Section 2(a) of Lanham Act

The Cleveland Indian’s loss last evening in the World Series ensures that Chief Wahoo will not end the 2016 MLB season at Chicago’s Wrigley Field, but instead Cleveland’s Progressive Field:

WahooLogo

I’ve written before about how the Wahoo logo is the non-verbal equivalent of a racial slur and about the severe irony in Wahoo’s grotesque racist Native American caricature and mascot having his home in a place called Progressive Field.

More than seven years ago, it appeared that Cleveland was moving away from placing the Wahoo logo front and center, but that turned out to be wishful thinking, instead the continued use and attention has spawned fans to dress up in red face as Wahoo disciples.

It is actually a sad state of affairs for all of us, including those of us who love baseball, that Cleveland did not have the wisdom to retire a racist logo long ago. Where has the MLB leadership been on this issue? How about Cleveland’s main sponsor, Progressive Insurance?

The New York Times writes today about the offensive Wahoo logo: “A slur is a slur, and it needs to be retired.” Hat tip to James, thank you.

What will it take for Progressive Insurance to say, enough is enough, we don’t want Flo and our Progressive brand reputation to be wrapped up together with such racist imagery?

Last week the U.S. Supreme Court agreed to hear Mr. Simon Tam’s arguments and review the Court of Appeals for the Federal Circuit’s majority decision striking as unconstitutional Lanham Act Section 2(a)’s bar against the federal registration of disparaging matter, so it will decide the following issue, once and for all:

“Whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.”

As you may recall, Tiffany previously wrote how Dan Snyder’s Washington D.C. NFL franchise asked to have its district court loss and appeal jump over the 4th Circuit Court of Appeals to go directly to the Supreme Court, if the Court were to decide to hear the Tam case.

As much stock as the team has put in the constitutional challenge to defend its several R-Word registrations, found offensive and disparaging to Native Americans, I suspect Mr. Snyder and his lawyers don’t relish the idea of sitting on the sidelines while Mr. Tam’s counsel argues the constitutional issue to the Court.

Earlier today the Supreme Court denied the team’s request, so Snyder’s team of lawyers will have to sit out for that important oral argument, although I suspect they’ll be one of many to submit a written amicus brief, as a “friend of the court.”

Why doesn’t Dan Snyder instead focus on being another kind of friend and get on the right side of history? And, doesn’t Mr. Snyder’s refusal to ever consider a name change, even after losing the registrations, actually undermine his Free Speech challenge?

As you know, my view is that Section 2(a) of the Lanham Act should be upheld as constitutional:

Stay tuned for more and let’s hope that Georgetown Law School Professor Rebecca Tushnet’s insights on the constitutionality of Section 2(a) carry the day at the Court.

Above the Law recently published a Techdirt story reporting that the USPTO denied Whole Foods‘ attempt to federally-register the laudatory trademark: “World’s Healthiest Grocery Store“.

The Techdirt story incorrectly seems to suggest that the global nature of the phrase is what caused the application to be refused, since Whole Foods has not yet achieved a truly global reach, according to a Washington Post article.

Truth be told, actually there is no connection between the extent of Whole Foods’ global reach and the USPTO’s decision to initially refuse registration, contrary to the Techdirt story.

In fact, the USPTO didn’t focus on whether the phrase is true, because it is laudatory and “merely describes a feature or characteristic of applicant’s services,” such that the consuming public would view it as mere puffery, not susceptible to actual proof of its truth.

Had the USPTO thought the phrase was capable of proof and it disbelieved the claim, it would have sought to refuse registration under the deceptiveness registration bar of Section 2(a) of the Lanham Act, but it didn’t.

In fact, the USPTO offered up to Whole Foods — once it puts in evidence of its use of the phrase as a trademark — an amendment from the Principal to the Supplemental Register, a more suitable address for non-deceptive marks capable of becoming distinctive in the future.

Of course, one of the principal benefits of a Supplemental Registration is that it prevents others from registering confusingly similar marks while the brand owner works to build and acquire the requisite distinctiveness needed for a Principal Registration.

In the end, it will be interesting to see how Whole Foods responds to the USPTO’s laudatory and descriptiveness registration refusal.

I’m thinking before it jumps at the USPTO’s Supplemental Register offer, it may try to argue against the descriptiveness refusal in the same way it successfully did for its federally-registered “America’s Healthiest Grocery Store” trademark application, when back in 2010 it overcame a similar laudatory and merely descriptive registration refusal of the highly similar mark.

