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That is the question, at least for the day.

It’s also a question we hope the U.S. Supreme Court will address.

In particular, does a careful focus on the USPTO’s routine application of Section 2(c) of the Lanham Act, help shed light on why Section 2(a) actually doesn’t violate the First Amendment?

Last December, we discussed In re Tam, and how the Court of Appeals for the Federal Circuit wrongly held that the First Amendment’s protection of speech rendered Section 2(a) — the statutory provision prohibiting the registration of marks that may disparage — unconstitutional.

As we have written before, just because a trademark exists doesn’t necessarily mean it is entitled to federal registration. The right to use is not coextensive with the right to register.

Indeed, various public policy considerations underlying our federal trademark law allow for use, but still may preclude registration of a trademark “on account of its nature“.

Like Section 2(a), Section 2(c) forbids the government from granting registration to a trademark “on account of its nature” if it “consists of or comprises” certain types of defined subject matter.

The specific subject matter denied registration under Section 2(a) — even if it performs as a trademark — includes matter that is scandalous or immoral, or matter that may disparage persons, among others.

Whereas, the specific subject matter denied registration under Section 2(c) — even if it performs as a trademark — includes the name identifying a particular living individual whose written consent to register is not of record at the USPTO.

For nearly a decade, Section 2(c) of the Lanham Act consistently has been invoked by the USPTO to refuse registration of any trademark alluding to President Barack Obama or Secretary of State Hillary Clinton, even those marks with a clearly negative political message and content:

So, if the en banc majority is really right in Tam (where commercial speech was at issue), then how can Section 2(c) survive the same First Amendment challenge with political messages?

Political speech is the most important and coveted form of speech protected by the First Amendment, yet each of the above politically-charged marks was refused registration under Section 2(c) of the Lanham Act.

And, just so it is clear that the USPTO is applying Section 2(c) in an evenhanded manner without picking sides, or punishing applicants espousing a negative message about a recognized political figure, these positive ones were refused under Section 2(c) as well:

In the same evenhanded way, in Tam, the USPTO refused registration of THE SLANTS because it met the 2(a) standard, concluding that a substantial composite of persons of Asian descent consider the subject matter to consist of or comprise a racial slur that may disparage persons of Asian descent.

It didn’t matter that Mr. Tam is of Asian descent and he genuinely desired to reclaim the slur as a positive designation. And, it wouldn’t have changed the result if a different non-Asian applicant actually intended to offend those of Asian descent by adopting the same mark. Either way, good or bad intentions, positive or negative messages, since the subject matter in question triggers a Section 2 violation, registration is not allowed.

Perhaps this analysis may add further support to Professor Rebecca Tushnet’s forthcoming Essay (not that she needs it), contending “that In re Tam is wrongly reasoned even given the Supreme Court’s increased scrutiny of commercial speech regulations, and that to hold otherwise and preserve the rest of trademark law would require unprincipled distinctions within trademark law.”

In addition, perhaps it further supports Professor Tushnet’s concern that “disparagement can’t coherently be distinguished from a number of the other bars to registration once the harsh logic of the First Amendment applies. If trademark registration as a whole is constitutionally vulnerable under a particular vision of the First Amendment, that very result counsels against adopting that vision as constitutional doctrine.”

For all the First Amendment wonks that believe the en banc majority of the CAFC got it right in Tam, and are uncomfortable with the USPTO invoking Section 2(a) when the subject matter of a mark consists of or comprises a racial slur, how are you able to defend Section 2(c) of the Lanham Act from the same First Amendment demise, especially when confronted with the above inherently political messages comprising the rejected trademark applications?

