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?

The battle for attorneys’ fees after an intense trademark dispute often leaves many prevailing parties empty handed. This is because the Lanham Act only provides for attorneys’ fees in “exceptional cases.” Congress’s (and courts’) reluctance to award attorneys’ fees stems from the “American Rule,” which provides that each party to a lawsuit is responsible for paying its own fees–unless a statute provides otherwise. But the Lanham Act erects a high bar to obtaining fees by requiring that the case be “exceptional.”

On the one hand, trademark owners should not have to fully shoulder the burden of what often turns into expensive litigation just to enforce their rights. Indeed, the estimated cost of protecting one’s rights can dramatically affect the calculus of whether to sue for infringement in the first place. But on the other hand, trademark violations are sometimes debatable and unclear. In such circumstances, the American Rule provides some protection to litigants who would otherwise be discouraged from seeking redress due to the risk that they might have to pay the defendant’s fees in the end if they lose. Thus, the Lanham Act strikes a balance, providing for reimbursement in cases of brazen and clear infringement–or brazen and clear abuse of the litigation process–while retaining the benefits the American Rule otherwise provides.

The Lanham Act’s fee provision has come up recently in two high-profile trademark cases: one involving Comic Con (reported on previously here and here), the other meme-famous Grumpy Cat (also reported on previously here). But the result was legally different in both cases, with Comic-con obtaining millions in fees under the Lanham Act, while Grumpy Cat obtained nothing under the Act, but recovered nevertheless pursuant to a contract between her and the infringer. What explains the different results?

Comic-con: The Comic Con (short for “comic book convention”) dispute began when the San Diego Comic Con sued the Salt Lake Comic Con for infringing on San Diego’s “Comic-Con” trademarks. The San Diego convention was one of the first comics-fan conventions.  And it is the largest convention of its kind, drawing more than 130,000 attendees each year. Salt Lake’s convention began in 2013, but it has quickly grown to over 120,000 attendees. Thus, it is probably no surprise that San Diego took exception to Salt Lake’s competing event and use of the same “Comic Con” name–though, as my colleague Jessica Alm pointed out, there are many other conventions across the United States using the same name.

San Diego Comic Con sued Salt Lake Comic Con for infringement. But despite the seemingly-debatable nature of the dispute (because the name could be generic, and it would be difficult to prove consume confusion), less than a year ago a jury determined that Salt Lake was liable for infringement in the amount of $20,000. Thereafter, San Diego moved for fees in the amount of $5 million–a little disproportionate, one would think (but perhaps not in view of San Diego’s requested $12 million in damages).

The district court judge granted $3.9 million. The reasons? Salt Lake repeatedly disregarded court rules, violated confidentiality rules, squandered judicial resources by relitigating issues, based arguments on irrelevant law, and attempted to bias the jury during the trial. The judge felt that the case stood out from others due to the “unreasonable manner it was litigated.” Expect an appeal on the $20,000:$3.9 million ratio.

Grumpy Cat: The Grumpy Cat dispute began when Grenade Beverage LLC, which had licensed Grumpy Cat’s trademarks (names and likenesses) to be used in trade dress and advertising for a new line of iced coffee products called “Grumppuccinos,” also used the marks in connection with a new coffee bean product without Grumpy Cat’s permission. Like the Comic Con litigation, the parties also litigated this case for three years. In addition, a jury awarded Grumpy Cat over $700,000–much more than San Diego Comic Con. But only $1 of that was for breach of the licensing agreement.

But unlike the Comic Con litigation, a federal judge recently denied Grumpy Cat’s request for approximately $320,000 in fees under the Lanham and Copyright Acts. The judge did, however, granted Grumpy Cat fees under the licensing agreement with Grenade Beverage–though, the judge said that there needs to be additional briefing on how much in fees can be awarded under the contract. Central to the judge’s decision on the Lanham Act fees issue was the fact that Grenade Beverage had not acted frivolously or in bad faith when they adopted an interpretation of the licensing agreement that entitled them to use Grumpy Cat’s marks in a line of Grumpy-Cat- branded “coffee products,” rather than just iced coffee. This reasonable difference of opinion–and, presumably, reasonable litigation behavior throughout the case–did not make out “exceptional” circumstances justifying fees under the Lanham Act.

