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.

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.

Today marks the 25th anniversary of the filing of the petition to cancel the R-Word registrations held by Pro-Football, Inc., the NFL franchise playing near the Nation’s capital.

Indian Country Today has published an interview with Suzan Shown Harjo, lead petitioner in Harjo et al v. Pro-Football, Inc., and organizer of Blackhorse et al v. Pro-Football, Inc.

Thanks to Indian Country Today and Suzan Shown Harjo for sharing this interview. Its documentation of history is so important for anyone who cares where we’ve been as a country and where we’re headed; it is valuable and timeless, powerful and compelling.

I’m so thankful to Suzan for the opportunity to play a small part in this long yet unfinished history, and here is a photo of us together on May 15, 2015, at a conference in Hinckley, Minnesota, during a celebration honoring her lifetime of advocacy for Native peoples:

Suzan’s heretofore and ongoing work is truly remarkable and a testament to who she is, even in the face of ignorant vitriol, and to how many lives she has touched and continues to touch in such a profound, generous, and meaningful way.

As I reflect on the historic petition to cancel we filed together on September 10, 1992, one thing I can’t get out of my mind is the national press conference question I answered from the Washington D.C. press corps, something like “what about the First Amendment?”

As I recall, my response was, something like, the beauty of this cause of action is that the First Amendment is not implicated because removing the federal government’s erroneous approval of the racial slur doesn’t compel the team to change the name, having said that, it is of course our hope that the team does the right thing and pick another name.

Who could have guessed it would take nearly a quarter century to reverse prior court of appeals precedent (McGinley) saying Section 2(a) did not violate Free Speech or the First Amendment, and then to have the Supreme Court agree that refusing federal registration of disparaging matter under Section 2(a) of the Lanham Act is viewpoint discrimination and a violation of Free Speech.

Thankfully much awareness has been raised and good has been done over the past quarter century, while the NFL and Washington franchise double down together on their joint investment to retain exclusive rights in a racial slur.

Hopefully with increased awareness raised and the movement and pressure continuing, we won’t have to wait another quarter century for justice and clearer thinking on this issue by the NFL, FEDEX, and other NFL sponsors, if not Daniel Snyder himself.

As I reflect back a quarter century ago, to the day, it was never about banning the team’s Freedom of Speech, it was about removing the federal government’s approval of a racial slur as a federally-registered trademark, and providing team ownership with a financial incentive to reconsider their choice to ignore the obvious, as Suzan has noted:

“We liked the approach of a pocketbook incentive case that did not force a name-change, but counted on the greed of the team owner to drop the name if exclusive federal trademarks were cancelled.”

“The pocketbook approach put things squarely where pro sports differed from educational sports: money. In most name and symbol changes made in educational sports, we had a way of discussing the issues and solutions, because there almost always were educators and officials who genuinely cared about the well-being of the students. In pro sports, even the health and safety issues seemed focused on liability and not on human beings, and some paid fans seemed physically provocative, while others seemed orchestrated online to attack and defame those of us who were challenging the NFL franchise in orderly legal forums.”

“Another reason I liked the pocketbook approach was that it didn’t impede anyone’s free speech. I was at WBAI-FM  in 1973, when the “seven dirty words” case started down the road to the Supreme Court’s 1978 ruling against free speech. The free speech flagship station of the Pacifica network, WBAI aired a cut from Comedian George Carlin’s “Class Clown” album and a listener complained to the Federal Communications Commission that his young son was wrongly exposed to dirty words. George Carlin’s “Seven Words You Can Never Say on Television” was based on an earlier routine by Comedian Lenny Bruce that was an excuse for one of his many arrests and jailings for using dirty words. The upshot of FCC v. Pacifica Foundation was that the federal government can restrict free speech in certain instances, the opposite of the Court’s 2017 ruling in The Slants case against the PTO, which rendered part of the trademark law unconstitutional as violative of the First Amendment. We never thought we were violating the NFL’s freedom of expression by using the same section of the trademark law.”

Ironically, as team owner Daniel Synder freely and proudly admits, the team’s ability and commitment to continue using the name will never change, even in the face of the mountain of evidence demonstrating its offensiveness and meaning as a racial slur, and even in the face of losing on the merits three times (twice at the TTAB, once at the E.D. Va.), or more.