-Martha Engel, Attorney

Government approval of commercial speech has been a hot topic of discussion by trademark nerds here and elsewhere in light of recent decisions regarding the Redskins and The Slants marks.  As those decisions proceed up through the appeal channels to the Supreme Court, attention has been drawn to whether or not a trademark registration certificate should be issued by the USPTO for a mark that is immoral, deceptive, scandalous or disparaging – types of marks that were refused registration until the Federal Circuit released its decision in The Slants case, throwing out that restriction as unconstitutional.   Depending on how any further decision comes down, there may be implications not only on the USPTO, but also on government approval of commercial speech by any federal agency.

As discussed here before, a state agency refused to allow Raging Bitch beer to be sold because the mark was offensive and sexist, despite the mark being approved by the USPTO.  But even among federal agencies, the government has reached different conclusions about whether a trademark should receive approval or not, particularly in the beer, wine, and liquor industry.

Not to be confused with the TTAB, the TTB (the Alcohol & Tobacco Tax & Trade Bureau) regulates this industry, including product labels.  To sell any of these products across state lines, they need a certificate of label approval (COLA) from the TTB.  As many in the industry have experienced, the TTB has strict – and some might say “maddening” – guidelines for product labels.  In the labeling statute, you’ll see some of the same language found in the trademark statute:  labels are unlawful if they include deceptive, disparaging, false, misleading, obscene or indecent statements.

Indeed Brewing Company sells a beer called LSD Honey Ale.  Lavender. Sunflower honey. Dates.  It owns a federal trademark registration for the mark LSD for beer.  Here is the specimen that was submitted with that trademark application:

LSDlabel

As you can maybe see from this label, the description on the back included the letters L S and D in bold within the text, linking the letters to the ingredients.

Last year, Indeed updated its packaging and needed to submit at least some of its labels to the TTB.  Recently, the TTB refused to approve LSD appearing on the labels, so the brewery dropped the acronym (and the bolded letters) from them.

(Courtesy of Indeed Brewing)

Branding agencies can add value by familiarizing themselves with the nuances of TTB labeling laws and regulations when developing new packaging for their brewery, cidery, winery, and distillery clients.  Some labeling changes do not require the client to re-apply for TTB approval, but it is important to know what those are and what implications any such changes may have on approval.  Additionally, trademark applicants should consider applying for a COLA during the trademark process to confirm that both of these important federal agencies approve use of the mark.

Do you agree with the TTB here?  Should this agency be able to reach a different conclusion on the suitability of use of a mark than the USPTO does?

 

-Wes Anderson, Attorney

Owners of scandalous, immoral, or disparaging marks are on notice: now is the time to place your $275 bet with the USPTO. And soon, the Trademark Office database may be “NSFW.”

Last Thursday, the USPTO issued Examination Guide 01-16 to address the impact of recent federal court decisions on Section 2(a) of the Trademark Act. That section prohibits registration of marks that comprise immoral or scandalous matter (such as profanity), or marks that are disparaging (such as racial slurs).

parental_advisory

As previously blogged by my colleague Tim Sitzmann here, the Federal Circuit’s decision in In re Tam struck down the disparagement portion of Section 2(a) on First Amendment grounds. This provision is also the focus of the Washington Redskins case, Pro-Football v. Blackhorse,  currently pending before the Fourth Circuit Court of Appeals in Virginia. The Guide notes the immoral/scandalous portion of Section 2(a) is pending a similar constitutional review before the Federal Circuit in In re Brunetti, in which the USPTO refused registration of the mark FUCT for athletic apparel. If the Federal Circuit holds serve in Brunetti, it will strike down the prohibition of scandalous marks.

Tam is likely bound for the Supreme Court, as is Blackhorse and possibly Brunetti assuming the timing allows SCOTUS to consolidate each case. The USPTO’s petition for certiorari to the Supreme Court for Tam remains pending as I write this. If the courts follow Tam, the impact is clear: Section 2(a) would be no more.

As these battles rage, it was not clear what the USPTO was left to do with new applications for immoral/scandalous or disparaging marks. The USPTO is not an Article III court and, as such, it cannot choose simply to ignore Section 2(a) in light of the Tam decision. But it also does not follow that the USPTO should continue to refuse registration of marks under Section 2(a) unless and until a final decision is rendered.

