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?

It’s not every day you’re presented with the unique opportunity of seeing and hearing the Chief Justice of the United States Supreme Court live in your own backyard, thanks very much Caleb!

Tuesday was that day, Chief Justice John G. Roberts, Jr. was here in Minneapolis for the 2018 Stein Lecture at the University of Minnesota’s Northrup Auditorium, as the Star Tribune reported.

SCOTUSBlog had this to say about the Chief Justice’s remarks. To listen to a recording of the event, to a sell out crowd of 2,700, check out MPR’s coverage, here.

Others reporting on this event don’t appear to care about trademarks as much as we do, so this may be the only place you’ll learn about Justice Roberts’ remarks relating to trademarks.

As you can imagine, knowing the vast body of legal subject matter confronted by the Supreme Court, clearly my ears perked up in hearing Justice Roberts utter the word “trademark” five times!

Moderator Robert Stein, former University of Minnesota Law School Dean, asked Chief Justice Roberts whether any highly technical subject matter might be unsuited for the Court to decide.

My mind went to the creation of the CAFC in 1982, specifically designed to hear all federal district court patent appeals, yet the Supreme Court has repeatedly reversed the CAFC since 2005.

Justice Roberts never mentioned the CAFC, instead he waxed a bit about trademark expertise:

“My answer, I think is, no, because usually no matter how complex and involved the legal issue, the case may seem, it implicates a broader legal question about, you know, the statute may be complicated, but the question is going to be, well, how do you go about reading the statute, what sources do you look at in a particular case. We don’t take technical legal cases because we like technical legal cases. They’re usually because they implicate a broader question. When I was practicing law, this is a speech I gave a lot of times, because I was not an expert in any area of the law. I like to think of myself as somebody who was good arguing in a particular court, in the Supreme Court, and so I’d have to, you know, convince someone who comes in with an important trademark case, who could hire the world’s leading expert in trademark law, or me.  And, I would tell them, look, the Supreme Court does not think your case is a big deal for trademark law. It thinks your case is a big deal for how regulations relate to the statute, how particular provisions in the statute should be read. So, you need somebody who, you know, can look at it in that broader perspective that the justices do, and you know, I would say, half of the time, they would say, well, I actually want somebody who knows something about trademark law, and that was understandable, but, then it would be, and, you know, they would get there in front of the Court, and they’re too expert in trademark law, and the justices just aren’t that interested in a lot of those nuances, and sometimes they would just be speaking over each other.”

My ears also perked up with Justice Roberts’ remarks about the Court’s fewer decisions:

“We have particular criteria for the cases we want to take. Obviously, if any court finds an Act of Congress unconstitutional, we will take it, we think as a matter of comity to the branches across the street, we should be the ones to say that, if any court is . . . .”

Do you see where I’m going with that remark, dear readers? I’m thinking about Erik Brunetti.

As you will recall, presently before the Supreme Court, is whether to hear the Brunetti case, and the issue presented in Brunetti is:

“Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

Given the clarity of Justice Roberts’ statement, “if any court finds an Act of Congress unconstitutional, we will take it,” I’ll be amending my prediction otherwise, since the CAFC did just that, in Brunetti.

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.

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.

Throughout the past decade, attorneys, judges, plaintiffs, and defendants have invested thousands of hours in the fight over offensive trademarks. Most of the public is aware of the controversy surrounding the Washington Redskins, who continue to be embroiled in litigation that is currently pending with the Federal Court of Appeals for the Fourth Circuit. But even more important is the pending litigation at the Supreme Court, where the Asian-American band The Slants have challenged the constitutionality of the law that prevents the federal government from granting the benefits of federal registration to trademarks that disparage groups of people.

We’ve discussed the history and merits of the case at at length. I won’t get into the details in this post. However, with the Cleveland Indians in town to play the Minnesota Twins, I was reminded that the Cleveland organization seemed to be escaping the glare of the media attention that had been focused on the Redskins and the Slants. Apart from the name of the team itself, Cleveland’s logos throughout only seem to worsen the potential to disparage or offend Native Americans. For reference, the logos and years of use are reproduced below:

Indians Logos

The Supreme Court heard oral arguments in the Slants case (In re Tam) on January 18th. But while we await a decision from the Court, the Cleveland Indians provide us with a reminder that, regardless of what a court may say, the court of public opinion may have the final word. In fact, we have learned over the last two weeks that Major League Baseball’s Commissioner Rob Manfred has been in discussions with the Cleveland organization regarding the “Chief Wahoo” logo since the end of the World Series. The Commissioner has publicly stated that he is pushing the team “to transition away” from the logo. Just last January, the MLB awarded Cleveland the right to host the 2019 All-Star game. With recent events in Charlotte and throughout the U.S., it’s hard not to wonder whether Chief Wahoo’s retirement date may already be set.

