and brand owner when the user also seeks federal registration, almost requiring the opening opposition salvo.

Federally-registered trademark owners know the importance of protecting the federal trademark register, because what, and how many similar third party marks, are allowed for registration, can negatively impact the owner’s trademark strength, scope of rights, and enforcement success.

Trademark rights are dynamic, they’ll shrink or grow over time, depending on the landscape at the time of enforcement, so not limiting registration at the USPTO can have more negative impact on strength and scope than an single, discreet, unauthorized use of a confusingly similar mark.

Looking the other way at trademark applications landing within a brand owner’s legitimate scope of protection, indirectly sends the perhaps unintended message to the trademark world, and those who monitor it, that the owner willingly accepts the shrinkage of its trademark rights.

So, serious trademark owners watch for conflicting filings at the USPTO, and stand in the way of registration, until agreement can be reached on how to coexist without a likelihood of confusion.

What I mean by many trademark disputes ending at the TTAB is, most oppositions do not go to final decision, the vast majority settle with a mutually-beneficial coexistence agreement in place.

And, when they don’t, trademark and brand owners — who follow us here — also know that the importance of final TTAB decisions has been raised, as the U.S. Supreme Court recently opened the door to having certain TTAB decisions — through the application of issue preclusion — control the outcome of later federal district court infringement and dilution law suits.

Congratulations to the TTAB on reaching sixty years of dedicated service to trademark and brand owners, as we look forward to the interesting issues likely to be decided in 2018 and beyond.

As I reflect on the more than twenty-five years of my experience before the TTAB, at this point in time — spanning nearly half of the TTAB’s existence — I’ll have to say, the TTAB seems to be carefully and thoughtfully emulating the characteristics of a fine wine as it matures.

What are your predictions of the 2018 decisions that will stand out? Fraud? Functionality? Fame?

Will the TTAB revisit its previous perceived inability to address Constitutional issues, like say, dilution tarnishmentreligious text marks, or application of the Section 2(c) bar to prevent federal registration of political trademark speech, and, if not this coming year, when?

I’m thinking this will be the year of informational and failure to function decisions, how about you?

Last Friday was a big day for Erik Brunetti. He won his appeal at the CAFC, opening the door to federal trademark registration of his four-letter-word “fuct” clothing and fashion brand name.

The same door swung wide open for all other vulgar, scandalous, and immoral designations used as trademarks, because the 112-year old registration prohibition was found to violate free speech.

You may recall where I take a knee on the free speech argument as it relates to the government’s issuance of federal trademark registrations, see here, here, here, here, here, here, and here.

I’m continuing to believe Congress has the power under the Commerce Clause to distance itself from and not be viewed as endorsing certain subject matter on public policy grounds, especially when Certificates of Registration are issued “in the name of the United States of America.”

Having said that, I’m thinking the federal government has done a less than stellar job of articulating and advocating for this right, which may very well explain the current state of affairs.

What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.

The CAFC did not decide whether the “scandalous and immoral” clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.

The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.

Asked before, but will dilution by tarnishment survive this kind of strict free speech scrutiny? According to the CAFC in Brunetti, strict scrutiny applies even without viewpoint discrimination.

All that leads me to explore with you Brunetti’s line of “fuct” clothing, and in particular, this t-shirt which is surprisingly for sale online, here.

We’ll see for how long it’s available online, or whether Mr. Brunetti will need to Go Further, to get another brand’s attention, hello, Ford:

It’s hard to imagine the famous Ford logo, consisting of the distinctive script and blue oval, not being considered sufficiently famous and worthy of protection against dilution — without a showing of likelihood of confusion. But, given Tam and Brunetti, is a dilution by tarnishment claim even viable, or is it just another federal trademark provision about to fall, in favor of free speech.

Just because Mr. Brunetti may be anointed with a federal registration for the word “fuct” doesn’t mean his depiction of the word in the above style and design is lawful for use or registration.