The Examination Guide puts forth a temporary solution: all new applications subject to Section 2(a) refusals will be suspended until the dust settles:

The USPTO continues to examine applications for compliance with the scandalousness and disparagement provisions in Section 2(a) according to the existing guidance in the Trademark Manual of Examining Procedure § 1203.  While the constitutionality of these provisions remains in question and subject to potential Supreme Court review, for any new applications the USPTO will issue only advisory refusals on the grounds that a mark consists of or comprises scandalous, immoral, or disparaging matter under Section 2(a).  If a mark’s registrability under these provisions in Section 2(a) is the only issue, the examining attorney will identify the reasons for the advisory refusal and suspend action on the application in the first Office action.

In effect, the USPTO has presented an entirely new category of mark owners with acres of unoccupied territory. This is a profound change for owners of marks subject to Section 2(a) refusals, even those that had previous applications rejected on appeal. The USPTO now invites new applications for all manner of marks.

When and if the dust settles and the federal courts strike down Section 2(a), the spoils of trademark registration will go to the first to file. This may operate to the detriment of any parties that wait until after a Supreme Court decision before filing applications for questionable marks. Established brand owners that, until now, could not register their marks under Section 2(a) must also now ensure that a third party doesn’t file first. This could be a bustling time for oppositions based on unregistered and profane common-law marks.

How long will the suspension last? It’s hard to say, but it could be a number of years before the Supreme Court can take on and decide each of these cases (assuming SCOTUS will grant certiorari). The Guide elaborates on some of the events that may affect the suspension:

Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension.  Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs:  (1) the period to petition for a writ of certiorari (including any extensions) in Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision.

All that’s needed now is an application and a $275 filing fee; and if SCOTUS gets involved and Section 2(a) kicks the can, savvy applicants may find themselves the very first to claim [insert profane term of your choice here].

As it happens, later this morning, President Obama will announce his choice to replace the late Justice Scalia. As if we needed more reason to follow this Supreme Court vacancy.

I don’t know what the record is for the longest time it has taken for a trademark application to clear the Trademark Office, but I’m pretty sure that Havana Club would medal. The application for the Havana Club mark for rum was filed on September 12, 1994. That’s 21 years ago, old enough to drink the rum behind the name.

The brand has been caught up in litigation for much of the time. Bacardi bought the rights to brand from the Arechabala family, which owned the brand until it’s company was nationalized by Cuban government after the revolution. Bacardi, another Cuban family company, had distilleries and other assets outside of Cuba. After the revolution they moved out and continued to produce in Puerto Rico.

Old Havana Club Advert

The Cuban government, through a state held company, produced Havana Club and registered the mark in the United States in 1976 based on its Cuban registration. Bacardi has been contesting the trademark since at least 1994. Due to the diplomatic situation, Cuba had to secure a license from the U.S. Treasury’s Office of Foreign Assets Control to be able to pay to renew its registration. In 2006 that license was denied and Cuba was unable to renew the license. It appears that a cancellation was never ordered and that proceedings were on hold while fights in the courts proceeded. On January 13 of this year, the Trademark Office accepted the 2006 payments and renewed the registration after the Office of Foreign Assets Control granted a license.

This brings about an interesting situation. The Cuban state held company had partnered with Pernod Ricard, another spirits maker, to sell Havana Club just about everywhere. Pernod sued Bacardi for selling Havana Club in the U.S., but Bacardi won. So, Bacardi has continued to sell Havana Club in the United States while Cuba and Pernod have produced Havana Club in Cuba and sold it everywhere else (they couldn’t sell in the U.S. because of the embargo). Now Bacardi is selling Havana Club (with the apparent blessing of courts) while Cuba holds the valid trademark registration. The likelihood of confusion is pretty high if the embargo is lifted and Pernod begins selling Havana Club in the U.S.