So, while it’s clear that the truth of the phrases comprising the those “healthiest” marks had nothing to do with the initial laudatory/merely descriptive registration refusals, what’s not clear to me is why the USPTO didn’t refuse registration based on a prior Supplemental Registration for “The World’s Healthiest Foods” mark — owned by these folks.

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?

The headline might be considered old news to some, but since intellectual property attorneys from around the world will be descending upon Minneapolis for the remainder of the week, and since I’ll be speaking tomorrow at the American Intellectual Property Law Association Spring Meeting at the Minneapolis Hilton, on the history and public policy behind denying the federal registration of scandalous trademarks, it just seems like news all over again.

SandroBotticelliVirginChild

Did you know that the first reported Court of Appeals decision on the trademark registration prohibition against scandalous matter interpreted Section 5(a) of the 1905 Trademark Act, predecessor to the current version of the law, Section 2(a) of the Lanham Act?

In Riverbank Canning Co., 95 F.2d 327 (C.C.P.A. 1938), a divided panel of the Court of Customs and Patent Appeals in Washington D.C., affirmed the Commissioner’s decision that had affirmed the USPTO Examining Attorney’s refusal to register MADONNA as a trademark for wine, as comprising scandalous matter under federal trademark law.

The majority held that “among all English-speaking peoples, the word ‘Madonna’ is generally understood to refer to the Virgin Mary or to a pictorial representation of the Virgin Mary.” And, while “Madonna” is not per se scandalous, it was in the context of wine trademarks circa 1938:

“We can readily understand that many who are accustomed to the use of wine as a beverage, remembering the use of it as a beverage in Biblical times, would not be shocked at the use of the word ‘Madonna’ or a representation of the Virgin Mary as a trade-mark upon wine used for beverage purposes; but we also believe that there are many wine users who, knowing that the excessive use of wine is a great evil and not uncommon, would be shocked by such use of said mark upon wine, especially in view of the fact that such mark would probably be displayed among other places, in barrooms.”

“In our opinion, to commercialize the name of, or a representation of, the Virgin Mary as a trade-mark is of very doubtful propriety, and we feel certain that its use upon wine for beverage purposes would be shocking to the sense of propriety of nearly all who do not use wine as a beverage, and also to many who do so use it; therefore, we think such use of the word ‘Madonna’ would be scandalous and its registration prohibited under said trade-mark act.”

That viewpoint and decision finding scandal with the use of MADONNA as a trademark for wine was reaffirmed decades later in 1959, when a German company tried and failed to convince the Trademark Trial and Appeal Board (TTAB) that the result should be any different under the prohibition against registration of scandalous matter under Section 2(a) of the Lanham Act. P.J. Valckenberg, GmbH, 122 U.S.P.Q. 334 (TTAB 1959).

But something must have happened between 1959 and 2008, when a persistent Valckenberg tried again and again, until finally no scandalous refusal was lodged by the USPTO, finally allowing MADONNA to become federally-registered for wine in 2008:

MadonnaWineI’m thinking another meaning of MADONNA began to emerge — circa 1979 –that altered and distracted from the previous and exclusive reference to the Virgin Mary relied upon by decision makers in the prior cases mentioned above, maybe this:

Madonna

Keep in mind that the relevant public for purposes of determining whether the mark in question violates the “scandalous” language of Section 2(a) is the general public. And, to support a refusal on the ground that a mark is scandalous, the USPTO’s assigned examining attorney must provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. In re Mavety Media, 33 F.3d 1371-72, 31 USPQ2d 1925-26 (Fed. Cir. 1994); TMEP 1203.01.

In other words, the times they are a changing, and if an edgy brand owner waits long enough, what was once considered scandalous matter might later be considered in vogue (pun intended), making it available subject matter for federal trademark registration, i.e., Madonna Wine.

And, now that the word MADONNA apparently lacks any commercial edginess, it appears Ms. Ciccone is migrating to a more truncated version with fewer vowels: MDNA.

What’s next, perhaps even more truncation to a single letter, can you say AlphaWatch?

Let’s hope not, for a variety of reasons.

In other words, let’s hope the Supreme Court straightens out the unfortunate ruling last week that the federal government is powerless to deny requests to federally register marks on grounds that they consist of or comprise racial slurs or other matter that may disparage persons.

The CAFC previously agreed with the USPTO and TTAB that THE SLANTS mark for “entertainment in the nature of live performances by a musical band,” may disparage persons of Asian descent, in violation of Section 2(a) of the Lanham Act, so it affirmed the registration refusal. Then this.