So much for the Supreme Court’s concern that Section 2(a) actually chills Freedom of Speech, because according to Snyder, even after losing on the merits he has reaffirmed: “We will never change the name of the team,” “It’s that simple. NEVER — you can use caps.”

So, in the end, it is about the money, and the NFL clearly has had sufficient funds to defend the indefensible for a quarter century now, so isn’t it time FEDEX and other NFL sponsors step up and get on the right side of this issue, with their money? Let’s all follow the money.

Here’s to you Suzan, be well, Aho.

Daniel Snyder, NFL owners, FEDEX, and other NFL sponsors, take note, breaking news from courageous Neal M. Brown, Ed.D., Head of School, Green Acres School in Bethesda, Maryland, about twenty miles from FEDEX Field:

“[T]he term ‘Redskin’ is a racial slur. Its use, whether intentional or not, can be deeply insulting and offensive. It is a term that demeans a group of people. Similarly, the team’s logo also can reasonably be viewed as racially demeaning. At best, the image is an ethnic stereotype that promotes cultural misunderstanding; at worst, it is intensely derogatory.”

“As such, having students or staff members on campus wearing clothing with this name and/or this team logo feels profoundly at odds with our community’s mission and values. We pledge in our Diversity Statement to foster both ‘an inclusive and uplifting community’ and ‘a sense of belonging for everyone in the Green Acres community.’ Similarly, our Statement of Inclusion calls upon us to ‘welcome people of any race, national, or ancestral origin,’ among other social identifiers. Further, as our guidelines for ‘appropriate dress’ in the Community Handbook require students to ‘dress in ways that demonstrate respect for others,’ we cannot continue to allow children or staff members—however well intentioned—to wear clothing that disparages a race of people.”

“I ask that you please not send your children to school wearing clothing with either the team name or logo in the year and years to come. I will be speaking with students to share with them my decision and to enlist their understanding and support. Additionally, we invite you to reach out to us with any questions you may have about how to discuss this with your child.”

Again, not so fast, Mr. Snyder, the R-Word is looking awfully scandalous these days, and this issue isn’t going away . . . .

See coverage from USA Today, Washington Post, Washington Times, and Sports Illustrated.

UPDATE from Time: The NFL Needs to Stop Promoting a Racial Slur

Lee Corso (former coach and ESPN football analyst) frequently utters this famous sports media catchphrase on ESPN’s “College GameDay” program: “Not so fast, my friend!

The first three words of that phrase come to mind upon hearing that THRILLED Daniel Snyder (majority owner of the NFL football franchise nearest the Nation’s Capitol) is celebrating Simon Tam’s (and Tam’s talented lawyers’) recent victory at the Supreme Court.

Excluded are the last two words as inapplicable, as I’ve never met Mr. Snyder, so I can’t say he’s my friend, and if even a small fraction of what Rolling Stone says about him is true, friendship seems unlikely, unless of course, he engages the services of an expert to rebrand the franchise (without the racial slur), something I asked for eight years ago.

Yet, “not so fast,” as a week ago, the government filed a brief with the Court of Appeals for the Federal Circuit, asking the Federal Circuit to affirm the TTAB’s refusal to register FUCT based on the scandalous portion of Section 2(a) of the Lanham Act, despite Tam.

The Department of Justice further contends that the Supreme Court’s ruling in Tam does not implicate the First Amendment in terms of scandalous matter, because unlike the stricken disparagement portion of 2(a), the remaining scandalous portion is viewpoint neutral.

To the extent the Justice Department prevails and the current bar on registration of “scandalous” matter survives First Amendment scrutiny with the Federal Circuit’s review in the Brunetti case, this could impact Daniel Snyder’s currently suspended R-Word trademark applications (here, here, and here), and the NFL’s suspended Boston Redskins application.

While the decades-old R-Word registrations challenged in Harjo and Blackhorse appear safe from cancellation given the ruling in Tam, what stops others from opposing registration of any future R-Word applications (or any of the currently suspended applications, if published) as containing scandalous matter in violation of Section 2(a) of the Lanham Act?

If the scandalous bar to registration survives First Amendment scrutiny, opposers (unlike cancellation petitioners) would have the significant benefit of only needing to show (at the time of an opposition decision) that the current R-Word applications have scandalous matter.