So, if Ford does pursue the Brunetti t-shirt, under a dilution by tarnishment theory, and if it were considered to be a viable claim, in the end, might Mr. Brunetti be the one, let’s say, uniquely suited — to vanquish tarnishment protection from the Lanham Act?

Or, will another potty-mouth brand be the one to seriously probe the constitutionality of dilution protection against tarnishment?

Last but not least, and sadly for me, last Friday also was a big day for Mr. Daniel Snyder too.

— Jessica Gutierrez Alm, Attorney

Simon Tam wasn’t the only one barred by the Lanham Act from reclaiming a historically derogatory term.

Dykes on Bikes is a nonprofit lesbian motorcycle organization.  According to their website, the group’s mission is to “support philanthropic endeavors in the lesbian, gay, bisexual, transgender, and women’s communities, and to reach out to empower a community of diverse women through rides, charity events, Pride events, and education.”  In 2015, Dykes on Bikes tried to register their logo as a service mark for entertainment.  The application was put on hold pending the outcome of Matal v. Tam, as the Supreme Court considered whether Simon Tam could register his band name—The Slants.  In view of the Court’s landmark decision holding the disparagement provision of the Lanham Act unconstitutional viewpoint discrimination, Dykes on Bikes will move forward with its trademark application as well.

It was in 2003 when Dykes on Bikes first sought to register the name of their organization as a service mark for education and entertainment services.  Registration was refused on the basis that the mark was disparaging to lesbians.  The organization appealed to the TTAB, arguing that the word “dyke” had become a positive term and a symbol of pride and empowerment.  Dykes on Bikes won their appeal before the TTAB.  But when the mark was published for opposition, an individual named Michael McDermott filed an opposition claiming the mark was disparaging to men.  Ultimately, McDermott’s opposition was dismissed for lack of standing.  In particular, McDermott failed to show either (1) he possesses a trait or characteristic implicated by the proposed mark; or (2) others share the same belief of harm from the proposed mark.  The TTAB dismissed McDermott’s opposition and the Federal Circuit affirmed.  DIKES ON BIKES was successfully registered in 2007.

Because they had already won the disparagement battle for their first mark, Dykes on Bikes was surprised to face another disparagement refusal for a second mark.  In 2015, the group sought to register their logo as a service mark.  They sought review by the TTAB, and the case was put on hold pending the outcome of Matal v. Tam.  Dykes on Bikes also filed an amicus brief in the Tam case, arguing in favor of Tam’s position.  After the Supreme Court held in Tam that “the disparagement clause violates the Free Speech Clause of the First Amendment,” the DYKES ON BIKES W M C logo was approved for publication.

Dykes on Bikes and The Slants had similar goals.  As Dykes on Bikes described in their amicus brief, both groups “have chosen to reclaim self-referential terms as trademarks for the benefit of the groups those terms refer to.”  They also drew a distinction with respect to a certain NFL team name: “the Washington Redskins have chosen a term that is unrelated to the people who identify as members of the football team and is commonly understood to be a slur which members of the identified group have not reclaimed.  Whatever the constitutionality of the PTO’s treatment of the Redskins mark, the team’s use of that name is immoral and Dykes on Bikes encourages the Washington Redskins to give up their trademarked name as a matter of respect and decency.”

While the Tam decision may have opened the proverbial flood gates of offensive trademark applications, it also allows for these positive trademark uses in reclaiming derogatory terms.

AM General, manufacturer of Humvee military vehicles, has sued Activision Blizzard for trademark infringement, based on the use of the “Humvee” and “HMMWV” marks for the virtual military vehicles displayed in Activision’s Call of Duty video games. See the complaint here, filed last week in the Southern District of New York. For those of you who are not avid video-gamers, Call of Duty is a military-themed first-person shooter game–and it’s one of the best-selling games in the world, selling more than 250 million copies since 2003.

