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.

It was another star-studded event in Seattle last night, enjoy some pics from Meet the Bloggers:

The Ironmongers are Reunited:

Friendly Ron Coleman, John Welch, Steve Baird
Skeptical Ron Coleman, Steady Welch and Baird
Concerned Ron Coleman, Steady Welch and Baird
Animated Ron Coleman, Mildly Amused Welch and Baird

Much Going on Under the Light of a Full Moon:

Marty Schwimmer Focusing as Carl Oppedahl Howls at the full Moon?

The Ayes Have it, About What I Don’t Recall?

Ron Coleman, Carl Oppedahl, and Pamela Chestek, in Favor, Among Others

More Celebration Under the Full Moon?

Tara Aaron Sticks Her Landing, and the Crowd Applauds

Karaoke? Maybe a Little Jackson Browne, Running on Empty?

Eric Pelton Lead, with Backup Vocals by Carl Oppedahl?
Above all the Nonsense? Pleasant and Bright Susan Montgomery and Marty Schwimmer

Ron Continues to Steal the Show With Multiple Facial Expressions:

Friendly Tiffany Blofield, Confident Ron Coleman, Friendly Erik Pelton
Friendly Tiffany Blofield, Amplified Ron Coleman, Friendly Erik Pelton
Steady Tiffany Blofield, Say Cheesy Ron Coleman, Steady Erik Pelton

We look forward to Meet the Bloggers VX in Boston, next year, around this same time, stay tuned.

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.

Toward the end of last week, a couple of friendly ironmongers (John Welch and Ron Coleman) had an interesting dialogue on Twitter, with some great insights about creativity and the law.

John noted that copyright’s requirement of “originality” is not the same as the requirement of “novelty” in patent law. Ron then weaved in some nice insights about creativity and trademark.

The heady discussion led me to rediscover a blog post of mine from more than nine years ago dubbed: The Paradox of Brand Protection: Knowing When to Hit the Consumer Over the Head.

If you can get past the congested text from this beginner’s first few weeks of blogging, it’s actually worth a complete read for the content, but for now, here’s an excerpt with some better spacing:

“I often remind branding professionals that trademark law rewards their creativity. Some seem to perk up with this subtle encouragement. After all, everyone likes to be rewarded, right? Well, one of the unobvious rewards for creativity comes in the prompt timing of when trademark ownership begins.

Being able to own and enjoy exclusive rights on “day one”—meaning, either the first day of use, or even before first use, upon the filing of a federal intent-to-use trademark application—is a big deal in the world of trademark and brand protection. In fact, timing can be everything.

Even a single day can be the difference between having the right to exclusivity and owning nothing at all (except perhaps, the losing end of a lawsuit and a pile of product and packaging ordered to be destroyed).

On the other hand, when rights are not available on day one, you may have an uncontrollable situation; one where competitors and others have an opening to copy or mimic before enforceable rights attach, and in some cases, these actions can make it difficult, if not impossible to obtain exclusive trademark rights at all.

So, the timing of when trademark rights are acquired is quite important, and those in the business of creating brands play an important role in when those rights may come to be.”

Those remarks aren’t ideally suited for the character limit in Twitter, but I’m thinking they reinforce Ron’s point that priority of trademark rights can be impacted by creativity/novelty.

As to my above remarks about federal intent-to-use trademark applications, I’m also mindful of this little dialogue shared with Ron a few years back, but nowhere near nine years ago.

So, the good news for the day is that the law, especially intellectual property law (copyright, patent, and trademark) does reward creativity, in a variety of ways, and each in their own way.

We’re looking forward to continuing this discussion, among many others, with those interested, at the upcoming Meet the Bloggers XIV unofficial INTA event near INTA in Seattle next month.

During the official portion of the INTA program, I’ll be reflecting on the impact of a creative legal theory that consumed lots and lots of lawyers’ hours (billable/non-billable) for a quarter century.

And, finally, let’s not forget about Duey’s little friend, right over here:

 

 

Meet the Bloggers XIIadjacent to the INTA (International Trademark Association) meeting in Orlando — was a grand success, here is some of the visual evidence to prove the point:

Erik Pelton, Marc Randazza, Ron Coleman, Pamela Chestek, John Welch, Steve Baird, Marty Schwimmer
Left to Right Hosts/Sponsors: Erik Pelton, Marc Randazza, Ron Coleman, Pamela Chestek, John Welch, Steve Baird, Marty Schwimmer
John Welch
John Welch in the Winner’s Circle
Wes Anderson a Flanax Winner
Wes Anderson a Flanax Winner

 

 

 

 

 

 

 

 

 

Joel MacMull, Steve Baird, Ron Coleman
Joel MacMull, Steve Baird, Ron Coleman
Tiffany Blofield, Ron Coleman, Erik Pelton
Tiffany Blofield, Ron Coleman, Erik Pelton
Barb Grahn, Ted Davis, Lisa Dunner
Barb Grahn, Ted Davis, Lisa Dunner
MTBXIIg
Marc Randazza, Ron Coleman, Joel MacMull
Steve Baird and Marc Randazza
Steve Baird and Marc Randazza
Steve Baird and Ron Coleman
Steve Baird and Ron Coleman

More to come, stay tuned, if you have other photos you’d like to share here, please let me know!