In general, the Comic Con and Grumpy Cat cases provide two high-level teachings when it comes to fees. First, it is important to choose professional counsel, make reasonable litigation decisions, and take good faith positions throughout the course of a case. Otherwise, that conduct in and of itself may make the case “exceptional,” putting you on the hook. Second, attorneys’ fees provisions in a licensing agreement can serve as a helpful back-up if the Lanham Act fees request fails. But in providing for such fees, one should consider whether it is truly advantageous in the circumstances to remove the American Rule’s protections. That requires some thought…I need a Grumppuccino.

P.S. In April, I wrote about the USPTO’s attempt to obtain attorneys’ fees when it prevails in district court patent litigation. The Federal Circuit rejected this attempt, stating “the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a ‘specific and explicit’ directive from Congress. The phrase ‘[a]ll the expenses of the proceedings’ [in 35 U.S.C. § 145] falls short of this stringent standard.”

Simon Tam wasn’t the only one barred by the Lanham Act from reclaiming a historically derogatory term.

Dykes on Bikes is a nonprofit lesbian motorcycle organization.  According to their website, the group’s mission is to “support philanthropic endeavors in the lesbian, gay, bisexual, transgender, and women’s communities, and to reach out to empower a community of diverse women through rides, charity events, Pride events, and education.”  In 2015, Dykes on Bikes tried to register their logo as a service mark for entertainment.  The application was put on hold pending the outcome of Matal v. Tam, as the Supreme Court considered whether Simon Tam could register his band name—The Slants.  In view of the Court’s landmark decision holding the disparagement provision of the Lanham Act unconstitutional viewpoint discrimination, Dykes on Bikes will move forward with its trademark application as well.

It was in 2003 when Dykes on Bikes first sought to register the name of their organization as a service mark for education and entertainment services.  Registration was refused on the basis that the mark was disparaging to lesbians.  The organization appealed to the TTAB, arguing that the word “dyke” had become a positive term and a symbol of pride and empowerment.  Dykes on Bikes won their appeal before the TTAB.  But when the mark was published for opposition, an individual named Michael McDermott filed an opposition claiming the mark was disparaging to men.  Ultimately, McDermott’s opposition was dismissed for lack of standing.  In particular, McDermott failed to show either (1) he possesses a trait or characteristic implicated by the proposed mark; or (2) others share the same belief of harm from the proposed mark.  The TTAB dismissed McDermott’s opposition and the Federal Circuit affirmed.  DIKES ON BIKES was successfully registered in 2007.

Because they had already won the disparagement battle for their first mark, Dykes on Bikes was surprised to face another disparagement refusal for a second mark.  In 2015, the group sought to register their logo as a service mark.  They sought review by the TTAB, and the case was put on hold pending the outcome of Matal v. Tam.  Dykes on Bikes also filed an amicus brief in the Tam case, arguing in favor of Tam’s position.  After the Supreme Court held in Tam that “the disparagement clause violates the Free Speech Clause of the First Amendment,” the DYKES ON BIKES W M C logo was approved for publication.

Dykes on Bikes and The Slants had similar goals.  As Dykes on Bikes described in their amicus brief, both groups “have chosen to reclaim self-referential terms as trademarks for the benefit of the groups those terms refer to.”  They also drew a distinction with respect to a certain NFL team name: “the Washington Redskins have chosen a term that is unrelated to the people who identify as members of the football team and is commonly understood to be a slur which members of the identified group have not reclaimed.  Whatever the constitutionality of the PTO’s treatment of the Redskins mark, the team’s use of that name is immoral and Dykes on Bikes encourages the Washington Redskins to give up their trademarked name as a matter of respect and decency.”

