Sunday, October 08, 2006

Works in progress: Jasmine Abdel-khalik

Jasmine C. Abdel-khalik, Timing is Everything: Of Trademark Applications and Post Registration Limitations to Scandalous and Disparaging Trademarks: A scandalous mark can serve as an excellent source identifier, as the owner of the Pink Taco restaurant can testify.

This paper: Once a mark has been registered, what happens if it becomes scandalous after registration or is scandalous in a foreign country?

Justifications for the prohibition on registering scandalous marks: avoiding a government imprimatur; avoiding a waste of government resources; chilling commercial speech. That last is really what it’s about, regulating morality. One thing not on this list: protection of competition. That’s what makes it stand out in the statute, which means it should be treated uniquely to effectuate its purpose to channel commercial speech. We could debate its normative appropriateness, but it is the statute that we have and we need to apply it consistently.

The current system, as explicated in Harjo, doesn’t look to subsequent changes in the meaning of the mark, which means you can hang on to your newly scandalous mark. This is insufficient, because terms can change meaning. One example is when speakers of another language move here in great enough numbers that the doctrine of foreign equivalents applies and the mark is scandalous to them – like the American “OK” sign. But meaning also changes within a language. Not unrelatedly, power structures can change: people who previously would not have been able to make a claim of disparagement or oppression get the ability to do so. Groups assert offensiveness as a means of showing their existence and power. Change in social norms is a third related component – the groups’ claims to reflect public opinion can become more plausible.

The treatment of scandalousness should be like that for genericide. Even your investment in your mark won’t protect you if public perception changes to make your mark generic; the same should apply if public perception changes to make your mark scandalous.

Example: “Osama” Hair Salon – now has a really negative meaning that it didn’t create. But because it’s about public perception, this might be an invalid mark because scandalous. But that doesn’t further any unfair competition goals – so should we really import genericide, which is about unfair competition? Abdel-khalik says we should for consistency purposes.

Q: Why not let the market take care of it? The hair salon will probably change its name. (Does it matter whether there’s a core of Osama-supporters who like the name?) Questioner thinks the problem is trying to dig up evidence of what the mark meant at the time of registration; we should instead look at present evidence just because it’s more fair and easier to get right.

A: KKK has recently applied for registrations. We should be able to recognize their awfulness then and now.

David Welkowitz: A generic-risking mark owner has some control over public perception – Xerox took out a series of ads aimed at lawyers & journalists designed to fend of genericity. Johnson & Johnson changed its ads to “Band-aid brand” bandages. That’s not total control, but it’s more control than that available to the Osama Salon or the Pink Taco restaurant (or at least a hypothetical Pink Taco restaurant that’s been around for 40 years, though not the one that’s generating all the commentary).

A: Maybe this is more protectionist than we’d like, but what the prohibition is for is to allow you to avoid hearing your 6-year-old daughter say, “Let’s go to Pink Taco!”

Q: Do you care about knowledge or intent?

A: No. Harjo: REDSKINS was supposedly chosen “in honor of” a Native American on the team. At least some marks are per se scandalous; if we look at contextual evidence, maybe we can consider intent, but not when it’s something like a profanity.

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