AM General owns federal trademark registrations for the marks HUMVEE (Reg. No. 1697530) and HMMWV (Reg. No. 3026594), for use in connection with the military trucks that the company manufactures. (“HMMWV” is an acronym referring to High Mobility Multipurpose Wheeled Vehicle.)

This dispute raises issues similar to those I’ve discussed in recent posts (such as here) regarding the gap between trademark use in the real-world, versus trademark use in the virtual realm, such as in video games, which involve depictions of arguably related goods or services. Here, it is questionable whether consumers would be confused as to source. There is no indication that AM General sells video games, or that Activision sells military vehicles.

For example, in E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008), the court held that consumer confusion was unlikely based on a video game’s reference to the mark “Play Pen,” referring to a real-world strip club, because: “The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together ….  Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club.”

Nevertheless, confusion as to source isn’t the only actionable type of confusion–there’s an argument that consumers could be confused as to whether there is an affiliation, sponsorship, or approval between Activision and AM General as to the Call of Duty video games and the references to the HUMVEE and HMMWV marks, such as a licensing deal. Such an argument is reinforced by AM General’s allegations in the complaint that it has licensed the use of its HUMVEE mark in several other video games.

However, Activision may also have several defenses, including a nominative fair-use defense. The defense of nominative fair-use may apply where a defendant uses a mark solely to describe and refer to the plaintiff’s product, but not the defendant’s product, for purposes such as comparison, criticism, or simply a point of reference. Here, it would seem that Activision is using the HUMVEE and HMMWV marks nominatively, to refer to AM General’s military vehicles, rather than any of Activision’s products.

A free-speech defense may also apply for artistic expression under the First Amendment. The Rock Star Videos case, cited above, has relevant discussion of this defense in a similar context. In that case, the court applied the Second Circuit’s “Rogers test,” under which “an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” Rock Star Videos, 547 F.3d at 1095 (quoting Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)). The court held that this defense was established, because the San Andreas video game was an artistic work; the reference to the “Play Pen” mark for a strip club had “at least some artistic relevance” (this is a low threshold–the level of relevance “merely must be above zero”); and the reference did not explicitly mislead consumers as to the source of the work.  Id. at 1099-1101.

Similarly here, Activision could argue that its video game and the references to AM General’s marks are merely artistic expression; that the references to the HUMVEE and HMMWV have at least some non-zero level of artistic relevance; and such references do not explicitly mislead consumers.

It will be interesting to see the defenses raised by Activision and how this dispute ultimately plays out. Activision’s answer to the complaint will be due in a couple weeks. How do you think this case will be resolved? Stay tuned for updates.

 

The weekend of October 20-21, 2017, the Minnesota Golden Gophers and North Dakota Fighting Hawks traded wins in one of college hockey’s most competitive series. While watching the NCHC broadcast, an ad for the “Sioux Shop” appeared on screen. The ad explained that the Sioux Shop sells North Dakota fan gear at Ralph Englestad Arena (affectionately referred to by North Dakota fans as “the Ralph”), the 400,000 square foot, first-class hockey palace in Grand Forks where the Gophers and Hawks were facing off. I was surprised by the ad, especially in view of the fact that the University of North Dakota is no longer referred to as the “Sioux.”

Picture credit: Pinterest.

The Sioux Shop ad also reminded me of a recent experience I had when flying Southwest Airlines, in which a gate staff member was wearing a Fighting Sioux lanyard. As many frequent Southwest fliers can attest, Southwest’s employees often wear memorabilia of their favorite sports teams. I asked the staff member where she got the lanyard, as it appeared to be new. She replied that the University is still licensing the mark so as not to abandon it and that she picked it up from a licensed merchandiser. Apparently, you can also buy Fighting Sioux gear on Amazon.