While the Tam decision may have opened the proverbial flood gates of offensive trademark applications, it also allows for these positive trademark uses in reclaiming derogatory terms.

This week’s Matal v. Tam (formerly Lee v. Tam) Supreme Court ruling serves as a reminder that free speech is a two-way street.  It also suggests the value of a sympathetic litigant, at least in terms of public response.

Many rallied behind Simon Tam and his rock band, The Slants.  The band members, who are all Asian American, sought to reclaim and diffuse a historically derogatory term by naming their band “The Slants.”  The band first tried to register THE SLANTS with the Trademark Office in 2010.  The Office rejected the application under the disparagement clause of the Lanham Act.  15 U.S.C. 1052(a).  The band appealed to the Trademark Trial and Appeal Board, and later to the Federal Circuit, which ultimately led to review by the Supreme Court.

The resulting narrative told the story of a group of young musicians pushed out by a bureaucratic system and an antiquated law dictating morality.  Tam and his band were the good guys.  There was no public outcry calling for the band to change its name.  They were not viewed as insensitive or bigoted, at least in part because Tam and the other band members are Asian American and thus belong to the group presumably disparaged by the term.  For many, it was easy to rally behind the argument that The Slants have a First Amendment right to obtain federal trademark protections for their band name.  The Supreme Court’s decision that “the disparagement clause violates the Free Speech Clause of the First Amendment,” thus removing The Slants’ block to registration, was a well-received public victory.  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *20 (U.S. June 19, 2017).

However, as many have since pointed out, this decision was a win not only for The Slants, but for anyone seeking federal registration of an otherwise disparaging mark.

In 2015, a federal district court affirmed the USPTO’s cancellation of THE REDSKINS registered trademarks.  At the time, the district court’s decision that “the federal trademark registration program is government speech and is therefore exempt from First Amendment scrutiny” was lauded as a moral victory.  Pro-Football, Inc. v. Blackhorse, 112 F.Supp.3d 439, 452 (E.D. Vir. 2015).  The New York Times Editorial Board reported, “Slurs Don’t Deserve Trademark Protection.”  The Supreme Court’s First Amendment decision means the NFL team will now be able to recover their federal registrations for THE REDSKINS.

The Slants and The Redskins each wanted federal trademark protections for racially derogatory terms, but presented entirely different political positions and applicants.

The long-fought battle over cancellation of the Redskins marks began with a group of Native Americans arguing disparagement.  In this narrative, the team’s owners were often depicted as the villains callously profiting from a racial slur.  The Navajo Nation filed an amicus brief in support of the decision to cancel the trademarks.  Media outlets and NFL announcers refused to use the team’s name in their reporting.  While many also saw The Redskins as leading the charge in the fight against political correctness, The Redskins undeniably faced stronger public opposition than The Slants.

The differences in these cases, and in the  trademark applicants themselves, serve as a reminder that free speech for one necessarily means free speech for all.  Perhaps nothing underscores this point better than the New York Times Editorial Board’s recent statement that they have “reconsidered [their] underlying position” with respect to the team’s name following the Tam decision.

While many will surely still advocate for a new team name, if we are to allow The Slants to enjoy the benefits of federal registration, we must allow The Redskins–and others–the same opportunity.

Justice Kennedy said it best: “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.  The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *25 (U.S. June 19, 2017) (Kennedy, J. concurring).

From my title, you may think I am referring to the battle over the REDSKINS trademark.  However, the In re Tam case beat the REDSKINS team to the high court.  The case involving the REDSKINS mark is currently on hold until the United States Supreme Court decides the In re Tam case.  These cases have been the topic of prior blog posts.  For example, https://www.duetsblog.com/2016/10/articles/articles/supreme-court-benches-dan-snyders-team/ and https://www.duetsblog.com/2016/07/articles/trademarks/no-budding-in-line-washington-redskins/ and https://www.duetsblog.com/2015/12/articles/trademarks/will-uspto-director-michelle-lees-signature-adorn-a-slants-certificate-of-registration/

The Supreme Court heard argument regarding the In re Tam case last month regarding whether the United States Patent and Trademark Office (USPTO) could refuse to register THE SLANTS as a trademark.

