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?

Happy Halloween from DuetsBlog! I write today regarding a scary subject: unregistered intellectual property. The horror! Ask any IP professional about registration, and you’re likely to hear that registration is one of the most important steps in protecting IP. Whether it is a patent, trademark, or copyright, registering IP often provides the IP owner greater rights than if the IP was unregistered. There is sometimes an exception for trade secrets, but that’s for another time…

A scary place for some; credit: Gen. Progress

Registering IP, specifically copyrights, may become even more crucial in the future. One of the most important upcoming U.S. Supreme Court cases this term–which begins in October (coincidental?)–is Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. The appeal addresses the question of whether the creator of an unregistered work may sue for copyright infringement so long as the creator has applied for a copyright on the work, rather than requiring the creator to wait for the Copyright Office to register the work. The dispute comes down to 17 U.S.C. § 411(a), which provides that:

no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

Currently, the Fifth and Ninth Circuit Courts of Appeal have held that creators may sue for infringement as soon as they file the appropriate paperwork and fees for registration. Importantly, the Ninth Circuit encompasses Hollywood, providing greater protection to many of the nation’s creators. I ran into this issue myself on a case in these venues, and thankfully the law in these jurisdictions supported bringing a claim for copyright infringement without awaiting registration.

The Tenth and Eleventh Circuits have held that filing for registration is insufficient; a creator must have obtained preregistration or actual registration to sue for infringement. It’s the stuff of nightmares for procrastinating creators in Wyoming, Utah, Colorado, Kansas, New Mexico, Oklahoma, Alabama, Georgia, and Florida!

But creators around the country, especially in Hollywood, let out a collective shriek when the federal Government filed a brief in support of the Tenth and Eleventh Circuits, arguing that “a copyright-infringement suit may not be filed until the Register of Copyrights has either approved or refused registration of the work.” Beyond the statutory arguments in support of this position, the Government argued that  “although…the registration requirement may temporarily prevent copyright owners from enforcing their rights, that is the intended result of a congressional design to encourage prompt registration for the public benefit.”

Maybe the Government is right; requiring registration will certainly encourage registration. But on the other hand, many small creators either do not have the time or resources to seek registration for every work. However, even in cases in which there is copying, a creator can file an expedited application for registration, which sometimes results in a decision in less than a week.  So perhaps the rule from the Tenth and Eleventh Circuits isn’t that scary after all. A non-expedited application can take months, though. Thus, the rule from the Fifth and Ninth Circuits provides greater protections to creators who may face copying immediately after creating a work and who do not have the ability to file an expedited application. We’ll see what’s in the Supreme Court’s candy bowl this term. To be continued…

It’s not every day you’re presented with the unique opportunity of seeing and hearing the Chief Justice of the United States Supreme Court live in your own backyard, thanks very much Caleb!

Tuesday was that day, Chief Justice John G. Roberts, Jr. was here in Minneapolis for the 2018 Stein Lecture at the University of Minnesota’s Northrup Auditorium, as the Star Tribune reported.

SCOTUSBlog had this to say about the Chief Justice’s remarks. To listen to a recording of the event, to a sell out crowd of 2,700, check out MPR’s coverage, here.

Others reporting on this event don’t appear to care about trademarks as much as we do, so this may be the only place you’ll learn about Justice Roberts’ remarks relating to trademarks.

As you can imagine, knowing the vast body of legal subject matter confronted by the Supreme Court, clearly my ears perked up in hearing Justice Roberts utter the word “trademark” five times!

Moderator Robert Stein, former University of Minnesota Law School Dean, asked Chief Justice Roberts whether any highly technical subject matter might be unsuited for the Court to decide.

My mind went to the creation of the CAFC in 1982, specifically designed to hear all federal district court patent appeals, yet the Supreme Court has repeatedly reversed the CAFC since 2005.