It’s a question of the timing of proof necessary, in other words, no time machine would be required to determine how the relevant public perceived the R-Word marks back in the late 1960s when the first R-Word registration issued for the team; those would not be at issue.

It’s also a question of who comprises the relevant public. For disparaging matter, it was Native Americans. For scandalous matter, it would be the general public, although not necessarily a majority, but instead a “substantial composite of the general public.”

The Act’s present prohibition on the registration of scandalous matter reaches matter that is “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” Wouldn’t unambiguous racial slurs qualify for this treatment?

Who’s ready to carry the next, but new flame, if needed, to oppose registration of any R-Word applications that publish for opposition, contending that a substantial composite of the general public finds the applied-for marks “shocking” to their sense of propriety and/or “offensive” to their conscience?

Even those who fought hard to undue the disparagement provision of Section 2(a) for Simon Tam, see Daniel Snyder’s team name in a very different light, and let’s also say, not a very sympathetic light. And, the general public today is not the public from 50 years ago.

Finally, given the vast public attention and support this issue has received over the last quarter century, it would be more than interesting to see what kind of a record could be developed on the scandalous ground for registration refusal, today, and not decades ago.

So, not so fast, let’s see what happens to the scandalous portion of Section 2(a) in Brunetti, before allowing Daniel Snyder to celebrate Tam too strongly, my friends.

UPDATE: The NFL’s Boston Redskins trademark application has been removed from suspension, reports Erik Pelton, so, who will oppose if published, and why hasn’t the USPTO issued a new refusal on scandalous grounds yet?

Last week the NFL franchise that plays football nearbut 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?

Earlier this month, I noted Accenture’s words in publicly ending its relationship with Tiger Woods, having announced around December 13, 2009, that it would "immediately transition" to a new ad campaign, and then compared those words to the company’s actions in continuing to run the Tiger Woods airport ads even three weeks after their termination announcement. Right after Accenture’s announcement, Going Concern Blog asked "Who Will Replace Tiger Woods at Accenture?" They offered some possibilities, including Phil Mickelson, who is already tied to KPMG.

Accenture’s marketing team apparently spent some quality time at the zoo to come up with Tiger’s replacements, yes, that’s plural. A few days ago, in the Minneapolis airport, I saw Accenture’s answer to Going Concern’s question: Animals. Concourse G was sporting some brand new Accenture ads, one featuring an elephant balancing on a surfboard, with the tagline "Who says you can’t be big and nimble?," and another featuring some frogs hopping over one another with the tagline "Play quantum leapfrog." By the way, how nimble or quantum-oriented is a company that needs at least four weeks to have their words and actions begin to merge?

Putting aside the timing for a moment, you might ask, why animals? Clearly animal mascots and endorsers are a much safer option than human beings, for a variety of obvious reasons. Indeed, one Twitter user notes that using an elephant is "no risk." By the way, someone ought to remind Daniel Snyder of this if he ever has the wisdom to re-brand the Washington Redskins professional football team, as I have previously suggested.

Actually, the largest surprise during my experience in Concourse G, a few days ago, was seeing a lingering Accenture ad still featuring Tiger, now more than a month after Accenture’s promise of an immediate transition. The Tiger ad in question was of the thinker/doer variety, so a curious one to keep in circulation, as it appears Tiger is doing much more thinking than doing at the moment.

Given how long it has taken Accenture to "immediately transition" to new Tiger-free ads, given that it hasn’t yet successfully removed all Tiger ads from circulation, and given the damage it is believed that Tiger has caused to the Accenture brand, I’m left wondering whether companies plan for these kinds of endorsement-gone-wild contingencies as part of their crisis management planning. It would appear Accenture did not and was caught flat-footed, but who would have guessed, right? Nevertheless, Accenture’s unfortunate experience might be a good lesson to all those companies who closely link their reputation with endorsers or mascots outside of the animal kingdom. Perhaps having some pre-approved ads ready for emergencies would permit a nimbler and more quantum-like response when things go wrong.

With respect to the choice of animals, they certainly have served others well. For example, a clumsy white duck works for Aflac, and a little green reptile, seems to work pretty well for GEICO. To the extent either of those little guys offend, disgust, or embarrass anyone, at least Aflac and GEICO are in control of their words and actions, so any resulting damage is more easily considered a self-inflicted wound.