Havana Club

(My guess is that this one is Cuban – but only because of the stamp on the bottom)

 

On another point, there has been a lot of discussion about whether the ® symbol acts as something of a government seal of approval, mainly revolving around marks like “The Slants” and “The Redskins.” It’s fairly apparent at this point that the government has been willing to bring trademarks into its diplomacy. So, by allowing the Cuban government to register the mark of a brand that it nationalized without compensation, is the government approving of nationalization without compensation?

The big mascot news over the past year has been in the NFL, as Washington fights to maintain its registrations for the REDSKINS mark. As that dispute continues, the University of North Dakota tried to put to rest its longstanding issues regarding its previous use of the name “The Fighting Sioux.”

In 2012, UND dropped the old nickname. It was a long drawn-out battle between the NCAA, university administration, the North Dakota legislature, and others. In the end, it took a statewide referendum to enable the school to drop the name. But the issue wasn’t exactly resolved as UND never adopted a new nickname. Instead, they were simply “North Dakota,” or for those unable to not personify a school in the form of a nickname, “The North Dakota.” The name doesn’t exactly lend itself to a great mascot costume:

Possible Mascot - UNDNotwithstanding the aesthetic disadvantages, the mascot would be particularly susceptible to gusts of wind, which could present an issue on the plains of North Dakota.

Also, while “North Dakota” was going through its naming process, its intrastate rival North Dakota State University was getting its fair share of publicity. After all, all NDSU did was win back to back to back to back FCS titles (with a #3 seed in this year’s playoffs). I imagine it must have been a bit irritating to continue to correct sportscasters and members of the public that UND was the other North Dakota, not the one with all of those national titles.

In order to fix the problem, the school held a vote to determine the new nickname. Among the choices were Nodaks, Roughriders, Sundogs, Fighting Hawks, and the North Stars. Apparently the Frackers didn’t make the list. Votes were cast and, just last week, UND announced that the winning nickname was “The Fighting Hawks.” But did UND simply trade one controversial name for another?

I may be biased, but when I hear “The Fighting Hawks,” I can’t help but think of my alma mater of the University of Iowa and its Hawkeyes. Although the name is officially the “Hawkeyes,” we all know that when someone says “hawks,” they’re talking about the Iowa Hawkeyes. Among Iowa fans, “Go Hawks” isn’t just a cheer. It’s a greeting. See a friend on the street but don’t have time to say hello? A quick “Go Hawks!” does the trick just fine. In fact, it doesn’t even have to be a friend. If an Iowa fan sees an unknown stranger anywhere in the U.S. or around the world with a Hawkeye hat or shirt, there is a 95% chance that a “Go Hawks!” will be exchanged.

Okay, sure, there are other Hawks out there too. On the pro side there are Atlanta Hawks and the Chicago Blackhawks. In college, there are probably too many to name, including the Dickinson State University Blue Hawks, also located in North Dakota. However the timing certainly is suspicious. After all, the Iowa Hawkeyes have gone undefeated in football this year and are currently slated to be one of the four teams in the College Football Playoff (FYI: in addition to typing, I am also presently knocking on wood and throwing salt over my shoulder). And did I mention that Iowa just set the record for attendance at a wrestling meet, while knocking off the top ranked team in the country? Or that the Hawks are also on the cover of Sports Illustrated. Sure, it’s only a regional  cover, but do you know what state is included in that region? North Dakota.

Look UND, I can see why you would like to ride the coattails of Iowa’s popularity and success. You’re not the only one, either. The University of Southern Mississippi tried to capitalize on the iconic Iowa Hawkeye tiger hawk logo. It even led to an opposition at the Trademark Trial and Appeal Board (If you’re curious, Iowa is undefeated there, too). Heck, the fame of the Iowa Hawkeyes extends beyond the shores of the U.S.: even international pop groups use the Hawks to improve their image.