Justice Roberts never mentioned the CAFC, instead he waxed a bit about trademark expertise:

“My answer, I think is, no, because usually no matter how complex and involved the legal issue, the case may seem, it implicates a broader legal question about, you know, the statute may be complicated, but the question is going to be, well, how do you go about reading the statute, what sources do you look at in a particular case. We don’t take technical legal cases because we like technical legal cases. They’re usually because they implicate a broader question. When I was practicing law, this is a speech I gave a lot of times, because I was not an expert in any area of the law. I like to think of myself as somebody who was good arguing in a particular court, in the Supreme Court, and so I’d have to, you know, convince someone who comes in with an important trademark case, who could hire the world’s leading expert in trademark law, or me.  And, I would tell them, look, the Supreme Court does not think your case is a big deal for trademark law. It thinks your case is a big deal for how regulations relate to the statute, how particular provisions in the statute should be read. So, you need somebody who, you know, can look at it in that broader perspective that the justices do, and you know, I would say, half of the time, they would say, well, I actually want somebody who knows something about trademark law, and that was understandable, but, then it would be, and, you know, they would get there in front of the Court, and they’re too expert in trademark law, and the justices just aren’t that interested in a lot of those nuances, and sometimes they would just be speaking over each other.”

My ears also perked up with Justice Roberts’ remarks about the Court’s fewer decisions:

“We have particular criteria for the cases we want to take. Obviously, if any court finds an Act of Congress unconstitutional, we will take it, we think as a matter of comity to the branches across the street, we should be the ones to say that, if any court is . . . .”

Do you see where I’m going with that remark, dear readers? I’m thinking about Erik Brunetti.

As you will recall, presently before the Supreme Court, is whether to hear the Brunetti case, and the issue presented in Brunetti is:

“Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

Given the clarity of Justice Roberts’ statement, “if any court finds an Act of Congress unconstitutional, we will take it,” I’ll be amending my prediction otherwise, since the CAFC did just that, in Brunetti.

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.

Trademarks consisting of or comprising “scandalous or immoral” matter still won’t be granted federal registration “in the name of the United States of America,” at least for the time being.

Immediately on the heels of the International Trademark Association’s 140th Annual Meeting in Seattle, and our well-received panel discussion concerning Trademarks and Free Speech, the United States Patent and Trademark Office announced it will continue to hold on to and suspend trademark applications containing scandalous or immoral matter, until further notice.

The Trademark Office is waiting to see whether the federal government will appeal the Brunetti decision to the U.S. Supreme Court. What I would give to be a fly on the wall in those discussions.

As you may recall, a three-member panel of the Court of Appeals for the Federal Circuit (CAFC), ruled last December that the “scandalous or immoral” statutory bar to registration violates a trademark applicant’s Free Speech, overturning a part of trademark law in existence since 1905.

Since the federal government’s request that the entire CAFC reconsider the three-member panel decision Brunetti was denied in April, the government now has until July 11 to seek Supreme Court review or ask for more time to decide, stay tuned. Learned John Welch predicts no appeal.

During our INTA panel discussion, I predicted the government will seek review of Brunetti by the U.S. Supreme Court. I also predicted the Supreme Court will pass on the request, stay tuned.

Even if it might be tempting to believe that — in our present culture — anything goes and nothing can rise to the level of scandalousness any longer, so why bother trying to salvage a statutory relic from more than 100 years ago, I’m thinking the federal government won’t throw in the towel yet.

As we’ve written before, the Brunetti decision, didn’t anchor itself to the viewpoint discriminatory requirement from the Supreme Court in Tam, instead focusing on mere content discrimination to justify invalidation of a more than a century old part of federal trademark law.

This much easier test for invalidation puts at risk many other portions of federal trademark law, so I’m thinking the federal government can’t let the mere content discriminatory requirement of Brunetti stand without at least trying for Supreme Court review for further direction and guidance.