The decision stirring up the most recent discussion is the en banc majority decision from the CAFC that now purports to invalidate the nearly 70-year old disparagement portion of Section 2(a), as a violation of Applicant Tam’s right to Free Speech.

As dissenting Circuit Judge Lourie noted in amazement:

“[O]ne wonders why a statute that dates back nearly seventy years — one that has been continuously applied — is suddenly unconstitutional as violating the First Amendment. Is there no such thing as settled law, normally referred to as stare decisis? Since the inception of the federal trademark registration program in 1905, the federal government has declined to issue registrations of disparaging marks. The Trademark Act of 1905 provided specific authority to refuse to register immoral or scandalous marks; the USPTO refused to register disparaging marks on those grounds before the Lanham Act of 1946 was enacted, which explicitly incorporated a disparagement proscription. The USPTO’s authority to refuse to issue trademark registrations with certain offensive content has thus existed in U.S. law for over one hundred years.” (citations omitted)

The majority decision explicitly reinstated the previous “holding that Mr. Tam’s mark is disparaging,” but it went on to declare the disparagement portion of Section 2(a) unconstitutional, and then believing the federal government powerless to deny registration on disparagement grounds, it appeared to lament or at least “recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities.”

I’m believing that Congress has the power to direct the USPTO to withhold registration and the issuance of a Certificate of Registration if the subject matter consists of or comprises matter that may disparage persons or bring them into contempt or disrepute.

After all (and in addition to the valid points raised by dissenting Circuit Judge Lourie about publication in the Official Gazette), Section 7 of the Lanham Act explicitly confirms that a Certificate of Registration is issued in the “name of the United States of America” and has the federal government’s fingerprints all over it:

“Certificates of registration of marks registered upon the principal register shall be issued in the name of the United States of America, under the seal of the United States Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon, and a record thereof shall be kept in the United States Patent and Trademark Office.” (emphasis added)

As I’ve cautioned before, conflating the federal government’s act of approving registration and issuing a Certificate of Registration with the Applicant’s underlying trademark is an improper analysis of the First Amendment question:

“There is no question that a trademark communicates information about an underlying brand, but the Certificate of Registration communicates something quite different — the piece of heavy stock paper with the words in fancy script “United States of America” and “United States Patent and Trademark Office,” across the top, and the golden Official Seal of the USPTO (including a reference to the Department of Commerce) located in the lower left hand corner of the Certificate of Registration, also appearing above the signature of the Director of the USPTO (who is also Under Secretary of Commerce for Intellectual Property), an employee of the federal government and principal advisor to the President of the United States — what this valuable piece of paper communicates is an official act of the federal government that it has examined and approved the trademark for federal registration and exclusive protection in United States commerce.”

Dissenting Circuit Judge Lourie said it even better this way:

“[F]ederally registered trademarks can be identified with two message contexts: one from the provider of goods or services, who has chosen to use a certain mark to link its product or services to itself, and one from the government, which has deemed the mark qualified for the federal registration program. The evaluation of disparagement is not based on the government’s moral judgment, despite any distaste expressed in its briefing for cancelled or applied-for marks; a mark is disqualified based only on evidence of its perception by the affected persons. The government action does not include a judgment on the worthiness or the effectiveness of the mark; if it did, it might — but not necessarily — venture into viewpoint-discrimination territory. And while a trademark alone, as a word placed on private property, is not government speech, once it claims that federally registered status, it becomes more than the private owner’s speech. It is not simply private speech as is the holding of a placard in a parade.”

There is so much more to say, but just to make sure the context of the Tam case is crystal clear in the meantime, exactly whose signature would appear on THE SLANTS Certificate of Registration, if the majority of the CAFC viewpoint prevails?

Well, the current Director of the USPTO is a very accomplished woman named Michelle K. Lee, who happens to be “a first generation Chinese-American” (as reported by AllGov):

USPTODirectorLeeLast, at least for now, and more to the point about the majority’s recognition that (if their ruling is upheld) even more registrations are likely to issue for offensive marks, let’s hope that the USPTO’s power outage that commenced on December 22, the same day the CAFC issued its en banc ruling in In Re Tam, was a complete coincidence and not triggered by a flood of trademark filings for other racial slurs.

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.

Remember a while back when many were humming to the tune “What Does the Fox Say“?

Today, I’m asking, what does the trademark registration say? Not, what does the trademark say — that is a different and more complicated question, depending on the specific mark, but at a minimum, answering that question involves the meaning and attributes of the underlying brand.

