The exclusions in §2 that arguably don’t
go to core trademark policy (though this too is debatable) are those for immoral,
scandalous, or disparaging marks; flags/coats of arms; names/signatures/portraits
of living persons/deceased presidents with living spouses without written
consent; geographic indications (GIs) on wine or spirits identifying someplace
other than their origin; and primarily geographically deceptively
misdescriptive terms. Some of these exclusions
are closer to source significance than others, and it might be worth noting
that the “core” exclusions are pretty well mixed in with the non-core ones, so
that “deceptive” is listed right in between “immoral” and “scandalous.” Arguably it’s all congressional policy about
what ought to serve as a mark. (See the
policy reasoning in Renna
v. County of Union, arguing that governments ought not to have access
to ordinary trademark remedies, given their First Amendment implications.)
But anyway, the NAFTA amendments might seem to be a really
obvious place to look for congressional policy about the relationship between
registration and protectability.
Congress intended—before California
Innovations gutted the change—to switch geographically deceptively
misdescriptive marks from registrable to unregistrable. Did it also intend to make them unprotectable
under §43? As my research assistant
pointed out, in retrospect this seems like a really obvious question. And yet, as I confirmed with Professor
McCarthy, there seems to have been no consideration of that question. Perhaps this is related to the fact that most
of our treaty partners operate more registration-based systems, and weren’t
attuned to the fact that the US now offers essentially the same protection to
registered and unregistered marks.
Relatedly, our NAFTA commitment required us to provide a
remedy to persons harmed by the use of primarily geographically deceptively
misdescriptive terms: “Each party [United States, Mexico, Canada] shall
provide, in respect of geographical indications, the legal means for interested
persons to prevent: (a) the use of any means in the designation or
presentation of a good that indicates or suggests that the good in question
originates in a territory, region or locality other than the true place of
origin, in a manner that misleads the public as to the geographical origin of
the good....”
Congress did not amend the Lanham Act to implement this
provision, while it amended §2 to deal with registration. Presumably, the assumption was that false
advertising law covered the situation already.
Did Congress just not notice that materiality is a requirement under
§43(a)(1)(B) (as it should be under §43(a)(1)(A))? The use of geographically misleading terms is
therefore not unlawful unless the misleadingness is material. That’s probably not what our trading partners
wanted, but it’s what they got—both for §43(a)(1)(B) and for §2, after California Innovations. (I say that materiality was not supposed to
be required because part of the theory behind protecting all GIs is that
different places should be encouraged to develop reputations for specific
qualities. Protection should enable such
reputations to develop even if they don’t exist now and therefore aren’t
material now. There’s other language
that can be used to specify GIs with an existing reputation.)
The best that can be said, I think, is that Congress wasn’t
really thinking that much about the details, and so the NAFTA amendments don’t
help us much in figuring out how we should think about the modern relationship
between §2 and §43.
4 comments:
I think there may be another explanation. Trademark protection of unregistered marks was far less robust until the Supreme Court decision in Two Pesos v. Taco Cabana insisted that unregistered marks should be treated the same way as registered ones. That decision came down in 1992. NAFTA, though, was signed in 1992. So maybe neither our trading partners nor Congress considered the interplay of section 43(a) with the registration prohibitions because section 43(a) had not yet attained its vast scope.
Good point--though 43 had already expanded a fair amount, I thought. Is there a case that you think represents a clear statement of pre-Taco Cabana law about what 43 would protect?
Maybe Fuddruckers, Inc. v. Doc's BR Others, Inc., 826 F. 2d 837 (9th Cir 1987)?
Maybe Fuddruckers, Inc. v. Doc's BR Others, Inc., 826 F. 2d 837 (9th Cir 1987)?
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