It’s also hard to believe the federal government is truly ready to have the USPTO knowingly begin to federally register obscene, profane, and sexually explicit matter as trademarks, “in the name of the United States of America,” for the first time in history. What’s your prediction?

UPDATE: Susan Decker of Bloomberg interviewed and shares quotes yours truly on the subject, here.

Five months ago to the day, I predicted that the U.S. Supreme Court would uphold inter partes review (“IPR”) proceedings at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) as constitutional in Oil States v. Greene Energy. On April 24, 2018, the Court so-held.

Back in November, the questions at oral argument in Oil States raised numerous intriguing issues:

  • Whether IPR proceedings are “examinational” rather than “adjudicatory.”
  • Distinctions between “public rights” and “private rights.”
  • The relevance of 19th-century cases on patents, such as McCormick v. Aultman.
  • The interplay of due process, given a patentee’s usually-substantial investment in the patented invention and reliance on the patent grant.
  • Opportunities for subsequent appellate review.

So which of these became the deciding issues in the Court’s opinion? Ironically, Justice Thomas–who has been known to refrain from questions at oral argument and was the only Justice not to ask a question during oral argument in this case–wrote for the 7-Justice majority. Justice Gorsuch wrote a dissenting opinion.

First, the majority held that IPR proceedings do not violate separation of powers by invading the sphere of the Judiciary under Article III of the Constitution:

When determining whether a proceeding involves an exercise of Article III judicial power, this Court’s precedents have distinguished between “public rights” and “private rights.” Those precedents have given Congress significant latitude to assign adjudication of public rights to entities other than Article III courts.

Recognizing that the Court has not been clear on this distinction, the Court provided some clarity:

[T]he public-rights doctrine applies to matters “‘arising between the government and others, which from their nature do not require judicial determination and yet are susceptible of it.’” Inter partes review involves one such matter: reconsideration of the Government’s decision to grant a public franchise.

Inter partes review falls squarely within the public-rights doctrine. This Court has recognized, and the parties do not dispute, that the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration. Thus, the PTO can do so without violating Article III.

The Court went on to incorporate Article I, Section 8, Clause 8 of the Constitution, which gives Congress the power to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”:

Congress can grant patents itself by statute. And, from the founding to today, Congress has authorized the Executive Branch to grant patents that meet the statutory requirements for patentability. When the PTO “adjudicate[s] the patentability of inventions,” it is “exercising the executive power.”

Inter partes review is “a second look at an earlier administrative grant of a patent.”  The Board considers the same statutory requirements that the PTO considered when granting the patent…. So, like the PTO’s initial review, the Board’s inter partes review protects “the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope,” Thus, inter partes review involves the same interests as the determination to grant a patent in the first instance.

The primary distinction between inter partes review and the initial grant of a patent is that inter partes review occurs after the patent has issued. But that distinction does not make a difference here. Patent claims are granted subject to the qualification that the PTO has “the authority to reexamine—and perhaps cancel—a patent claim” in an inter partes review. Patents thus remain “subject to [the Board’s] authority” to cancel outside of an Article III court.

This Court has recognized that franchises can be qualified in this manner. For example, Congress can grant a franchise that permits a company to erect a toll bridge, but qualify the grant by reserving its authority to revoke or amend the franchise.

The Court then went on to distinguish 19th-century cases appearing to state that patents are private, not public, rights:
To be sure, two of the cases make broad declarations that “[t]he only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent.” (citing McCormick) But those cases were decided under the Patent Act of 1870. That version of the Patent Act did not include any provision for post-issuance administrative review. Those precedents, then, are best read as a description of the statutory scheme that existed at that time. They do not resolve Congress’ authority under the Constitution to establish a different scheme.

The Court also noted that even the English legal system, from which the U.S. derives many of its principles, contained a similar patent revocation process by petition to the Privy Council:

The Patent Clause in our Constitution “was written against the backdrop” of the English system. Based on the practice of the Privy Council, it was well understood at the founding that a patent system could include a practice of granting patents subject to potential cancellation in the executive proceeding of the Privy Council. The parties have cited nothing in the text or history of the Patent Clause or Article III to suggest that the Framers were not aware of this common practice. Nor is there any reason to think they excluded this practice during their deliberations.