Perhaps though, in the spirit of the holidays, we can let this one slide. So for now, Happy Thanksgiving – and Go Hawks!

— Jessica Gutierrez Alm, Attorney

TJ Root/Getty Images

 

In appealing the cancellation of six trademarks, the Washington Redskins filed their opening brief in the Fourth Circuit this week.  Cancellation of the team’s REDSKINS trademarks was upheld by a federal district court in July.  The marks were deemed “disparaging” under Section 2(a) of the Lanham Act, which denies trademark protection to marks that are scandalous or disparaging.

The team is now appealing the district court’s decision.  A primary argument presented in the team’s opening appeal brief is the First Amendment argument.  Essentially, the Washington team argues that cancellation of its trademarks under Section 2(a) violates free speech rights, because the marks are a form of expressive speech.  Of course even without a federal trademark registration, a mark may still be used.  The team can still call themselves the Redskins and sell Redskins merchandise, but cancellation of the marks means they will not enjoy the protections and benefits that accompany federal registration.  The team argues that by denying those protections and benefits of the federal trademark registration, the government is infringing on the team’s free speech rights.

The lower court held that Section 2(a) does not violate the First Amendment, in part, because federal registration of a trademark represents a form of government speech, rather than private speech.  That is, the government may freely choose which marks it wishes to include as part of its federal trademark registration program.

In an effort to thwart this argument and show that federal trademark registration is not a form of government speech, the Washington team made the bold choice to include in its brief a long list of—colorful—marks that have been successfully registered.  The list seems primarily compiled from the adult entertainment industry, and includes, among many, many others, TAKE YO PANTIES OFF clothing, SLUTSSEEKER dating services, and MILFSDOPORN.COM pornography.  A footnote in the brief actually states that “word limits” prevented the team from adding even more to their offending list.

While the purported purpose was to address whether trademark registration represents government speech, the sheer length of the list leaves the distinct impression of an underlying argument: Well if these dirty words can be trademarked, why can’t we just trademark our team name?

At first blush, it may seem like a fair argument.  As presented in the brief, the list of clearly offensive marks makes one wonder why these too were not cancelled or denied registration.

One reason may be that potentially scandalous and disparaging marks are viewed in the context of the goods or services and the market with which they will be associated.  Consider that the goods and market of the porn industry are very different than the goods and market of an NFL team.  MILFSDOPORN.COM may not be scandalous or disparaging in the context of providing adult entertainment.

Another reason may be that most of the unsavory marks listed in the team’s brief are unlikely “disparaging,” and would more likely fall into the “scandalous” category of Section 2(a).  Section 2(a) excludes from registration marks that are scandalous and marks that are disparaging.  The test for scandalous marks is different from that for disparaging marks.

Disparagement relates to a particular person or group.  Some marks that have been denied as disparaging are HEEB and SQUAW for clothing.  To determine whether a mark is disparaging, the test looks to whether a substantial composite of the group referenced by the potentially disparaging mark would find the mark disparaging in the context of the particular goods or services.

In contrast, potentially scandalous marks are viewed with respect to the broader public’s opinions.  Marks such as COCAINE for soft drinks have been denied registration as scandalous.  The test for determining whether a mark is scandalous looks to whether a substantial composite of the general public would find the mark scandalous in the context of the particular goods or services.  Each test looks to a group of people to determine whether something is offensive, but the scandalous test looks to a larger and broader group, the general public.

TAKE YO PANTIES OFF, SLUTSSEEKER, MILFSDOPORN.COM, and many others on the team’s list would seem to fall under the more general “scandalous” category, because the terms do not seem to target a particular person or group in the way that a mark like REDSKINS does.  (Surely MILFS are not an identifiable group.)  Given that the scandalous test looks to the broad opinions of general public, rather than of a particular group, it may be an easier task to register a potentially scandalous mark than a potentially disparaging mark.  Just ask The Slants.

