Last Friday, the Supreme Court decided it will hear the Brunetti case, and take a closer look at Section 2(a) of the Lanham Act, the portion forbidding federal registration of trademarks having matter that is scandalous or immoral.

So, it appears my big prediction for 2019 is pointing in the affirmative direction:

“In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.”

Now that the Court has decided to review Brunetti, it will be the one to decide whether the “scandalous” and “immoral” bars to registration violate the First Amendment, not the Court of Appeals for the Federal Circuit.

So, perhaps Chief Justice John Roberts was foreshadowing a review of Brunetti, when he was speaking in Minneapolis, and said: “Obviously, if any court finds an Act of Congress unconstitutional, we will take it . . . .

To piggyback on what I wrote back in October:

“There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).”

“If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued ‘in the name of the United States of America‘ — won’t be some uninteresting and ignored ‘nuance’ of trademark law to the justices.”

You may recall, I previously said this about the Federal Circuit’s overreach in Brunetti:

“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.”

I’m thinking the Court will decide that the Federal Circuit went too far in Brunetti, and it will find a way to retain the “scandalous” bar to federal registration, though I’m doubting the “immoral” bar will survive, so stay tuned.

What are your predictions dear readers?

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.

Over the weekend, the Star Tribune continued the growing drum beat of understandable excitement for Super Bowl LII, as it steadily approaches U.S. Bank Stadium in Minneapolis.

The article also plays the typical NFL-enabling drum beat of caution against local businesses that might see fit to fairly and truthfully reference the Super Bowl in some commercial manner:

“From the NFL’s viewpoint, if businesses use the terms or other trademarks, it could appear like it is an official part of the Super Bowl or its related events, said Dolores DiBella, one of the lead intellectual property attorneys for the NFL.”

Perhaps the NFL would like to live in a world where no business can use the words “Super Bowl” without paying a fee; that isn’t the world we live in, especially given the growing judicial drum beat and emphasis on Free Speech and the First Amendment in the trademark/copyright worlds.

Nowhere in the article is there any acknowledgement that the NFL has long been accused of behaving as a trademark bully and overreaching with its valuable intellectual property rights.

The legal test for trademark infringement (likelihood of confusion) is not shown when a use “could appear like it is an official part of the Super Bowl or its related events,” the mere possibility is simply not enough, the likelihood of confusion must be probable.

Nowhere in the article is there any mention of trademark fair use; classic or nominative fair use. Nowhere is there any mention of Free Speech or the First Amendment. Even, this kind.

And, for those wondering whether the Super Bowl trademark might be famous and deserving of dilution protection, let’s not forget, the future of trademark dilution law is in question.

So, while it is true that not uttering the words “Super Bowl” will help a business play it safe and avoid all the fire and fury of the NFL, for those who are properly advised and have insurance coverage for advertising injury, that would be a very big game worth watching (or playing) 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.

Looking forward to sharing the podium with Joel MacMull of the Archer firm (counsel for Simon Tam, where our friend Ron Coleman is a partner) to discuss “Trademark Registration and the First Amendment,” on September 28th at the Midwest IP Institute in Minneapolis.

As a drum roll leading up to that discussion, and since there is so much to digest in the recent Supreme Court decision in Tam, I thought I’d do a series of posts on the decision and its implications, beyond what I’ve already written.

In this first installment, my focus will be on critiquing (as a trademark type) the opinion of the Court, that is, the portion of the decision written by Justice Alito, to which all seven of the other Justices agreed (the ninth, Justice Gorsuch, did not participate in the decision).

In a nutshell, my principal problem with the Court’s opinion is that all eight Justices have conflated the federal government’s issuance of a Certificate of Registration with the underlying applied-for trademark. The Court ignored that the meaning of each is distinct.

The meaning of the underlying trademark is one thing, determined by how the relevant public perceives and understands the applied-for mark. As an aside, the Court seemed more interested in Mr. Tam’s intentions in using an admitted racial slur as a trademark.

Yet, the meaning of the Certificate of Registration is quite different. It signifies that the federal government has approved the applied-for trademark for registration and issued a federal registration “in the name of the United States of America.

It would be easier to accept and respect the decision of the Court had it acknowledged and attempted to explain why Congress is powerless under the Commerce Clause to regulate what the USPTO may issue “in the name of the United States of America.”

Perhaps the Court’s conflation in Tam should be no surprise, as a few years ago, the unanimous Supreme Court in B&B Hardware, essentially conflated the right to register a trademark with the right to use the trademark.