For similar reasons, we disagree with the dissent’s assumption that, because courts have traditionally adjudicated patent validity in this country, courts must forever continue to do so.

The Court also rejected the argument that because IPR “looks like” the exercise of Article III judicial power, it is infringing on that power. And it “emphasize[d] the narrowness of [its] holding,” noting that appellant Oil States had not raised a due process challenge. Finally, the Court held that IPR proceedings do not abridge the “right of trial by jury” under the Seventh Amendment because Congress properly assigned the matter of patent rights to adjudication before the PTAB.

Justices Breyer, Ginsburg, and Sotomayor concurred, stating only that the opinion “should not be read to say that matters involving private rights may never be adjudicated other than by Article III courts, say, sometimes by agencies.”

Justices Gorsuch and Chief Justice Roberts dissented:

Today, the government invites us to retreat from the promise of judicial independence. Until recently, most everyone considered an issued patent a personal right—no less than a home or farm—that the federal government could revoke only with the concurrence of independent judges. But in the statute before us Congress has tapped an executive agency, the Patent Trial and Appeal Board, for the job. Supporters say this is a good thing because the Patent Office issues too many low quality patents; allowing a subdivision of that office to clean up problems after the fact, they assure us, promises an efficient solution. And, no doubt, dispensing with constitutionally prescribed procedures is often expedient. Whether it is the guarantee of a warrant before a search, a jury trial before a conviction—or, yes, a judicial hearing before a property interest is stripped away—the Constitution’s constraints can slow things down. But economy supplies no license for ignoring these—often vitally inefficient—protections. The Constitution “reflects a judgment by the American people that the benefits of its restrictions on the Government outweigh the costs,” and it is not our place to replace that judgment with our own.
This dissent is not at all surprising, given that during oral argument both Justices asked questions that suggested they doubted that patents were public rights. It goes on to say:
Article III, explains that the federal “judicial Power” is vested in independent judges. As originally understood, the judicial power extended to “suit[s] at the common law, or in equity, or admiralty.” From this and as we’ve recently explained, it follows that, “[w]hen a suit is made of the stuff of the traditional actions at common law tried by the courts at Westminster in 1789 … and is brought within the bounds of federal jurisdiction, the responsibility for deciding that suit rests with” Article III judges endowed with the protections for their independence the framers thought so important.
The dissent disputed the relevance and value of the references to the Privy Council, colorfully stating that the cases cited by the majority “represent the Privy Council’s dying gasp in this area.” And Justice Gorsuch embarked on a history lesson about the early years of our Republic. Wrapping up, the dissent expressed concern:
Today’s decision may not represent a rout but it at least signals a retreat from Article III’s guarantees. Ceding to the political branches ground they wish to take in the name of efficient government may seem like an act of judicial restraint. But enforcing Article III isn’t about protecting judicial authority for its own sake. It’s about ensuring the people today and tomorrow enjoy no fewer rights against governmental intrusion than those who came before. And the loss of the right to an independent judge is never a small thing. It’s for that reason Hamilton warned the judiciary to take “all possible care … to defend itself against” intrusions by the other branches. It’s for that reason I respectfully dissent.
As demonstrated by the Court’s opinion and the dissent, the primary issue was whether patents were public or private rights. The majority held they were public, between the government and the grantee, and its other holdings flowed from that decision. The dissent deemed patents private, akin to land grants and other personally-held rights, citing cases such as McCormick. In the end, due process did not play a role in the majority’s decision, but seemed to justify the dissent’s view that IPR proceedings are a form of Executive Branch encroachment. Given the majority’s explicitly-narrow holding and the dissent’s concerns, my guess is that the Court will be revisiting Oil States on a related issue in the near future. As always, stay tuned!