The Government explained that the Lanham Act prohibits the registration of any mark that may disparage persons, institutions, beliefs or national symbols.  A denial of registration does not limit the ability to use the mark in commerce or otherwise to engage in expression or debate topics.  According to the Government, the Lanham Act’s disparagement provision places a reasonable limit on access to a government program rather than a restriction on free speech that would violate the First Amendment.

The Supreme Court Justices actively questioned both the Government’s attorney and Mr. Tam’s attorney.  Justice Kennedy raised the issue of copyright protection and that refusing to copyright protect disparaging work would pose a significant First Amendment issue.  However, there are limits such as not being able to copyright new words or short phrases. Justice Ginsburg, however, distinguished the copyright act because you cannot sue for copyright infringement unless registered.  There is no such restriction on trademark infringement.

Justice Breyer explained that the ultimate purpose of a trademark is to identify the source of the product so it is making a statement.  The disparagement provision of the Lanham Act says you can say something nice but not bad about a minority group.

The Government argued that trademarks tell the public from whom the goods or services emanate, but this is not expressive in its own right.  Trademarks have a dual purpose of identifying source and as a miniature advertisement.  Congress should be able to discourage negative advertising by not registering a trademark such as “Coke Stinks.”

Justice Kagan explained that Government programs cannot make distinctions based on viewpoint. She then asked the Government’s attorney isn’t that what the Lanham Act’s non-disparagement provision is doing?  The Government pointed out the restriction was only for the government program of registration.  The Government argued that the restriction on disparagement was reasonable because the Government is publishing the mark.   Mr. Tam could still use THE SLANTS trademark in commerce and have common law rights in the trademark.

Justice Kagan raised the issue of whether a trademark registration was Government speech itself.  The Government publishes the registration on its Web site and sends the trademark registrations to other countries.

Mr. Tam’s attorney disagreed with the Government arguing that the Lanham Act’s provision prohibiting disparagement (and scandalous marks) was unconstitutional under the First Amendment.  Tam’s attorney argued that trademarks constitute both commercial (e.g. the band’s name) and non-commercial (e.g., Proud Asians) speech.

Justice Sotomayor asked Mr. Tam’s attorney isn’t it true that he was asking the Government to endorse his trademark or name in a way that it chooses not to?  The speech is not being burdened, because the mark can still be used and he can still sue others.  Other laws restrict commercial speech such as product disparagement.   Libel and slander laws also restrict speech.  Further, there are restrictions on speech carried over airwaves.

Tam’s attorney conceded that other content distinctions in the Lanham Act such as prohibition against registering marks that are falsely suggestive of a connection that is likely to cause confusion, descriptive, mis-descriptive, functional, a geographical indication of wine or spirits, etc. would survive his First Amendment challenge.  Justice Kagan explained that this then meant that the registration of trademarks was not the same as restricting speech in a public park where free speech could not be so restricted.

In rebuttal, the Government argued that its registration program provides certain benefits that the Government does not have to provide.  Denial of registration only affects the commercial aspect of the trademark by limiting remedies for infringement.   The program does not regulate the non-commercial component, namely use of the trademark.

Trying to read the tea leaves, I am thinking the Supreme Court may liken this speech (e.g., trademark registration) at issue to the speech of Texas license plates at issue in the case (Walker v. Texas Div., Sons of Confederate Veterans, Inc., No. 14-144, 2015 WL 2473375 (U.S. June 18, 2015)) mentioned by Judge Ginsburg during oral argument.  If the Court decides to do so, this could result in a ruling that the Government can place a reasonable restriction on its program.  An owner can use the disparaging trademarks and sue infringers even without registration with the Government.

How do you think this will come out?