Another concerning aspect of the Court’s opinion is how it seriously overstated what was at issue in Tam. It held that in denying federal registration to a mark consisting of a racial slur, the disparagement clause of Section 2(a) of the Lanham Act “violates the Free Speech Clause of the First Amendment” because it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

To be clear, the only speech even potentially banned under Section 2(a) of the Lanham Act relates to forbidding the use of the federal registration symbol — ® — next to the racial slur, because that symbol may not be used, unless a Certificate of Registration has been issued for the mark in question.

To the extent the ® symbol constitutes speech at all, the symbol ought to be considered government speech (which is outside First Amendment scrutiny), since federal governmental approval is required in order to use it in commerce.

The Court missed the point when it stated the obvious: “Trademarks are private, not government speech.” The better and more relevant question would have asked whether the ® symbol is purely private speech. Seems obvious to me it’s not.

While the underlying trademark has a certain meaning and constitutes private speech, the federal government’s issuance of a Certificate of Registration and allowing the use of the ® symbol to signify this fact, cannot fairly be considered private speech. Instead, by definition, it connotes governmental approval.

On this point, the Court was unconvincing when it cited a 55-year old concurring opinion from the late Federal Circuit Judge Giles Rich for the proposition “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.”

In that case, Judge Rich claimed, at least in 1962: “The purchasing public knows no more about trademark registration than a man walking down the street in a strange city knows about legal title to the land and buildings he passes.”

In my experience, all sorts of folks know that the ® symbol cannot be used without first obtaining approval from the federal government. Goodness, Forbes writes about it, National Law Journal, admitted non-lawyers, and a multitude of others do too, including us.

Friends, what do you think, do the folks understand and appreciate that the ® symbol is special and cannot be used without first obtaining approval from the federal government?

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

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

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

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

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

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

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

Earlier this month the Southern District of New York granted the defendant’s Motion for Summary in Louis Vuitton Malletier, S.A. v. My Other Bag , Inc. The fashion giant had brought suit against a California company over its sales of a canvas tote bag that included an image that “evoked” Louis Vuitton’s classic handbag design. An image of the Defendant’s products is shown below and you can read more about the Motion for Summary Judgment here.

 

Fresh off their victory, the Defendant My Other Bag (“MOB”) filed a Motion for Attorney’s fees just last week. MOB claims that the facts of the case render it an “exceptional” case under the Lanham Act and therefore request an award of $398,821.

In its Memorandum, MOB acknowledges that the Second Circuit normally requires a showing of “bad faith” before awarding attorney fees. However, the Supreme Court’s ruling in Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014) rejected this interpretation of the term “exceptional,” instead finding that an exceptional case is merely one that stands out from others due to the relative merits of the claims or the litigation conduct of the parties. Although the case involved a claim of patent infringement, much of the language in the Patent Act mirrors the language of the Lanham Act and, as a result, courts regularly rely on decisions interpreting provisions of one act to interpret the other. Indeed, the Third, Fourth, and Sixth Circuits (and numerous district courts) have all recognized the applicability of Octane Fitness to requests for attorney fees under the Lanham Act.

Does MOB have a winning claim? MOB won on summary judgment on all three claims. That’s helpful, but does not mean that Louis Vuitton’s claims were weak enough to justify an award of attorney fees. Moreover, defenses of fair use or parody are particularly difficult to evaluate as courts frequently reach different conclusions on similar facts. In fact, Louis Vuitton successfully sued Hyundai Motor Co. in the same district under arguably less favorable facts (as MOB points out in its motion, though, Hyundai Motors undermined its own case with some poorly worded testimony).

Predictably, MOB also throws out the “bully” label.  This is by far the first time the label has been thrown at Louis Vuitton.  MOB argues that Louis Vuitton has pursued numerous “weak” claims, including a law school symposium’s use of the LV design on a promotional poster, a “Chewy Vuitton” dog toy, a Danish artist who placed a photograph of a child refugee holding a Louis Vuitton bag on a t-shirt (and then the painting of that photograph), other art exhibits, and the appearance of a character named “Lewis Vuitton” in the movie The Hangover II.  It certainly can’t help that Louis Vuitton appears to wear these tactics as a badge of honor, alleging in its own pleadings that it “actively and aggressively” enforces its trademark rights.

The chances of the court not adopting Octane Fitness are low, but the better question is whether the court considers the facts of the case to justify an award. It will also be interesting to see what consideration the court gives to Louis Vuitton’s perceived “bullying” tactics. When granting the Motion for Summary Judgment, the court did not seem particularly impressed with Louis Vuitton’s claims as it wondered whether the company “just cannot take a joke.” Maybe a $400,000 bill would be the perfect punchline.

