William & Mary Student Intellectual Property Society Symposium
A Right to Register: A discussion of First Amendment Implications of the Trademark Registration Process
Overview: Dean Laura Heymann, W&M Law: TMs reduce consumer search costs. TMs don’t exist in the abstract—have to be associated w/ a good or service. Apple = TM for computers, not fruit. In the US, right to use doesn’t depend on registration, but on qualifying use in commerce. ® has many benefits, but you don’t have to register in order to claim rights.
Susan Allen, USPTO: Not official views. Examiner’s perspective on an application. Application usually takes 2.8 months to be examined—about 480 examiners now. Allowed = publication; denied = appeal to TTAB or abandoned. Opposition also possible to TTAB after publication. From the TTAB, can appeal to the district court or Federal Circuit.
Outside perspective: you’re taking lots of issues from all over and trying to figure out what bucket to put them in: a shoe design—©, TM, design patent. Examiner is target of these issues and your job is to figure out which submissions qualify, over and over, like grading papers.
Example: DYKES ON BIKES. Examine all the record, including dictionaries and internet. Office Action attached dictionary definitions that said “dyke” was disparaging for lesbians. Note that Office is very busy and inter partes record will be very different—mostly looking at internet and making best judgment possible. Is it completely subjective? No. Evidence is required, and examiners are trained to determine what’s refusal-worthy. TMEP says senior or managing atty must consult on scandalousness refusal: always a review process for those.
Applicant responded with evidence of reclaiming the term. Examining att’y issued a final rejection and applicant requested reconsideration/filed notice of appeal to TTAB. The refusal was withdrawn. Opposition occurred with publication; TTAB rejected the opposition on standing grounds; court of appeals agreed w/TTAB, so registration issued.
Examiners review 8-10 applications/day on average. About 60% of TM employees do examining, and 6% of PTO as a whole.
Between Apr. 2008-Dec. 2013, 185 first actions for disparagement refusals, 42 final actions; 902 first actions for immoral/scandalous, 158 final actions. 2012 alone: 2071 first actions for deceptiveness; 224 final actions (though now we issue more warnings instead of first action refusals). Most common 2(a) refusal is deceptiveness. Most common issue is ID of goods making the mark deception.
Used to do a lot of refusals for definition of goods: if it says leather in the mark but the goods listed are all clothes, we now ask for amendment; if they don’t amend they are refused.
Immoral/scandalous: shocking to substantial component of general public. PTO looks at the overall context, not just the applied-for mark. TITMOUSE as mark for clothing with birds on it = ok; TITMOUSE as mark for computer mouse in the shape of a human breast = not ok. THE SLANTS = material submitted with the application had all sorts of Asian references.
Commercial/noncommercial refusals: what’s the meaning of the matter, and is it likely to be disparaging/offensive to a substantial composite of the reference group, except with corporations because corporations can’t take offense. KHORAN for wines: association of alcohol with Muslim religion. SQUAW and SQUAW VALLEY = disparaging for clothes but not ski equipment. Disparaging/scandalous: assessed by the views of the relevant group (general public or targeted group, depending) at the time of the application.
Thomas Brooks, Holland & Knight: IP is more than patents—often a misconception that people have. Washington team’s marks—long time registered, compared to In re Tam where the examiner denied registrations. Can be challenges at any stage on several grounds. Vast majority of applications fly right through. Clients don’t like paying extra money for holdups with examination—many think it should be like going down to the courthouse to get a marriage license or dog license; since they’re using the mark, why aren’t they entitled to a registration? Even big firms that understand the issues don’t want to pay extra.
Current cases: client trying to register VERSA for duct tape and other construction equipment. VERSA TRACTION w/tagline cited against it, but it’s for surfboards; we argue that no one will confuse duct tape w/tape used by surfers. Client wants CHUCS for clothing, and CHUCK TAYLOR from Converse is an issue. Another wants to move a Middle East chain using a surname, but surnames require secondary meaning. Luchese cowboy boots: no problem w/new registrations b/c known, but every time we need a disclaimer that it’s a surname but has so much secondary meaning that it’s a mark.
Whether something brings a group into contempt or disrepute is subjective, and you have to make a judgment call. You can’t say no to your client forever.
Words can be common in England/offensive here (fag for cigarette); offensive in UK/not so bad here (bloody for bad). What about remaining Native American symbols on the register? Land O’Lakes Native American; Sue Bee honey; Mutual of Omaha; etc. It’s all contextual. RED MAN chewing tobacco? Famous in the field/big seller. Not sure it would get through today, but registered. A number of other registrations that may be offensive: NWA for the rap group (but its full name, no; never tried, as far as he can tell and many n-word attempts have failed, except for very old registrations that have been abandoned); DAGO RED for clothing; POLOCK JOHNNY’s restaurant; PUSSY POWER REVOLUTION for clothing. These might be gone in a few decades (actually my searches suggest DAGO RED and PUSSY POWER REVOLUTION are already gone).