We’ll have to wait and see how the Supreme Court rules in In re Tam but, as with the case of the Cleveland Indians, not all trademark battles are won in the court of law.

 

Last Friday, both slanted arguments and red herrings were present during the 90 minute en banc oral argument before the Court of Appeals for the Federal Circuit (CAFC) in In re Tam.

The question invited by the CAFC to be addressed in Tam is whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of trademarks that consist of or comprise matter that may disparage persons violates the First Amendment.

The CAFC previously had affirmed the Trademark Trial and Appeal Board’s decision in Tam upholding the USPTO’s refusal to federally-register THE SLANTS mark for “entertainment in the nature of live performances by a musical band,” concluding that when used in connection with applicant’s services, THE SLANTS would be perceived as disparaging to a substantial composite of the referenced group — persons of Asian descent, violating Section 2(a) of the Lanham Act.

After vacating that decision, now, the CAFC is asking whether Congress even has the power to refuse registration of a trademark consisting of or comprising matter that may disparage persons. And, although the court didn’t specifically ask for briefing on whether the scandalous and immoral portions of Section 2(a) must fall too under the same First Amendment theory, the lawyer for the American Civil Liberties Union, who was permitted 10 minutes of oral argument, as amicus curiae, encouraged the court to “embrace” that idea.

Although I have already shared some thoughts on the subject, here, after springing out of my chair a few times while listening to the audiotape of the Tam oral argument, I couldn’t resist sharing a few more thoughts on the subject. Some now, more later.

One of those jarring moments was when Circuit Judge Kimberly Ann Moore, the initial Tam panelist who appeared to spearhead the sua sponte Constitutional review en banc, consistent with her “additional views” appended to the original panel affirmance, asked our friend Ron Coleman (counsel for Mr. Tam) about how the court’s decision would impact the federal government’s copyright registration system.

This led to an unfortunate diversion and a substantial amount of time devoted to the purely academic question of whether Congress could amend the Copyright Act to add a disparagement provision that refuses registration of copyrights on that basis. It seems to me, this kind of question, assuming it is even relevant to the analysis, deserves far more than shoot from-the-hip responses, but since that is what was sought in oral argument, I’ll offer a few thoughts off the top of my head, instead of from the hip.

To my knowledge, correct me if I’m wrong Ron, but Congress has never forbidden and has no plans to forbid copyright registration to disparaging works of authorship, so a parade of horribles based on this fear seems misplaced. And the underlying premise and multiple suggestions during the oral argument that trademark should be treated like copyright is certainly not the law, not obvious, and the premise has multiple flaws, it seems to me.

First, copyright and trademark flow from very different origins and have very different purposes. Copyright protection flows from an express provision in the U.S. Constitution, whereas federal trademark protection flows from the very general Commerce Clause language permitting Congress to make laws affecting interstate commerce. In fact, Congress’ first attempt to create a federal trademark regime in 1870 failed, and was struck down by the Supreme Court, because it improperly relied upon the Copyright Clause of the U.S. Constitution for its authority.

Federal copyright law is preemptive and as a result States cannot seek to protect copyright under State law. Not so with trademark protection, there is no preemption, so States are free to and do protect trademark rights at the State level.

Moreover, a prerequisite to any enforcement of a copyright is federal registration, but again not so with trademarks, unregistered marks may be protected by the States at common law.

Moreover, in terms of Congress’ legitimate interest in discouraging all sorts of confusion in the marketplace, it is reasonable and accurate for the public and potential consumers to infer governmental approval of a trademark when the federal registration symbol (®) is used, because it is unlawful to use it without first having obtained a Certificate of Registration for the mark in question. But again, not so with copyright — there is no prohibition on the use of the copyright registration symbol (©) and there is no registration requirement in order to use it.

In terms of the governmental speech argument there are material differences there too. A trademark registration certificate, when issued by the federal government has its name and fingerprints all over it, positioned immediately adjacent to the approved mark in question. On the other hand, when a copyright registration issues, the material subject to copyright protection does not appear anywhere on the certificate, nor is it even attached to the certificate.

So, to suggest that all forms of IP (copyright, patent and trademark) should be treated the same ignores the careful balance that Congress struck over the last century and longer in legislating unique protections and limitations for each form of intellectual property.

There is so much more to say, but I’ll have to circle back for the rest later, sorry duty calls.

As our friend John Welch reported last week, the place to be on March 10, 2015, is Washington, D.C., at the 25th Annual “PTO Day,” sponsored by the Intellectual Property Owners Association:

PTODay

John will be part of the panel update on TTAB practice, and I’ll be providing the overview of Section 2(a) of the Lanham Act, that pesky provision of the federal trademark statute that bars registration of certain types of marks that violate public policy, including any trademark that “[c]onsists of or comprises immoral . . . or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .”