Remember a while back when many were humming to the tune “What Does the Fox Say“?

Today, I’m asking, what does the trademark registration say? Not, what does the trademark say — that is a different and more complicated question, depending on the specific mark, but at a minimum, answering that question involves the meaning and attributes of the underlying brand.

The trademark registration — as opposed to the trademark itself — is a piece of paper issued by the federal government with its literal and figurative signatures and fingerprints all over it.

There is no question that a trademark communicates information about an underlying brand, but the Certificate of Registration communicates something quite different — the piece of heavy stock paper with the words in fancy script “United States of America” and “United States Patent and Trademark Office,” across the top, and the golden Official Seal of the USPTO (including a reference to the Department of Commerce) located in the lower left hand corner of the Certificate of Registration, also appearing above the signature of the Director of the USPTO (who is also Under Secretary of Commerce for Intellectual Property), an employee of the federal government and principal advisor to the President of the United States — what this valuable piece of paper communicates is an official act of the federal government that it has examined and approved the trademark for federal registration and exclusive protection in United States commerce.

By way of example, in all its glory, remember this little gem from the archives:

DuetsBlogRegistration

Although the USPTO certainly got it right with our registration, there are times when the USPTO makes a mistake and is asked later to correct it. The United States District Court for the Eastern District of Virginia recently corrected the USPTO errors from decades ago in improperly issuing federal registrations for a racial slur, in violation of Section 2(a) of the Lanham Act. So, as we know from the Washington football NFL franchise’s continued fight to keep the R-Word, the USPTO hasn’t always gotten it right from the outset, and since we’re talking about important matters of public policy here, Congress determined long ago that there is no statute of limitations on getting it right, petitions to cancel on these public policy grounds can be brought “at any time.”

So, when the issuance of a trademark registration would violate public policy, on disparagement, deceptiveness, or other public policy grounds, under current law, the federal government (i.e., The United States Patent and Trademark Office, part of the United States Department of Commerce) is required to refuse registration under Section 2(a) of the Lanham Act. Issuing a Certificate of Registration is the federal government saying, the trademark in question, doesn’t violate any of these statutory bars. And, when the statutory bars are violated, the federal government must refuse registration on Section 2(a) grounds, yet the trademark applicant is free to continue using the trademark in commerce, the right to use is not negated.

As you will recall, some are working hard to have the disparagement bar on federal registration of trademarks found unconstitutional on First Amendment grounds, contending that revoking the government-issued trademark registrations chills their freedom of speech. Those arguments failed in the Eastern District of Virginia, so let’s all stay tuned for how the Court of Appeals for the Fourth Circuit handles them, as it reviews the Eastern District of Virginia decision, and let’s all stay tuned for when the same arguments are made in another case involving another racial slur involving Asian Americans, before the Court of Appeals for the Federal Circuit later this year.

In the end, because the federal government’s act of registration and issuance of a Certificate of Registration, communicates the federal government’s approval of the trademark as being suitable and appropriate for federal registration and protection, the trademark registrations in question involve no speech by the trademark owner, the valuable pieces of paper are purely and 100% governmental speech, taking them outside First Amendment scrutiny. I’m thinking that efforts to conflate the communicative value of a trademark and underlying brand (admittedly the trademark owner’s speech) with the trademark registration itself (the government’s speech about the trademark) will prove unsuccessful.

What do you think?

Last week the NFL franchise that plays football near — but not in — our Nation’s Capital, was dealt another significant legal and public relations blow that would have any rational brand owner working overtime on its re-branding efforts.

Professor Christine Haight Farley, at American University’s Washington College of Law, summarizes the Amanda Blackhorse decision here. And, our friend John Welch over at the TTABlog describes it as an “impressive opinion by Judge Lee” of the Eastern District of Virginia.

The timing couldn’t have been better, given the topic of discussion this past weekend at the 2015 National Native Media Conference in Washington, D.C. on “Race, Journalism and Sports: The Dilemma of the Washington NFL Team Name.”