The trademark registration — as opposed to the trademark itself — is a piece of paper issued by the federal government with its literal and figurative signatures and fingerprints all over it.

There is no question that a trademark communicates information about an underlying brand, but the Certificate of Registration communicates something quite different — the piece of heavy stock paper with the words in fancy script “United States of America” and “United States Patent and Trademark Office,” across the top, and the golden Official Seal of the USPTO (including a reference to the Department of Commerce) located in the lower left hand corner of the Certificate of Registration, also appearing above the signature of the Director of the USPTO (who is also Under Secretary of Commerce for Intellectual Property), an employee of the federal government and principal advisor to the President of the United States — what this valuable piece of paper communicates is an official act of the federal government that it has examined and approved the trademark for federal registration and exclusive protection in United States commerce.

By way of example, in all its glory, remember this little gem from the archives:

DuetsBlogRegistration

Although the USPTO certainly got it right with our registration, there are times when the USPTO makes a mistake and is asked later to correct it. The United States District Court for the Eastern District of Virginia recently corrected the USPTO errors from decades ago in improperly issuing federal registrations for a racial slur, in violation of Section 2(a) of the Lanham Act. So, as we know from the Washington football NFL franchise’s continued fight to keep the R-Word, the USPTO hasn’t always gotten it right from the outset, and since we’re talking about important matters of public policy here, Congress determined long ago that there is no statute of limitations on getting it right, petitions to cancel on these public policy grounds can be brought “at any time.”

So, when the issuance of a trademark registration would violate public policy, on disparagement, deceptiveness, or other public policy grounds, under current law, the federal government (i.e., The United States Patent and Trademark Office, part of the United States Department of Commerce) is required to refuse registration under Section 2(a) of the Lanham Act. Issuing a Certificate of Registration is the federal government saying, the trademark in question, doesn’t violate any of these statutory bars. And, when the statutory bars are violated, the federal government must refuse registration on Section 2(a) grounds, yet the trademark applicant is free to continue using the trademark in commerce, the right to use is not negated.

As you will recall, some are working hard to have the disparagement bar on federal registration of trademarks found unconstitutional on First Amendment grounds, contending that revoking the government-issued trademark registrations chills their freedom of speech. Those arguments failed in the Eastern District of Virginia, so let’s all stay tuned for how the Court of Appeals for the Fourth Circuit handles them, as it reviews the Eastern District of Virginia decision, and let’s all stay tuned for when the same arguments are made in another case involving another racial slur involving Asian Americans, before the Court of Appeals for the Federal Circuit later this year.

In the end, because the federal government’s act of registration and issuance of a Certificate of Registration, communicates the federal government’s approval of the trademark as being suitable and appropriate for federal registration and protection, the trademark registrations in question involve no speech by the trademark owner, the valuable pieces of paper are purely and 100% governmental speech, taking them outside First Amendment scrutiny. I’m thinking that efforts to conflate the communicative value of a trademark and underlying brand (admittedly the trademark owner’s speech) with the trademark registration itself (the government’s speech about the trademark) will prove unsuccessful.

What do you think?

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.

My father-daughter time was wonderful in London when the news hit about the USPTO ordering cancellation of the six “Washington Redskins” trademarks as disparaging to Native Americans.

Thanks for your patience in waiting for my perspective on the subject — you know I’m thrilled if you know me well, if you know of my involvement in the first successful challenge, or if you’ve read any of my writing here on the topic:

Because so much has been written already on the decision over the past two days, instead of me summarizing or explaining the decision here in detail, I’d suggest you take a look at John Welch’s or Susan Neuberger Weller’s solid coverage of the decision.

What I will say quite happily is that the decision is tight, focused, well-reasoned, and built to withstand the team’s promised appeal.

What I can’t explain is why the team continues to deny what has become so obvious to so many people: The R-Word must go.

Let’s start the countdown now, and don’t forget my prediction from November 2009:

“Some day, I don’t know when, justice will prevail, and some talented branding guru will make a tidy sum re-naming and re-branding this offensive NFL franchise name that could have and should have been re-named long ago.”

So, justice has prevailed (again), and now we’re hopefully getting closer to the second part of my prediction, the re-naming part . . . .

There has been quite a bit of interest in how this trademark dispute started. If you’re interested in the origin of this trademark challege and how it was inspired, here is a New York Times piece from last Fall, and even more recently, here is a piece from the Wall Street Journal:

Next target? How about the registered trademark comprising the visual equivalent of the R-Word?