We follow closely and write a lot about what goes on with the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO); these ironmongers do too, really well.

Serious trademark and brand owners care about TTAB decisions because many trademark disputes begin and end there, as the TTAB determines the important right to federally register trademarks.

What I mean by beginning there is, discreetly-used third party conflicting marks “flying under the radar,” rise to another level of trademark enforcement importance for a trademark and brand owner when the user also seeks federal registration, almost requiring the opening opposition salvo.

Federally-registered trademark owners know the importance of protecting the federal trademark register, because what, and how many similar third party marks, are allowed for registration, can negatively impact the owner’s trademark strength, scope of rights, and enforcement success.

Trademark rights are dynamic, they’ll shrink or grow over time, depending on the landscape at the time of enforcement, so not limiting registration at the USPTO can have more negative impact on strength and scope than an single, discreet, unauthorized use of a confusingly similar mark.

Looking the other way at trademark applications landing within a brand owner’s legitimate scope of protection, indirectly sends the perhaps unintended message to the trademark world, and those who monitor it, that the owner willingly accepts the shrinkage of its trademark rights.

So, serious trademark owners watch for conflicting filings at the USPTO, and stand in the way of registration, until agreement can be reached on how to coexist without a likelihood of confusion.

What I mean by many trademark disputes ending at the TTAB is, most oppositions do not go to final decision, the vast majority settle with a mutually-beneficial coexistence agreement in place.

And, when they don’t, trademark and brand owners — who follow us here — also know that the importance of final TTAB decisions has been raised, as the U.S. Supreme Court recently opened the door to having certain TTAB decisions — through the application of issue preclusion — control the outcome of later federal district court infringement and dilution law suits.

Congratulations to the TTAB on reaching sixty years of dedicated service to trademark and brand owners, as we look forward to the interesting issues likely to be decided in 2018 and beyond.

As I reflect on the more than twenty-five years of my experience before the TTAB, at this point in time — spanning nearly half of the TTAB’s existence — I’ll have to say, the TTAB seems to be carefully and thoughtfully emulating the characteristics of a fine wine as it matures.

What are your predictions of the 2018 decisions that will stand out? Fraud? Functionality? Fame?

Will the TTAB revisit its previous perceived inability to address Constitutional issues, like say, dilution tarnishmentreligious text marks, or application of the Section 2(c) bar to prevent federal registration of political trademark speech, and, if not this coming year, when?

I’m thinking this will be the year of informational and failure to function decisions, how about you?

That is the question, at least for the day.

It’s also a question we hope the U.S. Supreme Court will address.

In particular, does a careful focus on the USPTO’s routine application of Section 2(c) of the Lanham Act, help shed light on why Section 2(a) actually doesn’t violate the First Amendment?

Last December, we discussed In re Tam, and how the Court of Appeals for the Federal Circuit wrongly held that the First Amendment’s protection of speech rendered Section 2(a) — the statutory provision prohibiting the registration of marks that may disparageunconstitutional.

As we have written before, just because a trademark exists doesn’t necessarily mean it is entitled to federal registration. The right to use is not coextensive with the right to register.

Indeed, various public policy considerations underlying our federal trademark law allow for use, but still may preclude registration of a trademark “on account of its nature“.

Like Section 2(a), Section 2(c) forbids the government from granting registration to a trademark “on account of its nature” if it “consists of or comprises” certain types of defined subject matter.

The specific subject matter denied registration under Section 2(a) — even if it performs as a trademark — includes matter that is scandalous or immoral, or matter that may disparage persons, among others.

Whereas, the specific subject matter denied registration under Section 2(c) — even if it performs as a trademark — includes the name identifying a particular living individual whose written consent to register is not of record at the USPTO.

For nearly a decade, Section 2(c) of the Lanham Act consistently has been invoked by the USPTO to refuse registration of any trademark alluding to President Barack Obama or Secretary of State Hillary Clinton, even those marks with a clearly negative political message and content:

So, if the en banc majority is really right in Tam (where commercial speech was at issue), then how can Section 2(c) survive the same First Amendment challenge with political messages?