 

On Monday, November 27, 2017, the U.S. Supreme Court heard argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712. The case presents a direct challenge to the U.S. Patent and Trademark Office’s (“USPTO’s”) “inter partes review” (“IPR”) process, under which third parties can petition the USPTO’s Patent Trial and Appeal Board (the “PTAB”) to cancel one or more claims of an already-issued patent.

Photo Credit: Fox

ScotusBlog recently offered a brief introduction to Oil States’s “remarkably pedestrian” backstory:

Petitioner Oil States sued respondent Greene’s Energy, contending that Greene’s Energy was infringing a patent that Oil States holds on technology useful for preserving wellhead equipment in the oil and gas industry. Predictably, Greene’s responded by seeking inter partes review, hoping that the PTO would invalidate the Oil States patent. When the PTO concluded that the patent in fact was invalid, Oil States raised the stakes, arguing that Congress violated Article III and the Seventh Amendment when it authorized an administrative agency to invalidate the patent without affording Oil States an opportunity for a jury trial.

If the Supreme Court decides that IPR is unconstitutional, the holding will have major consequences. As an initial matter, many would-be litigants have chosen to pursue IPR petitions instead of patent defenses or claims in court because the IPR process is faster and more cost-effective than federal litigation. For example, a typical medium-sized patent dispute costs around $3M to litigate in federal court, but IPR proceedings are one-tenth the cost. The average time to trial is around 2 years, 3 months, whereas IPR proceedings take just over half as long to conclude. In addition to offering advantages to litigants, IPR proceedings have played a significant role in lightening the federal patent docket, addressing more than 1,000 patent cases with dispositive effect. Usually, patent cases are stayed pending an IPR proceeding. Thus, the IPR process in many cases eliminated the need for protracted federal litigation.  

As Oil States neared oral argument, several commentators offered their take on how the case might turn out. But the Justices’ questions at oral argument provide better hints at whether affirmance or reversal will result:

Right out of the gate, Chief Justice Roberts asked the petitioner, Oil States, to explain its distinction between the USPTO’s post-grant procedures that are “examinational” in nature, versus those which are adjudicative. The distinction relates to the federal government’s separation of powers between its three branches, with the judiciary serving the role of adjudicating disputes–as provided by Article III, which vests the “judicial power” in the federal courts. Getting to the heart of the matter, Justice Sotomayor asked, “What is so fundamentally Article III that changes [the IPR] process into an Article III violation?” Suggesting an answer to her own question, the Justice stated, “Both [IPR processes and other post-grant processes] are just informing the PTO of the nature of its error and giving it an opportunity to correct its error.” Justice Ginsburg later chimed in: “[IPR] is geared to be an error correction mechanism and not a substitute for litigation.” Justice Breyer appeared to agree, stating, “I thought it’s the most common thing in the world that agencies decide all kinds of matters through adjudicatory-type procedures often involving private parties. So what’s so special about this one…?” Justice Kagan remarked, “it seems a little bit odd to say, sure, the government can reexamine this…but there’s some line that falls short of what” is constitutional.

Justice Gorsuch suggested that the distinctions between permissible examination and impermissible adjudication could be avoided by focusing on whether there is a private or public right involved, the idea being that public rights (e.g., licenses) need not be adjudicated by an Article III court. Justice Kennedy asked, “[C]ould Congress say…we will grant you a patent on the condition that you agree to this procedure; otherwise, we don’t give you the patent?” Justice Alito later asked a similar question. Justice Kennedy followed up, “Could Congress say that we are reducing the life of all patents by 10 years?” When counsel for Oil States answered yes, he responded, “Well, then that–doesn’t that show that the patent owner has limited expectations as to the scope and the validity of the property right that he holds?” Justice Gorsuch begged to differ, however, stating “we have a number of cases that have arguably addressed this issue…in which this Court said the only authority competent to set a patent aside or to annul it or to correct it for any reason whatever is vested in the courts of the United States.” But Justice Sotomayor, seemingly rejecting that argument, stated that at least one of the cases cited by Justice Gorsuch (McCormick v. Aultman) did not involve determinations of constitutional law, nor did it involve statutory analysis of post-grant procedures because none were applicable or available at the time that case was decided.