DuetsLettersAfter returning from a great set of collaborative meetings with other members of the Executive Leadership Board at the University of Iowa’s College of Pharmacy, let’s say, we’re now looking forward to AIPLA’s Spring Meeting, located in our own Minneapolis backyard and playground.

My perspectives on the potential-U.S. Supreme Court-bound First Amendment challenges to Section 2(a) of the Lanham Trademark Act will be shared.

On the heels of AIPLA — we’ll descend upon Orlando for INTA’s Annual Meeting, to visit with our trademark colleagues from around the globe.

Of course, everyone who’s anyone, will be at the highly anticipated off-the-grid UNTA event appropriately dubbed “Meet the Bloggers XII.

Come one, come all, we look forward to spending some quality time together.

We cover a lot of topics related to nominative fair use of trademarks, see here, here, and here for some of those discussions. Does the example below on product packaging from J. Crew qualify for fair use of the iPhone 6 mark?

iPhoneCaseJCrew

The International Trademark Association would say so: “In general, the following uses are considered fair use . . . Use of ‘iPhone’ in non-stylized form on packaging for phone cases to indicate that it is usable with iPhone 6.”

Do you agree? And, why?

BridegtoUntaThis spot isn’t too shabby to make trips back and forth across the Coronado bridge to the annual meeting of INTA in San Diego, where ten thousand trademark attorneys from around the world descend for a week and congregate.

Any word on how many are here, but off the grid, attending the UNTA, so to speak?

This might be one topic of discussion this evening at the Meet the Bloggers event, see you there soon! Another might be Ron Coleman’s upcoming in banc oral argument at the Federal Circuit in The Slants case, to address the court’s sua sponte questions about whether the disparagement prong of Section 2(a) of the Lanham Act violates Free Speech. No comment, for now.

On a recent trip to the Washington, D.C. area, I had the opportunity to stay at the Bethesda North Marriott Hotel & Conference Center, and I’ll have to say, as a trademark type, it was difficult to avoid being drawn to their unique and engaging bath soap and packaging:

ThannSoapMarriott

In my experience, most bath soap bars and cartons on display in hotel guest rooms are pretty basic, nothing special, not much to talk about, much less write about. But, with THANN, Marriott appears to have found an imaginative partner in the bathroom amenities category:

“Marriott Hotels is on a journey to reimagine the future of travel and THANN amenities will elevate the guest experience at our hotels,” said Matthew Carroll, vice president, Brand Management, Marriott Hotels. “Our research shows that customers rank bathroom amenities among the top five most important influences on their overall guest room experience. Partnering with THANN will also enable Marriott to meet another customer desire for the introduction of new amenities on a regular basis. As THANN’s products continue to become available in North America, we are excited to be among the first to offer the brand’s products to our guests.”

THANN’s website indicates that its “unique products and imaginative packaging have won the prestigious Thailand Prime Minister’s Export Award, Japan’s G-Mark Award for excellence in industrial design, and the Hong Kong Design Center’s coveted Design for Asia Grand Award.”

Although the shape of the soap carton and package is pretty clearly attention-getting from the photo above, the distinctiveness of the soap bar shape itself is not captured in the above photo appearing on Marriott’s website, so here is some of my handiwork to help illustrate the point:

THANNSoapSRB2 THANNSoapSRB

 

 

 

 

 

 

 

 

 

 

 

Our loyal DuetsBlog readers will fully appreciate that the Supreme Court has determined product packaging and containers on the one hand, deserve different legal treatment from product shape and configuration on the other hand:

“Recall that back in March 2000 in Wal-Mart Stores, the Supreme Court drew a black and white line between non-traditional trademark protection for product configurations (which now must have proof of acquired distinctiveness or secondary meaning to enjoy protection or registration) and non-traditional trademark protection for product packaging or trade dress (which may forego proof of acquired distinctiveness so long as the claimed non-traditional trademark is sufficiently unique to qualify as being inherently distinctive).”

Applying Supreme Court teaching to the THANN example, the soap carton has the potential for immediate protection as inherently distinctive product packaging, while the soap bar shape, no matter how unique, can never obtain immediate protection because it can never be considered inherently distinctive, proof of acquired distinctiveness is necessary before any exclusive rights can attach.

From where I’m sitting, the shape and configuration of the soap bar is at least as distinctive and source-identifying as the carton and package, but no doubt, the divined black/white rule provides clarity, certainty, and predictability on the issue.

I’m doing my level best to not get all lathered up on this one, but where was the Supreme Court when we needed it to deliver a similar black/white rule on issue preclusion in the B&B Hardware decision, with the kind of the clarity sought by INTA’s Amicus Brief?

Marketing types: Do you consider the shape of the bar soap to be more distinctive than the soap carton package?

Trademark types: Why did the Supreme Court deliver a black/white rule in Wal-Mart, but not in B&B Hardware?

In closing, maybe one day, THANN will more than imagine federally-registered trademark protection for both the shape of the soap bar and the package, since it only has sought registered protection for the THANN word and logo mark in the U.S., at least to date.