Political speech is the most important and coveted form of speech protected by the First Amendment, yet each of the above politically-charged marks was refused registration under Section 2(c) of the Lanham Act.

And, just so it is clear that the USPTO is applying Section 2(c) in an evenhanded manner without picking sides, or punishing applicants espousing a negative message about a recognized political figure, these positive ones were refused under Section 2(c) as well:

In the same evenhanded way, in Tam, the USPTO refused registration of THE SLANTS because it met the 2(a) standard, concluding that a substantial composite of persons of Asian descent consider the subject matter to consist of or comprise a racial slur that may disparage persons of Asian descent.

It didn’t matter that Mr. Tam is of Asian descent and he genuinely desired to reclaim the slur as a positive designation. And, it wouldn’t have changed the result if a different non-Asian applicant actually intended to offend those of Asian descent by adopting the same mark. Either way, good or bad intentions, positive or negative messages, since the subject matter in question triggers a Section 2 violation, registration is not allowed.

Perhaps this analysis may add further support to Professor Rebecca Tushnet’s forthcoming Essay (not that she needs it), contending “that In re Tam is wrongly reasoned even given the Supreme Court’s increased scrutiny of commercial speech regulations, and that to hold otherwise and preserve the rest of trademark law would require unprincipled distinctions within trademark law.”

In addition, perhaps it further supports Professor Tushnet’s concern that “disparagement can’t coherently be distinguished from a number of the other bars to registration once the harsh logic of the First Amendment applies. If trademark registration as a whole is constitutionally vulnerable under a particular vision of the First Amendment, that very result counsels against adopting that vision as constitutional doctrine.”

For all the First Amendment wonks that believe the en banc majority of the CAFC got it right in Tam, and are uncomfortable with the USPTO invoking Section 2(a) when the subject matter of a mark consists of or comprises a racial slur, how are you able to defend Section 2(c) of the Lanham Act from the same First Amendment demise, especially when confronted with the above inherently political messages comprising the rejected trademark applications?

Metaphors are a good choice for trademarks. A metaphor typically requires some thought, imagination or perception to understand the connection between the mark and what’s for sale.

Remember what a floating feather might suggest metaphorically? Yes, a good night’s sleep. So, the symbol works well as a distinctive non-verbal trademark for a pharmaceutical sleep aid.

Metaphors are everywhere. According to James Geary, we utter about six metaphors a minute. He also notes: Aristotle’s classic definition of a metaphor is “giving the thing a name that belongs to something else.” This approach serves as a powerful trademark tool too.

Over the weekend, during the constant barrage of nauseating political ads, I found myself more focused on the few interspersed commercial advertisements, allowing me to appreciate the metaphorical thinking embodied in Allstate’s Mayhem ads:

“The character Mayhem is essentially a metaphor for any disaster that might befall a member of the target demographic, and tries to warn people that if they don’t have enough insurance coverage, they could have to pay for it out of their own pockets.”

Sure enough, Allstate has secured inherently distinctive federal service mark registrations for MAYHEM, and the slogan MAYHEM IS EVERYWHERE for: “Insurance services, namely, writing and underwriting insurance in the fields of property, liability, life, and casualty, and providing ancillary services thereto, namely, administration and claims adjustment; financial sponsorship of athletic events; financial sponsorship of charitable organizations.”

As it turns out, MAYHEM also serves as a branding metaphor and suggestive, federally-registered trademark for all kinds of different sporting goods offered by all sorts of brand owners: Scheels’ towable floats, Eastman’s archery arrows, Lost’s surfboards, Crosman’s airsoft guns, Rawlings’ lacrosse equipment, and Rawlings’ baseball bats.

So, not only are metaphors everywhere, but it appears even non-Allstate Mayhem is everywhere too, at least in the world of sports equipment.

Ahem, of course, none of that equipment would be appropriate for any of the athletic events sponsored by Allstate’s Mayhem.

By the way, in case you’re wondering, Havoc is everywhere too . . . .