As many hockey fans know, the University recently changed its mascot to the Fighting Hawks, from the Fighting Sioux, after backlash from the NCAA and a statewide ballot initiative approved the change. The “Fighting Sioux” is also one of several arguably-disparaging marks based on Native American culture that have been criticized in recent years. For example, the Fighting Sioux trademark is similar to the R-word trademark, which was challenged and later upheld by the U.S. Supreme Court this summer. With this political and legal background in mind, I thought to myself when watching the Sioux Shop ad, “Didn’t North Dakota change it’s sports mascot to the Hawks, and, if so, why does the fan shop still bear the ‘Sioux’ name? Can NCHC, an NCAA conference, even run an ad for a shop selling merchandise bearing a name similar to one that the NCAA singled out as ‘hostile or abusive’?” Just what is going on here?

It turns out that the Southwest staff member was right: the University still licenses the Fighting Sioux trademark so as to avoid abandonment. The reasons appear to be threefold: First, the University agreed in a 2007 settlement with the NCAA that it would maintain the Fighting Sioux trademark. Second, the school appears to be concerned that if it does not license the trademark and control the flow of Sioux merchandise, someone will flood the market and stymy efforts to phase in the Fighting Hawks mascot and phase out the Fighting Sioux mark. Ironically, then, in order to effectively stop using the Fighting Sioux name, the University must “use” the mark. Third—and perhaps this is unfair cynicism—money.

The Lanham Act provides that a trademark may lose its viability through abandonment when the holder of the mark both discontinues use of the mark and intends not to resume use of the mark. See 15 U.S.C. § 1127. The law states that nonuse for three consecutive years is prima facie evidence of abandonment. See id. Clearly, the University hasn’t run into that issue yet. However, the issue that the University does face is whether it is making a “bona fide use” of the Fighting Sioux mark “in the ordinary course of trade, and not made merely to reserve” its right in the mark. Id. Reductions in the use of a mark may contribute to a finding of both prongs of the abandonment test. So can failure to take action against infringers. Of course, whether a reduction in use and a change in the scope and extent of licensing shows abandonment depends on the facts and circumstances of each case.

The University’s current licensing strategy definitely toes the blue line on bona fide use. It appears that the University is only licensing productions of 9,000 pieces of merchandise at a time and in limited auctions. Such small offerings surely dwarf those available to fans in the years leading up to the mascot switch. On the other hand, the offerings are in the same category: sportswear. The geographic range of the sales is also smaller than before. In addition to the practically-discontinued use of the mark, the University’s licensing also seems disingenuous. One reason for maintaining the mark is to control the supply of Fighting Sioux gear competing with Fighting Hawks gear, and I’m not sure that purpose shows intent to use the Sioux mark (rather than mere reservation of it). I’m also skeptical that using the mark is helping transition efforts; as one source reports, new Fighting Sioux gear has been known to sell out very quickly, and fans continue to cling to the name–not to mention the Ralph, which has over 2,500 Sioux logos plastered throughout the arena in fulfillment of its late eponymous benefactor’s desire to protest a mascot name change.

Whether the University’s current use of the mark can stave off the threat of abandonment, while at the same time render the Fighting Sioux mark obsolete, remains to be seen. For now, North Dakota hockey fans are stuck between two mascots, and neighboring rivals look on in confusion, with no clear end in sight.

Of course, loyal readers have been eagerly awaiting Part III of the series (see Part I and Part II) focusing on Tam’s intersection of federal trademark registration and the First Amendment.

In terms of the certain and practical implications flowing from the decision, it opens the door to a host of new trademark applications containing religious and racial slurs, including the N-word.

Perhaps this explains, in part, why the Justice Department flipflopped on the issue and now says that the “scandalous and immoral” provision of Section 2(a) actually can survive Matal v. Tam.

If the Federal Circuit allows the “scandalous and immoral” provision to survive Tam and attempts to craft some sort of reasoning as to why it should be treated differently than disparagement, we’ve already pointed to how that may impact pending and suspended refusals of the R-Word.

On the other hand, if the Federal Circuit eliminates “scandalous and immoral” registration refusals relying on the Supreme Court’s Tam decision, as consistency of analysis would seem to require, how many of the newly filed scandalous marks actually will be published in the Official Gazette?

