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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

He went on to say:

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

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

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

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

As the drum roll proceeds to the upcoming Midwest IP Institute in Minneapolis and sharing the podium with Joel MacMull of the Archer firm (and Simon Tam fame) on Thursday September 28, in a few days, I’ll be making a stop south of the border, at the University of Iowa College of Law, where it all started for me in the law, to share some thoughts on this topic with the Iowa Intellectual Property Law Society on Friday September 15, here are the details to attend.

In the meantime, here is my second installment on the important topic of Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II.

I’ll call it part of a continued, controlled Tam catharsis, with more food for thought and discussion of where the law is heading, especially with forthcoming Part III, exploring the implications of the Supreme Court’s Tam decision, especially the future of federal trademark dilution law.

As you may recall, Part I questioned the Supreme Court’s characterization of Section 2(a) as banning speech and the Court’s conflation of the federal government’s issuance of a trademark registration (and corresponding meaning of the resulting Certificate of Registration, issued in the name of “The United States of America,” and corresponding meaning of the federal registration symbol — ® — which cannot be used lawfully unless granted federal registration unlike © and ™) with the meaning of the underlying trademark subject matter sought to be registered.

As it turns out, the learned Professor Christine Haight Farley of American University Washington College of Law similarly recognized: “A broader critique is that the [Tam] court seems often to be speaking of trademarks when the issue before it is limited to the registration of trademarks.”

With Part II, while admittedly not having all the answers, I thought it might be productive to ask some probing questions about the Court’s decision to provoke further discussion and guidance:

  • Why didn’t the Tam Court acknowledge that the normal and historical operation of trademark law actually facilitates the complete suppression of certain speech, perhaps justifying special treatment and a unique approach from its typical First Amendment and Free Speech cases?
  • Why didn’t the Tam Court acknowledge the material difference in kind struck by Congress between denying registration on the one hand and enjoining and/or punishing trademark use on the other hand, as only the latter truly qualifies as a ban on speech?
  • Why didn’t the Tam Court acknowledge that our entire federal trademark law flows from the U.S. Constitution too? In particular, the Commerce Clause (Article I, Section 8, Clause 3), granting Congress the power: “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.”
  • Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?
  • Did the Tam Court gloss over the language in Walker v. Texas Division, Sons of Confederate Veterans, Inc., noting “government statements (and government actions and programs that take the form of speech) do not normally trigger the First Amendment rules designed to protect the marketplace of ideas”?
  • Why did the Tam Court not feel compelled to explain how and why the government actions of approving or disapproving marks for registration somehow does not take the form of speech?
  • Was it disingenuous for the Tam Court to say “trademarks are private, not government speech,” when it was apparently unwilling to specifically and directly say that the government’s act of registering a trademark, issuing a Certificate of Registration (in “the name of the United State of America”), and placing a trademark on the Principal Register, is not government speech?
  • Isn’t the proper comparison in Walker and Tam, the state government’s direct control over specialty license plates and the federal government’s direct control over Certificates of Registration and the Principal Register, so isn’t it a red herring to emphasize that the federal government doesn’t “dream up” the applied-for marks, since Texas didn’t “dream up” the multitude of specialty license plate designs either?
  • Doesn’t the federal government, through the USPTO, edit, modify, and amend applied-for marks (through required disclaimers, description of goods/services changes, description of the mark changes, and drawing changes, etc.), at times, to place them in proper condition for approval, making the Tam Court’s attempt at distinguishing Walker v. Texas less compelling?
  • Why was the Tam Court more willing to limit Walker v. Texas to its facts than upholding the disparagement bar in Tam as facially constitutional, and then limiting Tam to its facts, in the unlikely event the hypothetical concern of Congress attempting to amend the Copyright Act to refuse similar matter ever would arise in the future?
  • In other words, why was the Tam Court so willing to embrace the hypothetical concerns of the false Copyright comparison with a multitude of ways to fairly distinguish from trademark?
  • As to the concern of chilling speech by denying federal registration, isn’t it telling that during the entire more than 100 year history of federal registration in the U.S., only some 5 million federal registrations have issued, which most certainly is a drop in the bucket to the number of eligible unregistered marks in use throughout the same period of time?
  • The Tam Court relied, in part, upon a perceived “haphazard record of enforcement” of the disparagement bar, how difficult would it be to develop evidence showing a similar “haphazard record” in applying other statutory bars found in federal trademark law?
  • How can the Tam Court actually resist saying that trademarks are a form of commercial speech, when it previously held in Friedman v. Rogers that the use of trade names “is a form of commercial speech”?
  • Why didn’t the Tam Court ever once mention “public policy” or the “unconstitutional conditions” doctrine in its decision?
  • Did the Tam Court focus its sights on “viewpoint” as a way to avoid implicating too many other content based restrictions in the Lanham Act as becoming vulnerable to First Amendment challenges?

Stay tuned for Part III, as the Tam Court’s focus on “viewpoint” is the likely key to unlocking what additional portions of federal trademark law are vulnerable to future First Amendment challenges.

Over the weekend, IPBiz reported that WWE (World Wrestling Entertainment) has filed an application to register 3:16 as a trademark for clothing items.