With the Strafford Publications webinar later today discussing the Lanham Trademark Act’s “Use in Commerce” requirement, with some of my favorite panelists no less, the topic has been on my mind, even when pumping gas into my rental car in Houston, Texas, this past weekend:

NASCARGasolinePump

So, what do folks think, does this photograph of a gasoline pump constitute “use in commerce” of the NASCAR trademark and brand in connection with gasoline, classified in Int’l Class 4?

NASCAR has all sorts of stuff that can be purchased online with it’s brand name and trademark on it, but to serve a trademark function (identify, distinguish, and indicate the source of gasoline), and to demonstrate proper use in commerce of a word mark (as opposed to non-traditional subject matter like colors and scents — we’ll pass on the possibility of taste for this one though), applying the mark directly on the goods isn’t possible given the liquid state.

NASCAR also has an impressive trademark licensing program and more than a semi truckload of federal trademark and service mark registrations to protect its licensed brand, but interestingly, none presently covering Int’l Class 4 or gasoline.

It appears the closest NASCAR has come to protecting gasoline in Int’l Class 4 is through this expired NASCAR registration for motor oil and automotive greases in Int’l Class 4.

Yet, I’m thinking TMEP 904.03(c) contemplates the issue and fully supports using the above photo as an appropriate specimen to demonstrate use in commerce of the NASCAR mark for gasoline, by showing the mark directly on the containers or packaging for the goods: “gasoline pumps are normal containers or ‘packaging’ for gasoline.

Why do you suppose NASCAR hasn’t taken this step (yet)?

donald-trump-john-oliver-donald-drumpf_650x400_61456831723

This presidential election cycle has been nothing if not entertaining.  Mr. Trump has been a particular favorite among late night T.V. hosts.

In one particular 20-minute monologue, Last Week Tonight host John Oliver berated the Donald, and in doing so, brought to light a historical quirk of the Trump name.  It would seem that the Trump family name was at some point changed from Drumpf to Trump.  Exactly when in the family history the name change occurred seems unclear, and Trump himself has neither confirmed nor denied the namesake.  Oliver encouraged viewers to begin referring to Donald Trump as Donald Drumpf, in an effort to separate the man from the brand.  The video quickly went viral after being posted last weekend, and now boasts 57 million views on Facebook.  The hashtag #MakeDonaldDrumpfAgain has been trending for days.

john-oliver-is-asking-america-to-make-donald-drumpf-againAs he states in the video, Oliver has even filed a federal intent-to-use trademark application for the standard character mark “DRUMPF.”  The application, actually filed by Drumpf Industries, LLC, is for use of the mark in the “provision of a website featuring multimedia.”

The Lanham act has two provisions related to registering a person’s name.  Section 2(c) bars registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”  This section prevents individuals from profiting off of others’ names.  Section 2(c) has also allowed Donald Trump, himself, to trademark TRUMP on several occasions, by filing a written consent.  This provision has also prevented others from registering marks such as OBAMA without the President’s consent.

Section 2(e)(4) provides that a mark may not be registered on the principal register if it “is primarily merely a surname.”  Marks that are primarily merely surnames, or last names, are treated as descriptive marks.  They may be registered on the supplemental register.  Or, if the name has acquired distinctiveness under Section 2(f), it may be registered on the principal register.

It’s possible that either, or both, of these provisions could be cited against John Oliver’s trademark application.

Section 2(c) could arguably be cited against the application, because although Drumpf is not Trump’s actual legal name, John Oliver makes clear that the DRUMPF name is intended to “identify[] a particular living individual” without his consent.  The popularity of Oliver’s video, website, and hashtag  may even weigh in favor of an argument that the Drumpf name is intended to identify a particular individual.

Section 2(e)(4) may also be cited against the application on the basis that Drumpf is “primarily merely a surname” without acquired distinctiveness.  To establish whether a name is primarily merely a surname, the PTO will look at five factors:

(1) Whether the surname is rare;

It does appear rare, at least in the U.S.  A quick search on 411.com and familypedia.wikia.com, sites used by the PTO in the past to show the prevalence of a surname, did not reveal any matches for the surname Drumpf.  This suggests Drumpf is not primarily merely a surname.