Another interesting question might be whether any of these obviously offensive applications will satisfy the essential predicates to registration, and actually adorn the Principal Register, with official Certificates of Registration issued in the name of the United States of America?

It’s worth asking whether the Supreme Court’s destruction of the even-handed framework that the USPTO devised in applying the disparagement provision of Section 2(a) (conscious of favoring neither side on an issue and determined to ignore an Applicant’s intent), inevitably will lead to selectively enforced analyses above the table driven by emotions residing beneath the table.

One area for concern might be the Trademark Office’s growing interest in refusing registration of matter deemed merely informational; presumed “incapable” of performing a trademark function. I’m left wondering, how tempting might it be to use this rather blunt tool on seriously offensive subject matter after Section 2(a) has been stripped of its previous reach in denying registration?

Having said that, will or should the Trademark Office reassess Exam Guide 2-17, concerning Merely Informational Matter, in light of the Tam Court’s perspective on viewpoint discrimination. Seems like it should to me. So, I’m also left wondering, exactly how might “merely informational matter” not express a viewpoint, making such a refusal presumptively invalid?

Since the federal government is apparently powerless to prevent the registration of disparaging trademarks because doing so constitutes viewpoint discrimination that cannot withstand strict scrutiny, what is the fate of federal dilution law, especially the provisions against tarnishment of famous marks? Wes noted some serious questions, others have too, here, here, and here.

In particular, Justice Alito labeled the disparagement registration ban as a “happy-talk clause,” adding that “[g]iving offense is a viewpoint,” and Justice Kennedy reinforced that viewpoint, saying: “To prohibit all sides from criticizing their opponents makes a law more viewpoint based, not less so.” Given that clarity, does this defecating dog trademark not express a viewpoint too?

The Applicant defended Greyhound’s opposition, in part, by arguing that “reasonable people would not be offended because the mark mocks the craze for shirts bearing prestigious emblems.” Doesn’t that sound a lot like a viewpoint being expressed with the defecating dog trademark?

Yet, in rejecting the Applicant’s arguments, and in granting Greyhound summary judgment and refusing registration of the defecating dog mark, the TTAB concluded, back in 1988:

“We do not find applicant’s arguments to be persuasive. Even assuming that people are not offended by the sight of a dog defecating on the ground, applicant’s mark, used on its goods, is a dog defecating on a shirt. This certainly produces a different effect from the viewing of a dog defecating in its normal environment.”

“Further, applicant admits that some people would find the depiction of feces in the mark offensive and that people ‘expect to find something a little out of the ordinary when they see this type of applique.’ In effect, applicant is admitting that the mark has a shock value, and we view the shock to be the offensiveness of the depiction.” (citation omitted)

Does this not constitute “giving offense” and isn’t it fair to say, it “expresses ideas that offend” — to use Justice Alito’s words? Do shocking images and content not convey a viewpoint?

Justice Kennedy stated the disparagement provision “reflects the Government’s disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination.”

He went on to say:

“Unlike content based discrimination, discrimination based on viewpoint, including a regulation that targets speech for its offensiveness, remains of serious concern in the commercial context.”

If so, and if the “scandalous and immoral” provision of Section 2(a) does not survive Constitutional scrutiny in Brunetti, then how does Greyhound, or any other owner of a famous brand, prevent registration (and use) of trademarks designed to express a negative viewpoint about a famous brand while also serving as a trademark for Applicant’s own goods and/or services?

And, what about the below RED SOX/SEX ROD example? The TTAB ruled that the stylized SEX ROD mark “would be viewed as a sexually vulgar version of the club’s symbol and as making an offensive comment on or about the club.” That sounds like viewpoint discrimination too. So, on what basis can the Boston Red Sox object with the disparagement provision gone, and if dilution by tarnishment is also considered unconstitutional viewpoint discrimination?

Can dilution tarnishment survive the Tam Court’s strict scrutiny against viewpoint discrimination?