A Google search confirms that 3:16 has religious significance as it is a common truncation that signifies one of the most widely quoted verses from the Bible, namely, John 3:16.

Despite other confusing media reports that the WWE has “trademarked” 3:16, IPBiz is correct that an intent to use trademark application was filed by WWE at the end of July.

While I could hazard a guess, technically it is presently uncertain whether WWE intends a religious meaning, at least from the application file, as no specimen of use is of record yet.

Ironically, our firm’s firewall leaves me to hazard a guess on WWE’s intended meaning too.

Yes, our sturdy firewall has deemed anything appearing on the WWE website to be “unsafe or unsuitable” for access, so we may need the kind assistance of our dear readers to assist in our understanding of the meaning intended by the WWE for this claimed mark.

Either way, it will be interesting to follow the USPTO’s examination of this application, given the newly minted Examination Guide 2-17 on “Merely Informational Matter,” which directly targets religious matter, among other matter (citations omitted from below quote):

Some proposed marks comprise direct quotations, passages, or citations from religious texts (e.g., JOHN 3:16 and I AM THE WAY, AND THE TRUTH, AND THE LIFE. NO ONE COMES TO THE FATHER EXCEPT THROUGH ME).  Religious texts are holy books or scriptures, such as the Bible, Quran, Torah, and Diamond Sutra, which the different religions or spiritual movements consider sacred or essential to their religious traditions and beliefs. Such quotations, passages, or citations are often used by the providers of goods/services (and by consumers) as an expression of affiliation with, support for, or endorsement of the ideals or concepts found in the religious texts in which the quotation, passage, or citation originated. Because consumers are accustomed to seeing such wording used in this manner in the marketplace, consumers are unlikely to perceive it as indicating source and instead would perceive the wording as conveying a merely informational message of religious affiliation, endorsement, or support for the messages in the texts.

Where a quotation, passage, or citation from a religious text serves as an indicator of support or affiliation and not of source, such wording fails to function as a mark.  The refusal applies regardless of whether the identified goods/services themselves are religious in nature.  However, the inclusion of religious goods/services further supports this refusal.  The following examples illustrate this point:

  • Mark is comprised, in its entirety, of a direct quotation/passage and/or citation from a religious text (e.g., Allah is the Light of the heavens and the earth The Qur’an, Surah An-Nur 24:35; I AM THE WAY, AND THE TRUTH AND THE LIGHT.  NO ONE COMES TO THE FATHER EXCEPT THROUGH ME; or MATTHEW 19:26).  The entire mark must be refused registration because the matter fails to function as a mark.

  • Mark is comprised, in part, of a direct quotation/passage and/or citation from a religious text and registrable matter (e.g., Hear, O Israel: The Lord is our God; the Lord is one and the image of the Earth being held in a pair of hands; ROMANS 8:28 and an image of a teddy bear).  The direct quotation/passage and/or citation must be disclaimed because they fail to function as marks.

Do you think the WWE will be wrestling with USPTO over the meaning of 3:16 soon?

If so, how might the USPTO explain the issuance of these registrations: 3:16, Studio 3:16, and 3:16 Lure Co?

And, finally, might the newly minted examination guide conflict with the recent Supreme Court decision in Tam, holding that the USPTO’s refusal of federal trademark registration based on viewpoint violates Freedom of Speech?

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?

Debbie Laskey, MBA

By the time you read this post, hopefully the buzz surrounding Miley Cyrus and the Video Music Awards show will have evaporated into thin air. But there was another related story surrounding the event that generated a ton of buzz on Twitter.

On the day after the awards show, an editorial appeared on the The Onion’s website featuring the photo, name, and title of the managing editor of CNN.com. Yes, you read that correctly. Despite some inappropriate language that did not seem fitting for the managing editor’s position, it appeared that the post had been written by the person stated.

But later that afternoon, Meredith Artley, Managing Editor of CNN.com posted on Twitter:

August 26 – 2:46pm:

To clarify, I did not write this.  But I accept all compliments and deny all accusations. Tx for the page views.

August 26 – 3:01pm:

@socialnerdia @TheOnion I’m reading it as more of a joke than something to call the legal team about.

However, many readers were misled. The editorial could easily have been written by the Managing Editor of CNN.com because her name, photo, and title were prominently displayed at the top of the page. The content was detailed enough to understand the nuances of the CNN website, despite some unprofessional word choices.

But at the end of the day, what recourse did Ms. Artley have? Sure, the CNN legal team could have sued The Onion for defamation of character for both herself and the news site. But, would that have been the best use of financial resources for CNN? Would that have looked bad for CNN? Would there have been a conflict of interest if one journalism entity sues another for freedom of speech? And how many celebrities do you know who have sued the tabloids for defamation? Most lawsuits are long and drawn out, difficult to prove and even harder to win, and let’s not forget, very expensive. There have been famous defamation lawsuits filed by Carol Burnett, Kate Winslet, James Franco, Tom Cruise, Katie Holmes, and Oprah.

But, let’s consider the little guy – you and me. What would we do if a similar situation happened to us? How can we make sure that someone out there in Internet-land doesn’t assume our identities and upload inappropriate posts with our names?

Do we need some form of biometrics to upload content to the Internet? Is that the wave of the future to protect against these types of situations? What do you think?