Louis Vuitton is no stranger to trademark disputes. As a a manufacturer of handbags, wallets, and other luxury goods, the company has its hands full just addressing counterfeit products. However, like any other company, there is concern not just with “fakes,” but other products and services that may otherwise infringe or dilute Louis Vuitton’s trademark rights (anyone hungry for luxury waffles?). The company takes an admittedly “aggressive” approach to enforcement, sometimes resulting in criticism. For example, Louis Vuitton created controversy in the legal world with a cease and desist letter to a law school over a fashion law symposium flyer that riffed off of the LV handbag motif. While Louis Vuitton has won many legal battles, it has also lost  a few, too. Last week, the Southern District of New York added another tally to the loss column, granting summary judgment to the defendant, My Other Bag, Inc. (“MOB”) (decision available here).

Louis Vuitton sued MOB in 2014. MOB created a line of canvas tote bags that sell in the range of $30 – $55. The founder of the company provides an origin story for the brand on its website:

One fine day in sunny Los Angeles, California a designer handbag junkie found herself walking out of a grocery store with an arm full of perishables and a burning question: “if I don’t want to stuff my produce in my Prada, where can I find a stylish, Eco-conscious reusable bag?” Underwhelmed with her options, she took it upon herself to create My Other Bag: a line of Eco-friendly, sustainable tote bags playfully parodying the designer bags we love, but practical enough for everyday life.

On one side of the canvas tote bag appears the phrase “My other bag…” and on the other side appears a cartoon of a luxury handbag (with some changes to the shapes, and replacement of the LV with MOB). The bag that formed the basis for this suit is shown below (and is still up for sale on MOB’s website):

MOB Image

Louis Vuitton sued MOB, alleging trademark infringement, trademark dilution, false designation of origin, and copyright infringement. MOB moved for summary judgment on all counts, claiming that MOB’s use of an image that invoked the Louis Vuitton design was a parody and therefore a fair use.

A claim of “parody” is not a defense in and of itself, but generally qualifies as a type of fair use for copyright infringement and for claims of dilution. Section 43(c)(3) of the Lanham Act also specifically identifies “fair use” to include uses that are “parodying, criticizing, or commenting upon [a] famous mark.” With regard to trademark infringement, while there isn’t a strict “parody as fair use” defense, courts generally rely on the “defense” as a means of concluding that consumers are not likely to be confused. Defendants and applicants frequently claim that their reference to a famous mark qualifies as a fair use, with mixed results (for example, here, here, and here).

One decision frequently cited by courts to evaluate a parody defense involves a familiar name , Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). In Haute Diggity Dog, the Fourth Circuit affirmed a finding that a pet toy manufacturer’s use of CHEWY VUITTON in connection pet chew toys constituted a parody that did not infringe Luis Vuitton’s trademark rights. That decision, and the court here, identified a parody as a work that (1) references the original/famous brand, (2) but makes clear that the work is not the original/famous brand, and (3) communicates some articulable element of satire, ridicule, joking, or amusement.

Here, the court had no trouble concluding that MOB’s bags constituted a parody. The tote clearly referenced the Louis Vuitton product through the similar design. However, MOB’s bag made clear that the bag was not a Louis Vuitton bag. As the judge noted, “the whole point is to play on the well-known “my other car . . .” joke by playfully suggesting that the carriers’ “other bag” – that is, not the bag that he or she is carrying – is a Louis Vuitton bag.”

Louis Vuitton argued that MOB’s bags  do not criticize or disparage the Louis Vuitton brand and therefore cannot be a parody. Louis Vuitton relied upon an unpublished decision in which Louis Vuitton successfully defeated a parody claim asserted by Hyundai Motor for its use of a similar design motif on a basketball in a car commercial. In that case, Louis Vuitton elicited testimony from Hyundai Motor in which it admitted that Hyundai did not intend to criticize or make fun of Louis Vuitton. The court distinguished that case (and noted that it would have declined to follow the decision any way), concluding that even vague critiques or general commentary can be sufficient to establish a parody.

In the end, the court granted summary judgment to MOB on all of its claims. The successful parody defense defeated Louis Vuitton’s claims of copyright infringement and dilution. With regard to trademark infringement, the court concluded that the parties’ products targeted different customers, were not competitive, that the purchasers of Louis Vuitton bags were sophisticated, the channels of trade distinct, and that there was a lack of any actual confusion. In summarizing the factors, the court reasoned that the “purchasing public must be credited with at least a modicum of intelligence” and concluded that the joke was so “obvious” that there could be no mistake as to source or affiliation.

This decision demonstrates the subjective nature of evaluating parody and fair use defenses. Two courts in the same district with very similar facts reached completely opposite conclusions. At first glance, I would have expected a two second clip of a basketball with a similar design in a car commercial to have a stronger argument for a parody defense than a canvas tote bag displaying a similar design (that is actually being sold). Stay tuned for coverage of any appeal, but for now, it looks like the score is Louis Vuitton 1 : Parody 2.

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.