Practical perspective: do you have the time and money for a fight on this? Typical client doesn’t want this fight, and will generally turn away. Many sports teams have moved away from Native American images, especially caricatures. Even the Washington team has a plan for change if it has any sense.
Domain names: no policing of those, even though there are a number of offensive ones out there.
Christine Haight Farley, American: COCKSUCKER denied registration, but GAMECOCK SUCKER allowed, as was BIG COQ, and COCK RUB. A lot of criticism of the subjective nature of the determinations/inconsistent outcomes.
What questions do we ask for scandalousness/immorality? We ask in the context of contemporary attitudes. What was scandalous 50 years ago may no longer be scandalous—BUBBY TRAP for bras. Judge in context of marketplace in context of goods described in application, from perspective of substantial composite of general public.
Disparaging marks: Fed. Cir. adopted TTAB test in STOP THE ISLAMIZATION OF AMERICA. First determine the meaning of the mark: a religious or political meaning; either way it was disparaging to a substantial composite of Muslim-Americans. Look at dictionary definitions; relation of matter to other elements of the mark; nature of goods/services; manner in which mark is used in the marketplace. If that meaning is found to refer to identifiable persons, institutions, beliefs, or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. Context includes entirety of mark’s impression, expected commercial use, whether the secondary meaning supports primary meaning, time of application, views of population targeted. Don’t consider identity of the applicant or intent of applicant. Don’t consider audience/relevant consumers.
Sometimes context can
provide offense or remove it. JESUS JEANS?
The ads for the company are highly sexualized, but also play up the
religious meaning in a deliberately provocative way. JESUS JEANS registered in the US, then opposed
an application for JESUS SURFED. JESUS
SURFED is an evangelical Christian clothing company, so it sought to cancel
JESUS JEANS on disparagement grounds.
Tried to bring in the ads to provide context. PTO doesn’t want to decide who really
SQUAW: disparaging term/version of a term that means vagina, according to Harjo; dispute over who gets to determine what the term means. Should it be reclaimed? Opposed? Loretta Lynn dressed as an “Indian” for her album “Your Squaw is on the Warpath.” “Squaw Bread”—said they didn’t mean to offend b/c it was just called “squaw bread”/they wanted to give credit to Native American origin. Squaw Valley: ski location/sought marks. Split decision because of the context of the goods. Similar case: HEEB—magazine had a registration for the magazine, but applied for clothing, unhinged from the particular context of the magazine, it was found to be disparaging. TTAB found it irrelevant that the applicant was Jewish or well-intentioned. Relevant community was important.
DYKES ON BIKES is now the model for reclaiming terms. They submitted 400 pages of evidence proving that it wasn’t just intent to reclaim or good intent, but that the reclaiming had happened and now had positive connotations.
THE SLANTS: (No similar history of “Slants to Watch Out For”) Context was the reason: it was Asian in context and the attempt to “own” the stereotype proved irrelevant good intentions and relevant connection to Asianness. Their first specimens of use had Asian symbols, fonts. The second application, after abandoning the first, included only specimens that didn’t have obvious “Asian” indicators—they were posters for concerts the Slants played at though not designed by the Slants. Examiner looked at the older specimens too and still refused the registration. Recent album: “The Yellow Album.” Fed. Cir. recently reheard en banc.
REDSKINS: First action against TMs brought in 1992; still ongoing. Team wanted EDVa. because the trend in the Fed. Cir. didn’t look good. NFL is footing the bill, so the team has limited incentive to stop just because it’s expensive. Initial evidentiary problems: much the evidence didn’t go to the reference group, but to Americans generally. Is less than ½ of the group finding it disparaging sufficient? Her answer: yes, given what percentages are accepted in TM infringement cases. Also, the evidence didn’t go to what Native Americans thought at the time the registrations issued. Survey would have required a time machine! Also, asked about offense instead of disparagement.
Dictionary definitions: again, they’re not from the right times. After 1966, “redskins” is a slur any time it’s used. Suggests that over time, understanding of majority groups about how awful it was changed. Actions that Native Americans took during the relevant time period—meetings w/team, organized protests, had a resolution, formal objections: that’s the most relevant. Is it substantial? Team said: just the leaders thought this, not the general population—can’t prove leaders represent the whole of the group. That’s an impossible task.
Native American leaders met with the team president. He knew as of 1972. The Washington papers even ran a political cartoon about the meeting and protest. Wasn’t unhinged from racial references also used w/ the team names. Team suggests now that the name change from Boston Braves honored a Native American head coach, but at the time they said that wasn’t the reason for changing the name and also he was not a Native American.
Owner George Preston Marshall was an unabashed racist; last team to integrate by far; set up a foundation for DC children, but said couldn’t be used for any support of racial integration. His wife came up with the theme song, which was the first team theme song; it is awful.
All REDSKINS applications not dealing with peanuts or potatoes have been refused since 1992.