(2) Whether the proposed mark is the surname of the Applicant or anyone connected with the Applicant;

Unless someone connected with Last Week Tonight has the name Drumpf, this factor likely suggests that Drumpf is not primarily merely a surname.

(3) Whether the proposed mark has any recognized meaning other than a surname;

This can occur where, for example, the term has a meaning in a foreign language, or is associated with a different brand. It’s unclear where this factor would fall.

(4) Whether the term has the “look and feel” of a surname; and

A lot of elements can influence the “look and feel” factor.  Drumpf appears to have been of German origin, according to biographer Gwenda Blair.  Whether Drumpf is more similar to other German surnames may affect this analysis.

(5) Whether the stylization of the lettering in the proposed mark is distinctive enough to create a separate commercial impression.

The fifth factor does not apply in this case, as the application is for a standard character mark.

Moreover, if a Section 2(e)(4) rejection is raised, could Oliver argue that DRUMPF has acquired distinctiveness in connection with the proposed services based on the immense popularity of Oliver’s related video, website, and hashtag?

In any event, as with the rest of the election, it will be interesting to watch where this application goes.

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.

Earlier this month Southwest Airlines launched a brand new ad campaign called “Transfarency,” which is said to highlight the airline’s “low-fare credo and its lack of bag fees, change fees or hidden fees for passengers.

TransfarencyChartTransparency seems to be the buzz word in branding and marketing circles lately, so what better way to communicate it than through coining a new word that tries to makes you think of it?

Sounds complicated, why not just say, Bags Fly Free, you ask? One answer might be, been there, done that. Another might be, someone was bored. But most likely, the Transfarency campaign appears to build on and broaden the previous success of the narrower Bags Fly Free campaign: “Transfarency is not a new chapter for us, but another tone to the bell that we’ve been ringing for more than 44 years.

Let’s just say, that’s Strategery at its finest!

The airline’s Transfarency website speaks of “Low fares. Nothing to hide.” It goes on to explain: “We’re all about being open and honest with Customers and making sure pesky fees stay away from our low fares.”

Under the clever hashtag “FeesDontFly” the airline taunts the competition: “Are you over other airlines charging you first and second checked bag fees, change fees, and what-the-heck-was-that-even-for fees? At Southwest we do things differently.”

A Southwest Airline executive is quoted as saying: “People are tired of being nickeled and dimed and it’s time to remind people that there is a different airline out there.” And, in doing so, one of the ads says: “We don’t dream up ways of tricking you into paying more.

It will be interesting to see whether any of Southwest’s named competitors try to ground any of these statements as false or misleading advertising.

As much as I can’t stand the nickeling and diming by other airlines, I’m not sure it’s fair to call those fees hidden, or tricks? I’d call them painful, annoying, maybe more than irritating, at times.

Now, back to the Bags Fly Free tagline for a moment. It’s not surprising to me that the BAGS FLY FREE tagline initially registered on the Supplemental Trademark Register, back in 2009, as a merely descriptive mark lacking inherent or acquired distinctiveness.

What was a bit surprising to learn is the current status of the more recent BAGS FLY FREE registration on the Principal Register. While the USPTO’s online TESS page shows the mark to be registered under Section 2(f) of the Lanham Act, meaning the mark has acquired distinctiveness since its first use back in 2009, the TSDR Page and the registration itself bears no reference to Section 2(f).

Southwest argued for inherent distinctiveness, contrary to its previous acceptance of a Supplemental Registration in 2009, with arguments for suggestiveness gems like this:

“The phrase ‘bags fly’ creates a mental image of flying suitcases. There is, however, no instantaneous association of one specific service to Applicant’s mark because of the literal meaning of ‘bags fly,’ which is nonsensical. For this reason, thought and imagination is required to understand the relationship between the Applicant’s mark and its services.”

But Southwest, at the same time, hedged its bet on this argument, also arguing in favor of acquired distinctiveness under Section 2(f), in the alternative, putting in significant evidence in favor of establishing that the mark has acquired distinctiveness.