The “scandalous” prong of Section 2(a) has barred registration of vulgar marks like 1-800-JACK-OFF, MOMSBANGTEENS, SEX ROD, and BULLSHIT, to name a few.

The “may disparage” prong of Section 2(a) has been invoked to refuse registration of racially-slurring marks like THE SLANTS, HEEB, and SQUAW, and to revoke registration of the R-Word, as disparaging to Native Americans, because it was found to be improperly issued.

No doubt, there are critics of Section 2(a) that question the constitutionality of these statutory bars to registration — I’m alright withholding registration and use of ® — the federal registration symbol — next to those words, because doing so doesn’t prevent their commercial use.

I’m looking forward to hearing Ron Coleman’s perspective on Section 2(a), as counsel for The Slants, a case currently on appeal to the Court of Appeals for the Federal Circuit, and Jesse Witten, as counsel for Amanda Blackhorse and other Native American petitioners who prevailed against the Washington R*dskins last June.

Ron has provided a preview of his thoughts on his Likelihood of Confusion blog, in a three-part series scandalously titled “Indian givers” (parts 1, 2, and 3), suggesting the USPTO assumed this role in ordering the cancellation of the R-Word trademarks of the NFL professional football franchise located in the nation’s capital.

From my perspective, scandal aside, the title of Ron’s series is a misnomer, since the evidence of record in Harjo and Blackhorse showed that the R-Word was improperly granted registration in the first place, so I’m thinking, it looks far more like a windfall to the team than a taking.

In any event, sympathy for the team and other Section 2(a) losers is also unwarranted given the law for some seventy-five years: “The field is almost limitless from which to select words for use as trade-marks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration.”

Do you think that the registration prohibitions of Section 2(a) will withstand constitutional scrutiny? The Justice Department intends to see to it.

Kmart recently unveiled a brand new advertisement that’s about as subtle as a shovel to the face.  While some have described it as juvenile or immature, I can’t help but chuckle everytime I see or hear it.  Maybe that says something about me…

Anyway, here’s the ad.

The ad, which was initially released exclusively online, has apparently been a huge success for Kmart.  (Qualifier:  Success based on views, not success based on sales.)  In fact, the ad has been so popular that Kmart will be running it on “select cable networks” shortly.  (See here.)  If the goal was buzz, then the commercial certainly accomplished its purpose.

My first reaction to the commercial, after my initial laughter, was a question about the availability of protection for a “Ship my” anything based trademark.  I could see Kmart possibly considering a family of trademarks/slogans to be used in conjunction with or following the release of this ad.  Would something as outwardly vulgar as a “ship my pants/drawers/bed” family of marks be registrable with the USPTO?’

The question requires an examination of the prohibition on “immoral, deceptive, or scandalous matter.”  As I’ve previously noted, the line for this prohibition has always been a bit fuzzy.   There are numerous examples of marks that were and were not acceptable, and a review of these marks makes it difficult to discern any meaningful measure of acceptability.  The best that can be said is the more explicit the mark is, the less likely it will be registrable, and vice versa.  For example, JACK-OFF for adult phone services was not okay, but BIG PECKER for T-Shirts with giant roosters was.

Here, I expect Kmart would likely be successful if it tried to register a family of marks based on its “shippy” joke.  The closest analog I can think of is the SOFA KING line of marks that have been registered with the USPTO.  (I previously blogged about these marks here.)  I have not seen any “ship” based marks that would be similar to what Kmart has done here, but if the USPTO would let SOFA KING fly, I can’t imagine SHIP MY PANTS would create more of an issue.

Any thoughts?

On June 15, 2011, the United States District Court for the Southern District of Indiana put a bullet in Dillinger, LLC’s efforts to hold Electronic Arts liable for trademark infringement and unfair competition based on EA’s use of the word “Dillinger” in one of its video games. EA is the developer and publisher of Godfather video games based on the movies and novel by the same name. The games allow players to use weapons identified as the “Dillinger Tommy Gun” (first Godfather game) and the “Modern Dillinger Tommy Gun” (second Godfather game). Dillinger, LLC, the owner of the “Dillinger” mark, alleged that such use constituted trademark infringement. The court held that despite Dillinger, LLC’s interest in the Dillinger mark, EA was entitled to use the mark in the manner it had because video games are considered “literary works” in the Second Circuit, and the use of trademarks in literary works can be, under proper circumstances, protected by the First Amendment. Specifically, the use of the mark must: (1) have “artistic relevance” to the work; and (2) not explicitly mislead the public as to the source or content of the work. The Court held that this test was met here.   