It was an honor to share the panel table with such an amazing and impressive group to discuss this important topic, including Presidential Medal of Freedom recipient Suzan Shown Harjo (President of The Morningstar Institute), award-winning journalist Tristan Ahtone, Christine Brennan (Sports Columnist at USA Today), Mark Memmott (Supervising Senior Editor, Standards & Practices at NPR), and Professor of Law Christine Haight Farley (American University, Washington College of Law).

Keith Woods, NPR’s VP for Diversity in News and Operations, did a fabulous job of moderating the lively panel discussion and questions from those in attendance. After the ninety minute panel discussion with Q&A, Mr. Woods incite-fully concluded, noting the team’s actual name — a recognized racial slur — had only been said twice, yet it wasn’t difficult to avoid using it, and in doing so, no meaning was lost in the process. So, let’s all just stop using it.

From the legal perspective in Blackhorse, once the team has exhausted appeals, and the decisions to cancel the federal registrations containing the racial slur have been affirmed, the team will no longer be able to use the federal registration symbol — ® — because the revocation of the federal government’s previous and improper imprimatur and approval of it will be final.

Another consequence, among others, will be that the federal registrations containing the racial slur, currently recorded with U.S. Customs and Border Protection, for the purpose of preventing counterfeits from entering the country, will be a nullity and removed from recordation.

My question, why aren’t they a nullity already? The two registrations that purport to protect the racial slur, are service mark registrations, not trademark registrations — they only cover entertainment services, no clothing, no merchandise.

In addition, the team currently has no federal registrations that include the racial slur — for any products, goods, or merchandise — that it could record with U.S. Customs as a trademark. In any event, isn’t Dan Snyder more concerned about counterfeit clothing and trinkets than counterfeit entertainment services, even assuming there could be such a thing.

So, did U.S. Customs and Border Protection drop the ball when they recorded the team’s service mark registrations, when they were improperly designated as trademark registrations? Anyone aware of the process of removing improper recordations?

So, how helpful can U.S. Customs personnel be to Dan Snyder and his team, in this very moment, when he has nothing helpful containing the slur recorded with Customs, and he can’t get any, while he continues to kick the can down the road, by exhausting all appeals in this case?

Yet another consequence of losing the R-Word registrations he does have will be for the USPTO to stop doing the team’s bidding by refusing registration of another’s application on the ground of likelihood of confusion for recent marks like “Washington Redskin Potatoes.”

Lanny, given all this, will Dan Snyder ever go lower case on his promise to never change the name?

And I mean that literally.

We’ve laid down a lot of digital ink in the past about pejorative marks – lately in reference to the Redskins (at least here, here, and here) and  The Slants (here and here), both of which have been deemed disparaging enough to deny them a federal trademark registration.  We’ve even addressed some sexism in branding.  And I’m about to lay down a little more such ink.

I once saw a sign at my high school, which is attached to a convent, that said basically “tweet and post as if you were talking to one of the Sisters,” so I’m going to do my best to adhere to that with the topic at hand.

The topic is the word “bitch” in trademarks.

It’s a word that, by long-standing definition, refers to a female dog.  It also, of course, has been used as a pejorative term against women.   However, it also can characterize a strong, assertive woman.

In March, Flying Dog Brewery of Virginia won a long and hard fought First Amendment battle over the trademark RAGING BITCH in the state of Michigan.  The state of Michigan’s liquor commission had banned their beer labeled RAGING BITCH on the basis that the name was sexist and offensive, and Flying Dog tried to recoup lost profits because of the ban.  The Sixth Circuit ruled that the liquor commission had violated Flying Dog’s First Amendment rights and that the liquor commission should have been on notice that “banning a beer label for vulgarity violates the First Amendment” based on Bad Frog Brewery, Inc. v. N.Y. State Liquor Auth., 134 F.3d 87 (2d Cir. 1998) and remanded it to the district court (the parties then settled).

raging-bitch-label

The imagery clearly refers to a female dog.