With the constant stream of news reporting about the impending “fiscal cliff,” how can there be no U.S. federal trademark filings containing those two terms, at the moment anyway?

Federal intent-to-use trademark applications typically follow popular catchphrases (as Tiffany Blofield, Brent Lorentz and Jon Applebaum have written about before), even political ones:

Please forgive or at least indulge my political skepticism here, but I can’t help noting the irony that no one seems to want to really own the “fiscal cliff” catchphrase, or the problem.

So, what recent political catchphrases might be trademark-worthy branding assets in 2013?

Vice President Joe Biden recently revived popular use of the word “malarkey” or “malarky” — a word that essentially means “nonsense.”

Our DuetsBlog friend Nancy Friedman, author of the award-winning Fritinancy Blog, covered “Malarkey” as the “Word of the Week” earlier this month.

So, imagine my surprise to pass by a restaurant called Malarkys in Grand Rapids, Michigan this past weekend; I couldn’t resist pulling over to snap a picture.

Then, imagine my surprise to find this minivan parked in front of Malarkys!

I don’t know how long the business has operated under this name, and I don’t know how long the minivan has worn the Romney-Ryan signs or been parked there.

What I do know is that stories can be told to explain, interpret, and distort the fact of this photo. No doubt, some fiction, some non-fiction, and some just plain misleading.

Anyway, it got me thinking about how storytelling is currently a buzzword among branding specialists, and how important storytelling is in our political process too.

This photo is a fact, the photo is not doctored, and I didn’t stage the props in it — I simply captured what I spontaneously witnessed with my trusty iPad.

Yet, I have no doubt that loyalists on both sides of the aisle are fully capable of weaving or spinning a multitude of stories to explain the fact of this photo to their political advantage.

Care to share a story about this photo and start a dialogue?

The newest fare at the Minnesota State Fair is not Camel-on-a-Stick, Buffalo-on-a-Stick, or any other kind of Food-on-a-Stick, but rather, Trademark-on-a-Stick.

Earlier this week, the Minnesota State Fair (owned and operated by the Minnesota State Agricultural Society, a Minnesota State Agency) was hot to skewer the unauthorized use of its nearly three-decade-old and more recently trademarked logo, by incumbent Republican U.S. Congresswoman Michele Bachmann, in a political ad targeting DFL challenger Tarryl Clark’s record on tax policy.

This trademark objection has generated quite a bit of publicity, with coverage being reporting by MinnPost, The Minnesota Independent, the New York Times (blog), Politics Daily, MPR News, TPM, and Politico. The Bachmann ad referenced the MN State Fair and used its official logo while suggesting that Clark has voted to increase taxes on what foodies covet at the fair, including their favorite corn dogs, deep fried bacon, and beer.

Central in the debate over the lawfulness of the Bachmann campaign’s use of the logo is a question we have pondered on DuetsBlog before (e.g., here, here, and here), namely, whether the use of another’s logo crosses the legal line and is likely to cause confusion as to sponsorship, affiliation, approval, or endorsement, or whether it may constitute lawful nominative fair use. So, it should be no surprise to readers of DuetsBlog, that in the end, it is consumer understanding of the use in the ad that controls whether or not it is lawful.

The Minnesota State Fair’s objection certainly is not frivolous and is rooted in a common and traditional trademark concern over likelihood of confusion. Bachmann for Congress political ads begin with the statement: "I am Michele Bachmann and I approve this message." According to Minnesota State Fair officials, Bachmann’s use of the above Minnesota State Fair logo is likely to lead viewers to incorrectly believe that the Minnesota State Fair approves Congresswoman Bachmann’s message or has endorsed her campaign. What do you think, is that what viewers will believe?

Bachmann’s campaign denies that the logo use was unlawful, but without explaining why no confusion is likely and without specifically articulating what would likely be a nominative fair use defense, it voluntarily has decided to drop use of the official logo and instead opted to switch to a more "generic" image. Apparently what the campaign means by "generic" is not that it lacks the look of a trademark and/or logo, but rather is one not specifically used or owned by the Minnesota State Agricultural Society.

