Section 2(c) of the Lanham Act

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?