The interesting part about this case is that Flying Dog owns an active federal trademark registration for the mark RAGING BITCH for beer (and incidentally, I’ve tried it and it’s quite a good beer).  For those unfamiliar with the nuances of brewery law, if a brewery wishes to sell their product in another state, they have to obtain a COLA (certificate of label approval) from the federal government’s TTB.  In addition, they often undergo specific licensing procedures within the relevant state, which is where the Michigan Liquor Control Commission balked at sales of the product due to the name.  Here, although they had an approved federal trademark registration which requires use in interstate commerce (and  a COLA license), they were impeded by the local authority in one state.

Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs or national symbols. TMEP 1203.03(c).  To be disparaging, it must be shown (1) that the communication reasonably would be understood as referring to the plaintiff; and (2) that the communication is disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities. Id.

During some Wild-Blackhawks playoff intermissions, a question was posed to me:  why is Blackhawks OK but the Fighting Illini are not?  One refers to a revered leader of the Sauk and Fox Indians while the other to a made-up chief, Chief Illiniwek.  Seemingly, it’s a matter of connotation – a Redskin with a potato mascot may be acceptable under Section 2(a) if it is not understood to be referring to an Indian tribe plaintiff.

And in general, is society too offensive or too easily offended?  Or, even in such a politically correct society, are we not offended often enough?

What’s the first thing that comes to mind when I refer you to “the Slants?”  Is it a non-perpendicular or horizontal line?  Is it the news coverage of MSNBC or Fox News?  Is it a derogatory term for Asians?  Or, perhaps its “the first all-Asian American dance rock band in the world” whose efforts to trademark their band name, “The Slants,” were denied trademark registration under 15 U.S.C. 1052(a), which precludes the registration of consisting of or comprising “immoral, deceptive, or scandalous matter.”

This was certainly not the first registration rejected on the “immoral” or “scandalous” subject matter bar, and its unlikely to be the last.  Those of you following trademark news have probably heard of the disputes surrounding the Washington Redskins, which DuetsBlog has previously discussed.  (See list here.)  However, while upholding the rejection of “The Slants” registration, one of the Judges on the Federal Circuit panel opined perhaps more strongly than ever before that there are real First Amendment problems with 1052(a)’s prohibitions.

Judge Kimberly Moore penned a lengthy “additional views” opinion nearly twice as long as the opinion affirming the rejection.  She made a compelling case that 1052(a) is unconstitutional at least as to the “immoral” or “scandalous” prongs and suggested the Federal Circuit revisit its precedent regarding the constitutionality of those provisions.  I encourage anyone interested in the topic to read the opinion, as I will not do it justice here.

There are certainly rational arguments to be made on both sides of this issue.  I, however, lean towards finding the provision unconstitutional, particularly as applied to the group  “The Slants,” who have adopted the name to “take ownership” of anti-Asian stereotypes.  The simple fact is that it becomes exceedingly difficult to make consistent and reasonable conclusions on the “immorality” of any marks.  Moreover, the entire purpose of the First Amendment is to allow ideas (no matter how offensive the may be) exposure to the “marketplace of ideas” so they can be rejected or accepted by society as a whole.  If we do not allow society to be exposed, then we’ve lost faith in the ideal that gave rise to the First Amendment in the first place, and we’ve simply engaged in censorship.

Breaking Update:  Just this morning, the Federal Circuit issued a sua sponte order vacating its prior decision and ordering the parties to brief for en banc review the question: “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?”  This could mean that the Federal Circuit is inclined to hold the “disparaging marks bar” is unconstitutional.  However, it could also be that the Court wants to eliminate any doubts about the law caused by Judge Moore’s lengthy “additional views” opinion.  In either event, this is likely to be a very important ruling on trademark registration that could have a very significant impact in the near future.