The First Amendment ruling, while interesting, was not the most interesting part of the case from my perspective. Instead, I thought of the Lanham Act’s prohibition of trademarks which comprise “immoral, deceptive, or scandalous matter.” (See 15 U.S.C. §1025(a).) The FBI website succinctly catalogued Dillinger’s atrocities:

Dillinger, whose name once dominated the headlines, was a notorious and vicious thief. From September 1933 until July 1934, he and his violent gang terrorized the Midwest, killing 10 men, wounding 7 others, robbing banks and police arsenals, and staging 3 jail breaks—killing a sheriff during one and wounding 2 guards in another.

Sounds pretty immoral and scandalous to me. 

A number of articles have been written documenting the fuzzy line for immoral and scandalous matter. (See here and here.) Consider Cocaine for soft drinks or Baby Al-Qaeda for infant T-shirts. Some people try to draw the line, but I think it’s a hopeless effort. Do you think the “immoral” and “scandalous” line should continue to be drawn?

On a recent pilgrimage to my home town to visit the University of Iowa and to see the Hawkeyes play football again in hallowed Kinnick Stadium, I discovered that a rather rudimentary and perhaps impolite (or potty mouth), yet passionate (sorry Nancy) branding technique, is alive and kicking in Iowa City. I also learned what now appears to go hand-in-hand (or, perhaps leg-in-hands as opposed to a single hand) with Hawkeye football games, at least those played on their home turf:

Somehow the static sign doesn’t do justice to the in-person-experience, so try the YouTube video.

Once again, I’m reminded of Anthony Shore’s succinct naming insight:

There was a time when a simple, honest name was good enough.

Anthony, it appears those times are alive and well (or at least kicking) in the middle of the heartland.

Having said that, I’m also reminded of Liz Goodgold’s caution over "Potty Mouth Marketing: Six Reasons Why Vulgar Language is the Curse of Your Brand".

Trademark Office insights below the jump.

Continue Reading Primitive & Impolite, But Non-Vulgar Trademark & Naming Technique?

"The name is Bond, James Bond," said Sean Connery, Roger Moore, and Daniel Craig, among others, countless times in film, as part of the famous 007 series. An ideal name for a secret agent. A name and line not easily forgotten, as brands and taglines should be.

And then, there are some names you’d like to forget, but can’t, especially if they are associated with personal injury lawyers, who probably "suk" even more than trademark lawyers (who merely have been dubbed the most basic figure), right?

Well, using Dan’s post from Friday, as a catapult (or, perhaps a hole-digger) for discussion, I’m thinking the jury is still out on 3 being the magic number, at least as it pertains to the 3 letters forming a rather rare surname (Suk) and the same number of words forming a curious (and hopefully misdescriptive) law firm name (Suk Law Firm), so, sorry Dan, I’m not sure there is any way to pull a rabbit out of the hat on this troubled tripartite branding combination:

Seeing the signage here, I’m thinking that any new or temporary receptionists at this law firm automatically require more intense phonetic training than your average law firm receptionist. In fact, this little gem (hat tip and photo credit to Max) probably rivals those spotted by Mark Prus in his recent guest post entitled: "Name Development Faux Pas, a.k.a. What Were They Thinking?!"

Ironically, the tagline for the Suk Law Firm is composed of these 3 words too: "Think About It."

So, I’m assuming they followed their own advice and did, but nevertheless, it probably came down the same way the Drury Inns name did, since the surnames in question no doubt have a great deal of goodwill associated with and emotional attachment to their founders. Might a naming consultant, nevertheless have said, forgetaboutit?

In any event, one of the things I’d be inclined to think about is how the brand name might sound when spoken, especially in a world where word-of-mouth marketing is key, and also how it might be perceived by those in the relevant public, given the possible truncation from its four-letter cousin. Apparently Suk, when the surname meaning is intended, sounds like "cook" or "book," not "pluck" or "stuck." Oh, the things phonetic punctuation symbols can and should be used to do, to help guide the intended meaning by signaling long and short vowel sounds! 

On a related note, it reminds me of the unintended meanings that can result when critical spacing is omitted, as was the case, between the branded words "LA  MER" to yield LAMER.

Although mispronouncing the Suk surname may be bad enough, when one examines the derivation of the name, it doesn’t appear to improve much on the meaning front either, since Suk apparently is not only a nickname for a "powerful, unyielding man," but also a "stubborn, awkward one". Hmmm, it’s all beginning to make sense now.

For those with any modicum of lingering interest, the Trademark Office’s treatment of SUK appears below the jump.

Continue Reading Tripartite Branding Trouble: The Name is Suk?