Turning to the respondent, Greene’s Energy, Justice Breyer fired off the first question, asking whether it was a “problem” that a company could invest $40B in developing a patent and could have it for 10 years before an IPR proceeding cancelled the patent. He asked, “Is there something in the Constitution that protects a person after a long period of time and much reliance from a reexamination at a time where much of the evidence will have disappeared,” suggesting a due process-flavored argument. Chief Justice Roberts followed up, asking whether Greene’s Energy’s position is that “If you want the sweet of having a patent, you’ve got to take the bitter that the government might reevaluate it at some subsequent point.” Finding agreement, he said, “Well, haven’t our cases rejected that…proposition? I’m thinking of the public employment cases, the welfare benefits cases. We’ve said you…cannot put someone in that position.”

The discussion shifted to whether the availability for subsequent judicial review of the PTAB’s IPR decisions bears on IPR’s constitutionality. Justice Sotomayor remarked, “That..was what troubled me deeply about you telling Justice Kagan that, without judicial review, that this would be adequate. I mean, for me, this–what saves this, even a patent invalidity finding, [is that it] can be appealed to a court….[H]ow can you argue that the…PTO…has unfettered discretion to take away that which it’s granted?”

Justice Gorsuch again brought up the public-private rights distinction, noting that “there’s an abundance of law going back 400 years. Justice Story says it. I mean, you know, this is not a new idea, that once [a patent is] granted, it’s a private right belonging to the inventor.”

Finally, the Court turned its attention to the Government’s argument. Justices Gorsuch and Roberts asked about the “bitter with the sweet” argument. The Government responded that employment and welfare decisions are often made by executive officials and must always comport with due process, but need not be adjudicated by courts in the first instance.

Justices Breyer and Roberts then steered the conversation toward factors that might help distinguish private rights from public rights. Justice Breyer expressed the view that the large investment underlying a patent might justify a due process or takings clause argument, but the Government responded that there is no as-applied challenge in this case.

The Government also brought up the adjudication versus examination point, arguing that IPR is distinct from typical judicial functions, which involve determining liability between private litigants and assessing monetary damages. For example, an infringement action involves determining liability for use of a patented idea and the reasonable royalty damages that should be paid for that use. IPRs, on the other hand, merely address patentability and do not involve liability or damages. The Government also noted that the executive frequently employs adjudicative proceedings to take appropriate executive action. IPR is no different.

In the end, as always, divining the eventual decision from the Justices’ questioning is more art than science–no puns intended. Justices Sotomayor, Ginsburg, Breyer, and Kagan all appear to endorse the view that IPR proceedings do not violate separation of powers. Justices Kennedy and Alito also seem to fall in the same camp. On the other hand, Justices Breyer, Roberts, and Sotomayor’s questions suggest that these Justices think there may be serious due process concerns. Only Justices Gorsuch, Breyer, and Roberts were interested in the public rights versus private rights distinction, but two of those Justices expressed doubts about the distinction’s defining features. If I had to call it, I would guess that the Court will find that IPRs, as currently structured, do not violate separation of powers or due process and are therefore constitutional. Stay tuned for updates on this important case.

— Jessica Gutierrez Alm, Attorney

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.

— Jessica Gutierrez Alm, Attorney

Many of us have been eagerly waiting to see whether the Supreme Court would consider Google’s potential genericness.

