Trademark Disparagement

Of course, loyal readers have been eagerly awaiting Part III of the series (see Part I and Part II) focusing on Tam’s intersection of federal trademark registration and the First Amendment.

In terms of the certain and practical implications flowing from the decision, it opens the door to a host of new trademark applications containing religious and racial slurs, including the N-word.

Perhaps this explains, in part, why the Justice Department flipflopped on the issue and now says that the “scandalous and immoral” provision of Section 2(a) actually can survive Matal v. Tam.

If the Federal Circuit allows the “scandalous and immoral” provision to survive Tam and attempts to craft some sort of reasoning as to why it should be treated differently than disparagement, we’ve already pointed to how that may impact pending and suspended refusals of the R-Word.

On the other hand, if the Federal Circuit eliminates “scandalous and immoral” registration refusals relying on the Supreme Court’s Tam decision, as consistency of analysis would seem to require, how many of the newly filed scandalous marks actually will be published in the Official Gazette?

Another interesting question might be whether any of these obviously offensive applications will satisfy the essential predicates to registration, and actually adorn the Principal Register, with official Certificates of Registration issued in the name of the United States of America?

It’s worth asking whether the Supreme Court’s destruction of the even-handed framework that the USPTO devised in applying the disparagement provision of Section 2(a) (conscious of favoring neither side on an issue and determined to ignore an Applicant’s intent), inevitably will lead to selectively enforced analyses above the table driven by emotions residing beneath the table.

One area for concern might be the Trademark Office’s growing interest in refusing registration of matter deemed merely informational; presumed “incapable” of performing a trademark function. I’m left wondering, how tempting might it be to use this rather blunt tool on seriously offensive subject matter after Section 2(a) has been stripped of its previous reach in denying registration?

Having said that, will or should the Trademark Office reassess Exam Guide 2-17, concerning Merely Informational Matter, in light of the Tam Court’s perspective on viewpoint discrimination. Seems like it should to me. So, I’m also left wondering, exactly how might “merely informational matter” not express a viewpoint, making such a refusal presumptively invalid?

Since the federal government is apparently powerless to prevent the registration of disparaging trademarks because doing so constitutes viewpoint discrimination that cannot withstand strict scrutiny, what is the fate of federal dilution law, especially the provisions against tarnishment of famous marks? Wes noted some serious questions, others have too, here, here, and here.

In particular, Justice Alito labeled the disparagement registration ban as a “happy-talk clause,” adding that “[g]iving offense is a viewpoint,” and Justice Kennedy reinforced that viewpoint, saying: “To prohibit all sides from criticizing their opponents makes a law more viewpoint based, not less so.” Given that clarity, does this defecating dog trademark not express a viewpoint too?

The Applicant defended Greyhound’s opposition, in part, by arguing that “reasonable people would not be offended because the mark mocks the craze for shirts bearing prestigious emblems.” Doesn’t that sound a lot like a viewpoint being expressed with the defecating dog trademark?

Yet, in rejecting the Applicant’s arguments, and in granting Greyhound summary judgment and refusing registration of the defecating dog mark, the TTAB concluded, back in 1988:

“We do not find applicant’s arguments to be persuasive. Even assuming that people are not offended by the sight of a dog defecating on the ground, applicant’s mark, used on its goods, is a dog defecating on a shirt. This certainly produces a different effect from the viewing of a dog defecating in its normal environment.”

“Further, applicant admits that some people would find the depiction of feces in the mark offensive and that people ‘expect to find something a little out of the ordinary when they see this type of applique.’ In effect, applicant is admitting that the mark has a shock value, and we view the shock to be the offensiveness of the depiction.” (citation omitted)

Does this not constitute “giving offense” and isn’t it fair to say, it “expresses ideas that offend” — to use Justice Alito’s words? Do shocking images and content not convey a viewpoint?

Justice Kennedy stated the disparagement provision “reflects the Government’s disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination.”

He went on to say:

“Unlike content based discrimination, discrimination based on viewpoint, including a regulation that targets speech for its offensiveness, remains of serious concern in the commercial context.”