The question remains, did the USPTO intend for the most recent BAGS FLY FREE registration to issue on the Principal Register as an inherently distinctive mark, without a showing of acquired distinctiveness, or was it an oversight, and did the USPTO really intend for the mark to register under Section 2(f), as the TESS page appears to indicate?

A little transparency on whether the USPTO actually bought the suggestiveness ticket about flying suitcases would be nice. I’m thinking, most Examining Attorneys would have checked that one at the baggage claim.

Either way, one more possible advantage of Southwest’s Transfarency approach is that there is no reasonable question about whether that mark is inherently distinctive — so, no need for any showing of acquired distinctiveness is required.

You know that feeling when you’ve nearly crossed the finish line? You have done the work, put in the time, and the only step left is to run through the tape.

There can be similar moments with trademark applications, too. Admittedly, it may not be as exciting for other people, but I certainly enjoy it. But one situation frequently arises where there is just one small thing to take care of. The attorney (or owner) will get a call or an e-mail from the Examining Attorney with a brief introduction and then, “Everything appears to be in order with the application, we just need you to enter a disclaimer of the term _______.”

That’s it! Just need to say “Okay” and your mark will be published and, if no third-party objects, you’re on the fast track to having a shiny new trademark registration.

After successfully navigating the application process, you may just want to say “Okay” so you can finally run through that tape. But before you do, make sure you understand the fine print.

Under Section 6 of the Lanham Act, the Trademark Office may require a disclaimer of any “unregistrable component” of an otherwise registrable mark. The disclaimer will appear on the Certificate of Registration. For example, if you’ve registered the mark BOONDOGGLE RESTAURANT for restaurant services, disclaiming RESTAURANT, the Certificate will state “No claim is made to the exclusive right to use ‘RESTAURANT’, apart from the mark as shown.” As a result, the owner makes a statement of public record that this portion of the mark is merely descriptive.

This can make it difficult to enforce rights in trademark against third-party marks who share that disclaimed term. If you attempt to enforce your trademark against a third-party, they’ll be able to quickly determine if you have disclaimed any portion of the mark. If you have, that may provide the third-party with a reasonable basis to kindly ask that you check the sturdiness of that sand over there.

While it is not impossible, there must be some other element of the mark that is similar to your mark. For example, Purina Dog Food (owned by Nestle S.A.)  successfully opposed registration of the mark WAGGIN’ STRIPS (disclaiming STRIPS) based upon their prior rights in the mark BEGGIN’ STRIPS (disclaiming STRIPS). In addition to sharing the disclaimed term STRIPS, the marks also shared a similar structure and similar sound and therefore the Board found a likelihood of confusion. (decision available here).

Disclaimer practice makes sense for our Boondoggle Restaurant. The term RESTAURANT has no source identifying function in relation to restaurant services; it is generic. In these situations, agreeing to the disclaimer is a simple and easy .

However, disclaimers are also required for descriptive terms. And, as we’ve discussed, there is a fine line dividing descriptive wording from suggestive wording. The determination is also very subjective. While a term may be descriptive to one Examining Attorney, a different Examining Attorney might consider the term suggestive without a second thought. Like all people, Examining Attorneys are not infallible. The Examining Attorney might misunderstand your goods or services, could be having an off day, or maybe they have a heightened opinion of what qualifies as a descriptive term. Regardless, once you enter that disclaimer, it is there in the public record and can’t be swept under the rug.

Accordingly, the next time you receive a disclaimer request, take a second before you run through the tape. Ask yourself whether the term really is descriptive. Would you be comfortable with your competitors using the term? Why did you choose it? Is there a reasonable basis to assert that the term is suggestive?

Rather than take the easy way out, it may be worthwhile to invest in the time to prepare a response to the office action, arguing against the disclaimer. While it may add some extra cost on the front end, failing to explore this option can harm the strength of your trademark, which you may regret down the road.