As Martha explained, the case began in 2012, after petitioners Chris Gillespie and David Elliot attempted to register hundreds of web domains that included the word “Google” together with a variety of different people, products, and brands (i.e., googlestarbucks.com).  Google objected to the registrations, and Elliot filed a complaint (joined by Gillespie) in federal district court.  Elliot and Gillespie argued that “google” had become a generic term due to its common use as a verb.  The district court ruled against Elliot and Gillespie on summary judgment.

On appeal, the Ninth Circuit affirmed the lower court’s opinion.  As Tucker discussed recently, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  The court clarified that the mere act of using the term as a verb does not render the mark generic unless it is used to refer to a type of good or service (i.e. an internet search generally).

Without comment, the Supreme Court denied Elliot’s and Gillespie’s petition for review.  (Notably, of the 7,000-8,000 petitions filed each year, the Supreme Court grants and hears argument in only about 80 of them.)

While Google is surely celebrating the Supreme Court’s refusal to hear the case, Band-Aid, Xerox, and Rollerblade are cheering right along with them, while cellophane, aspirin, and thermos look on with envy.

Over the weekend, IPBiz reported that WWE (World Wrestling Entertainment) has filed an application to register 3:16 as a trademark for clothing items.

A Google search confirms that 3:16 has religious significance as it is a common truncation that signifies one of the most widely quoted verses from the Bible, namely, John 3:16.

Despite other confusing media reports that the WWE has “trademarked” 3:16, IPBiz is correct that an intent to use trademark application was filed by WWE at the end of July.

While I could hazard a guess, technically it is presently uncertain whether WWE intends a religious meaning, at least from the application file, as no specimen of use is of record yet.

Ironically, our firm’s firewall leaves me to hazard a guess on WWE’s intended meaning too.

Yes, our sturdy firewall has deemed anything appearing on the WWE website to be “unsafe or unsuitable” for access, so we may need the kind assistance of our dear readers to assist in our understanding of the meaning intended by the WWE for this claimed mark.

Either way, it will be interesting to follow the USPTO’s examination of this application, given the newly minted Examination Guide 2-17 on “Merely Informational Matter,” which directly targets religious matter, among other matter (citations omitted from below quote):

Some proposed marks comprise direct quotations, passages, or citations from religious texts (e.g., JOHN 3:16 and I AM THE WAY, AND THE TRUTH, AND THE LIFE. NO ONE COMES TO THE FATHER EXCEPT THROUGH ME).  Religious texts are holy books or scriptures, such as the Bible, Quran, Torah, and Diamond Sutra, which the different religions or spiritual movements consider sacred or essential to their religious traditions and beliefs. Such quotations, passages, or citations are often used by the providers of goods/services (and by consumers) as an expression of affiliation with, support for, or endorsement of the ideals or concepts found in the religious texts in which the quotation, passage, or citation originated. Because consumers are accustomed to seeing such wording used in this manner in the marketplace, consumers are unlikely to perceive it as indicating source and instead would perceive the wording as conveying a merely informational message of religious affiliation, endorsement, or support for the messages in the texts.

Where a quotation, passage, or citation from a religious text serves as an indicator of support or affiliation and not of source, such wording fails to function as a mark.  The refusal applies regardless of whether the identified goods/services themselves are religious in nature.  However, the inclusion of religious goods/services further supports this refusal.  The following examples illustrate this point:

  • Mark is comprised, in its entirety, of a direct quotation/passage and/or citation from a religious text (e.g., Allah is the Light of the heavens and the earth The Qur’an, Surah An-Nur 24:35; I AM THE WAY, AND THE TRUTH AND THE LIGHT.  NO ONE COMES TO THE FATHER EXCEPT THROUGH ME; or MATTHEW 19:26).  The entire mark must be refused registration because the matter fails to function as a mark.

  • Mark is comprised, in part, of a direct quotation/passage and/or citation from a religious text and registrable matter (e.g., Hear, O Israel: The Lord is our God; the Lord is one and the image of the Earth being held in a pair of hands; ROMANS 8:28 and an image of a teddy bear).  The direct quotation/passage and/or citation must be disclaimed because they fail to function as marks.