If so, and if the “scandalous and immoral” provision of Section 2(a) does not survive Constitutional scrutiny in Brunetti, then how does Greyhound, or any other owner of a famous brand, prevent registration (and use) of trademarks designed to express a negative viewpoint about a famous brand while also serving as a trademark for Applicant’s own goods and/or services?

And, what about the below RED SOX/SEX ROD example? The TTAB ruled that the stylized SEX ROD mark “would be viewed as a sexually vulgar version of the club’s symbol and as making an offensive comment on or about the club.” That sounds like viewpoint discrimination too. So, on what basis can the Boston Red Sox object with the disparagement provision gone, and if dilution by tarnishment is also considered unconstitutional viewpoint discrimination?

Can dilution tarnishment survive the Tam Court’s strict scrutiny against viewpoint discrimination?

HowardMcGeeTeam

It’s not every year that participants in the William E. McGee National Civil Rights Moot Court Competition need to understand the various nuances of federal trademark law.

Yet, with the Lee v. Tam case pending before the U.S. Supreme Court, and Section 2(a) of the Lanham Act hanging in the balance, this was such a year for more than fifty competitors.

The weekend before last, yours truly had the distinct privilege of judging the final oral arguments in the McGee competition at the Mitchell Hamline School of Law in St. Paul, Minnesota. It was ever so humbling to be part of a very distinguished panel of would-be U.S. Supreme Court Justices, hearing the oral arguments and probing the Constitutional issues in the Tam case.

The very distinguished portion of the panel included: The Honorable Peter M. Reyes, Jr. of the Minnesota Court of Appeals, retired Minnesota Supreme Court Justice Esther Tomljanovich, Sharon Sandeen, Director of Mitchell Hamline School of Law’s Intellectual Property Institute, and Robert J. Gilbertson of the Greene Espel law firm.

The winning first place team hailed from Howard University (shown above), located in Washington, D.C., arguing in favor of the government’s position to uphold the Constitutionality of Section2(a). The second place finalist team came from the Illinois Institute of Technology’s Chicago-Kent College of Law, arguing in favor of Simon Tam’s challenge to strike down the disparagement clause of Section 2(a) on First Amendment and Void for Vagueness grounds.

The would-be Supreme Court Justices were not judging the merits of the case, instead we judged the teams based on the quality and organization of their oral arguments.

It was inspiring to witness such strong intellect, confidence, poise, grace, and decorum, from each of the finalists — there is no doubt in my mind, they will all make fine lawyers, and they should all be very proud of their performances and high achievement.

Learning after the event that only three of the four finalists had taken an intellectual property course before, made their mastery of the issues even more impressive, hearty congratulations!

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.

– Draeke Weseman, Weseman Law Office, PLLC

Now the dilemma…what to name the place. Simple. What else brings a gleam to men’s eyes everywhere besides beer, chicken wings and an occasional winning football season? Hence the name Hooters. Supposedly they were into owls. Strange.

Hooters

 This NFL season, civil rights advocates continue to make significant progress exposing the racism inherent in the Washington Redskins team name. DuetsBlog has covered the topic on numerous occasions, including here, here, and here. In June, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office finally ruled that Washington’s trademark registrations must be cancelled because the term “Redskins” is disparaging to Native Americans.

To my knowledge, the Trademark Trial and Appeal Board has not yet been asked to review a registered mark for cancellation on the grounds that it is inherently sexist and, therefore, disparaging to women. But given the success in the Washington case, perhaps some registrations are due for a challenge. In my opinion, one candidate for cancellation is the registration afforded to Hooters, the mainstream restaurant chain that puts women’s breasts on display to sell chicken wings.

Let’s begin with the following tongue-in-cheek statement from the Hooters’ website:

Hooters is proud to have created a globally recognized icon. Obviously we’re talking about the owl in our logo.

We all know that Hooters is a euphemism for breasts, and at first glance, this humorous play on words seems harmless enough. Hooters whimsically calls its brand personality “[d]elightfully tacky, yet unrefined.” Nothing wrong with a good joke, right? Well, research suggests otherwise:

Sexist humor is not simply benign amusement. It can affect men’s perceptions of their immediate social surroundings and allow them to feel comfortable with behavioral expressions of sexism without the fear of disapproval of their peers.