Bachmann for Congress’ revised television advertisement may be viewed here, showing no use of the trademarked official logo, but I’d hardly call the use "generic" — it remains a  logo use, even if it is a fake one that swaps fireworks for a ferris wheel, and alters the color scheme and typeface. Do you think that consumers will notice or recognize the fake logo as being fake or just believe it is an additional logo used by the MN State Fair that they haven’t seen before?

Interestingly, the change may not be enough to satisfy the MN State Fair. Apparently, it continues to have concerns about the revised Bachmann ad, and it has asked the Attorney General to look into the question of whether the change is sufficient to avoid confusion as to endorsement of the Bachmann campaign. Having said that, with only a few more days left before the close of the 2010 MN State Fair, one must wonder whether the campaign will move on and moot this lingering concern too, leaving the State Fair ads behind, as it continues to run new ads down the final stretch of the campaign.

Stay tuned, tomorrow I’ll attempt to make the case for why the State of Minnesota needs to hire an experienced trademark attorney.

Bonus political speech consideration below the jump:

Continue Reading Fair Logo, Fair Use & Fair Politics? The Minnesota State Fair’s Trademark-on-a-Stick

Weatherproof Ad: A Leader in Style

Jacket maker Weatherproof Garment Company took advantage of a GQ-style photo of the President standing in front of the picturesque Great Wall of China.

The White House was not pleased.

Smack in the middle of Times Square in New York – one of the busiest and most-watched intersections on Earth – stood a larger-than-life billboard featuring President Obama, in a Weatherproof jacket, in front of the Great Wall of China.

Now wait. Don’t we see the image of the President just about everywhere? Your local newspaper doesn’t need White House permission to feature the Pres on page 1, do they?

Of course not. But that’s different.

News organizations (even bloggers) can use the image or likeness of political figures – with a few exceptions – in editorial content. That can include all manner of news reports, commentary, and even political cartoons. It’s a sort of "fair use" interpretation and falls into the freedom of speech / freedom of the press continuum.

Clearly, that’s not what Weatherproof was doing.

The headline "A leader in style" is clever, yes (borrowing "style points" from the unarguably GQ-ish President), but could hardly be seen as political commentary. Whatever Weatherproof may have tried to claim, the company is hoping to sell jackets. Plain and simple.

At least, that’s how the White House interpreted it.

Last week, White House counsel Kendall Burman and Weatherproof spokesman Allen Cohen had a "cordial conversation" in which Mr. Burman reminded Mr. Cohen that public figures have a right to protect their likeness for commercial purposes. Needless to say, Weatherproof agreed to take down the billboards at the earliest possible time.

That said, it will be two weeks before the logistics line up to make that happen. Two weeks of continued visibility. Two weeks of continued buzz. All told, it will turn out to be a pretty good return on advertising investment.

Methinks Weatherproof knew exactly what it was doing when it flirted with the edge of the law.

This is gorilla advertising of the first order.

Yes, two billboards in Times Square aren’t the equivalent of stuffing flyers under windshield wipers at your local supermarket, but it’s still pretty darned creative. With a modest investment, and a cheap license fee from the Associated Press for the photo of the President in China, Weatherproof was able to generate disproportionate attention for their little campaign.

I have to admit, I took a look-see at the Weatherproof website. I need a new coat, and the one in the ad looks pretty good. Frankly, I never would have considered it otherwise. We’ll have to see what the ad does for sales on a larger scale, but my guess is the net-net will be positive.

But aren’t there any risks in this type of strategy?

Yes, certainly.

The President may engender good feelings for many people, and many people may view him as a style/trend leader, but those warm fuzzies are not universal. Does the Weatherproof brouhaha actually dissuade right-leaning buyers from the brand?

Perhaps.

But my guess is that Weatherproof understands its buyer demographics pretty well.

Was the campaign risky?  Yes. But did it pay off? I think ‘yes’ as well.

—Jason Voiovich, Principal and Co-Founder of Ecra Creative Group and Author of the State of the Brand weekly column