Do you think the WWE will be wrestling with USPTO over the meaning of 3:16 soon?

If so, how might the USPTO explain the issuance of these registrations: 3:16, Studio 3:16, and 3:16 Lure Co?

And, finally, might the newly minted examination guide conflict with the recent Supreme Court decision in Tam, holding that the USPTO’s refusal of federal trademark registration based on viewpoint violates Freedom of Speech?

Looking forward to sharing the podium with Joel MacMull of the Archer firm (counsel for Simon Tam, where our friend Ron Coleman is a partner) to discuss “Trademark Registration and the First Amendment,” on September 28th at the Midwest IP Institute in Minneapolis.

As a drum roll leading up to that discussion, and since there is so much to digest in the recent Supreme Court decision in Tam, I thought I’d do a series of posts on the decision and its implications, beyond what I’ve already written.

In this first installment, my focus will be on critiquing (as a trademark type) the opinion of the Court, that is, the portion of the decision written by Justice Alito, to which all seven of the other Justices agreed (the ninth, Justice Gorsuch, did not participate in the decision).

In a nutshell, my principal problem with the Court’s opinion is that all eight Justices have conflated the federal government’s issuance of a Certificate of Registration with the underlying applied-for trademark. The Court ignored that the meaning of each is distinct.

The meaning of the underlying trademark is one thing, determined by how the relevant public perceives and understands the applied-for mark. As an aside, the Court seemed more interested in Mr. Tam’s intentions in using an admitted racial slur as a trademark.

Yet, the meaning of the Certificate of Registration is quite different. It signifies that the federal government has approved the applied-for trademark for registration and issued a federal registration “in the name of the United States of America.

It would be easier to accept and respect the decision of the Court had it acknowledged and attempted to explain why Congress is powerless under the Commerce Clause to regulate what the USPTO may issue “in the name of the United States of America.”

Perhaps the Court’s conflation in Tam should be no surprise, as a few years ago, the unanimous Supreme Court in B&B Hardware, essentially conflated the right to register a trademark with the right to use the trademark.

Another concerning aspect of the Court’s opinion is how it seriously overstated what was at issue in Tam. It held that in denying federal registration to a mark consisting of a racial slur, the disparagement clause of Section 2(a) of the Lanham Act “violates the Free Speech Clause of the First Amendment” because it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

To be clear, the only speech even potentially banned under Section 2(a) of the Lanham Act relates to forbidding the use of the federal registration symbol — ® — next to the racial slur, because that symbol may not be used, unless a Certificate of Registration has been issued for the mark in question.

To the extent the ® symbol constitutes speech at all, the symbol ought to be considered government speech (which is outside First Amendment scrutiny), since federal governmental approval is required in order to use it in commerce.

The Court missed the point when it stated the obvious: “Trademarks are private, not government speech.” The better and more relevant question would have asked whether the ® symbol is purely private speech. Seems obvious to me it’s not.

While the underlying trademark has a certain meaning and constitutes private speech, the federal government’s issuance of a Certificate of Registration and allowing the use of the ® symbol to signify this fact, cannot fairly be considered private speech. Instead, by definition, it connotes governmental approval.

On this point, the Court was unconvincing when it cited a 55-year old concurring opinion from the late Federal Circuit Judge Giles Rich for the proposition “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.”

In that case, Judge Rich claimed, at least in 1962: “The purchasing public knows no more about trademark registration than a man walking down the street in a strange city knows about legal title to the land and buildings he passes.”

In my experience, all sorts of folks know that the ® symbol cannot be used without first obtaining approval from the federal government. Goodness, Forbes writes about it, National Law Journal, admitted non-lawyers, and a multitude of others do too, including us.

Friends, what do you think, do the folks understand and appreciate that the ® symbol is special and cannot be used without first obtaining approval from the federal government?