With that in mind, should we laugh at the following excerpt from Hooters’ company history?

While Ed arranged the photo shoot for Hooters’ first billboard, Gil indoctrinated Lynne [The bikini-contest-winning first Hooters Girl] by making her clean out the refrigerator and scrub the floors.

Hooters takes it one step further in its employee handbook, which requires employees to acknowledge that they “do not find [their] job duties, uniform requirements, or work environment to be offensive, intimidating, hostile or unwelcome” and that “the Hooters concept is based on female sex appeal and the work environment is one in which joking and innuendo based on female sex appeal is commonplace.”

What happens to the joke when we consider that the disparagement of women through their sexual objectification in commercial advertising may have serious consequences, including an increase in the acceptance of sexual aggression against women and rape myth acceptance (the belief that “no” really means “yes”)?

Consider the relationship between Hooters and football, and all of the domestic violence issues the NFL is facing after a video showed running back Ray Rice punching his girlfriend unconscious on an elevator. With that in mind, can we stomach social media posts like this one? (I guess Hooters missed the part of Ben Roethlisberger’s career where, on two separate occasions, he was accused of sexual assault?):

Of course, the “sex sells” brand proposition has been a maxim of the advertising industry for a long time, and sexual objectification – where a person is viewed primarily in terms of sexual appeal or as a source of sexual gratification – occurs regularly in television commercials featuring women. Such advertising, like in this Hooters commercial, encourages a disparaging cultural attitude toward women by reducing the woman’s value to her ability to be sexually arousing – what she is saying isn’t nearly as important as how she is saying it and what she looks like. What’s more, when seen through a lens sensitive to sexism, Hooter’s charitable causes look like nothing more than an apparent exploitation of breast cancer awareness and military service to sell calendars:


Thus, the truth as I see it is that when we look past the surface-level Hooters pun and really look at the Hooters brand, we see a brand that at its core is committed to and perpetuates a sexist culture that objectifies women for commercial gain. This is disparaging to women, whether we as a society find it amusing or not.

Following the Washington Redskins case, it’s difficult to see how the United States Patent and Trademark Office can allow sexist trademarks like Hooters to continue to receive protection as registered trademarks when the law clearly provides an absolute bar against scandalous and disparaging marks.

Under Section 2(a) of the Lanham Act, a mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead” is ineligible for trademark registration. The word “scandalous” in the statute includes matter that is vulgar, lacking in taste, indelicate, or morally crude. Generally, the scandalous nature of a mark must be perceived by a substantial portion of the general public in the context of contemporary attitudes and the relevant marketplace. Humor is not a defense, nor does it matter if the mark has an alternative meaning.

Disparagement, on the other hand, looks at the issue not from the view of the general public, but from the view of the targeted group. The test is a two-part inquiry: (1) what is the meaning of the term in question as it appears in the mark and as the mark is used in connection with the identified goods and services?, and (2) does the meaning of the mark disparage the target group, as determined by the views of a substantial composite of that group? That substantial composite need not be a majority.

While we wait and see if marks like Hooters will ever be challenged under either of these tests, other countries are taking the lead on this issue in different ways. Norway and Denmark both ban sexual objectification in advertising, while tolerating nudity. According to the head of one leading ad agency “Naked people are wonderful, of course, but they have to be relevant to the product. You could have a naked person advertising shower gel or a cream, but not a woman in a bikini draped across a car.” Is it a coincidence that the countries considering this issue also have some of the lowest gender pay gaps and best parental leave programs in the world?

So, when will American’s stop believing that sexism is ok, just because it’s funny? Speaking of funny, will Americans ever embrace another f-word in support of equality?

Should the USPTO continue to allow trademarks like Hooters to be registered? Or by doing so, does the USPTO perpetuate sexism in branding?

What about marks like the one below for Camel Towing? (The picture was taken in a local parking lot.) Should the USPTO allow it to be registered, if the company behind the mark ever applies?