AU TM works in progress part 2

Cathay Smith, Immoral Trademarks

Abusive challenges: Dykes on Bikes, Squeezebloodfromturnips.com (opposer was angry because he was getting calls from the collection agency that was the applicant); Adultfriendfinder (opposer was a pastor who objected that the applicant was connecting men with loose women; seems sexist)—objecting to the nature of the service and not to the name. You’re supposed to examine the mark, not the commercial use of the mark.  Objecting to the applicant’s business activities, political views, other activities.

Other types of cases: vulgar parodies, like SEX ROD, or the defecating greyhound. Those were the only two types of oppositions she found.  Avoided disparaging TM cases: the standard for opposition is very different and the type of harm is very different; doesn’t see harm from immoral/scandalous marks.

Get rid of the bar entirely?  Stop refusing through the examiners and only assess when there’s an opposition?  Maybe it’s just a standing problem—who should have standing?  Because of the problems w/the concepts, leaning towards taking it out.

Hinchcliffe: Literature on different terms we might use for the concept.  Replace term? Define it?  What are the benefits/flaws of current systems?  Will procedural or substantive changes address those flaws?

Colman: do 1A issues differ depending on whether it’s the examiner or inter partes? Reminds him of racially restrictive covenants: the court’s determination of state action in enforcement of rights.

Smith: originally, saw it as more of an examiner issue. But not sure about it.

Hunter: what next?  What is the grand claim?  [Discussion of what law reviews are looking for.] Most obvious claim: where gov’t acts to grant or deny property interests there are constitutional implications.  So how do we get through that minefield?  Have others done that for immoral marks? [A fair amount, including Megan Carpenter and Christine Haight Farley.]  Could say “dismantle everything in TM that doesn’t involve reputation or confusion, including registering name during life of president or his widow.”  Either a grand constitutional leap, or say get the gov’t out of these particular things. 

Grinvald: get the examiner out.  Problems w/private actors are different. Stealth censorship.

LaFrance: some people are deeply offended by these symbols. To the extent that granting registrations encourages their adoption because of registration’s benefits, that’s relevant.  Sure, the TM system’s purpose isn’t to protect morals, but any statutory scheme may aim to avoid promoting behavior that’s harmful to children (seeing stuff on billboards) or deeply offensive.  Don’t undervalue notion of protecting morals.

RT: If you don’t want to deal w/disparaging marks, making claims about getting the gov’t out of the business of evaluating marks on a non-reputation-based metric is a difficult task. Underlying Q of what TM is for.  Renna v. County of Union: TM is for commercial activities, thus exclusion of state insignia is justified.

Underlying Q about role of variation in PTO proceedings.  Black letter: can’t use results in other cases as factual support for results in your case.  But is that rule justified?  Do its cracks show especially when you get to 2(a) issues where the issues are both random and systematic (in that what is offensive tends to be related to sex, defecation, violence).  Due process may be especially relevant in this circumstance.  (Carol Rose on Shelly v. Kraemer has a lot to say about state enforcement of cultural beliefs; NYT v. Sullivan is a relevant 1A precedent: state enforcement of a state-granted right is state action.)

Farley: TTAB judge spoke on her own behalf and said that the PTO is absolutely consistent on “shit.”  Can you explain why you’re separating morality from disparagement?  That might reveal something useful.  Your reasons for scrapping morality have been said before—there’s inconsistency everywhere; there are 1A problems in other provisions of law.  More interesting, and what no one has done: think more about why we have this provision (and why the legislative history doesn’t reveal anything about what it means).  Distinguishing disparagement could help.  There might not be a clear line—without immoral/scandalous, a lot of cases might go down as disparagement cases (cases involving Christianity).  SEX ROD claimed both scandalousness and disparagement.

Smith: sees the blurring too, but thinks disparaging is a subset of scandalousness. Disparaging marks are targeted and there’s actual injury to people.  [Here’s where the paper could do some interesting work: why is it that we now see injury to a particularized identity as more injurious than injury to society?  Dan Kahan/modes of thinking—cultural perceptions of harm are relevant and change over time.  There once was a causal story about how offensive marks and the registration thereof did harm to society, as LaFrance pointed out may still be true for some people.] This provision invites abusive oppositions. 

Colman: is lumping all gay men together ok?  Opposer can’t speak for the entire group they purport to represent. [though probabalistic harm/far less than majority is usually acceptable in other TM areas, like confusion and secondary meaning] Relic of earlier thread that doesn’t belong in our largely economic system.

Farley: hard to argue it’s a relic when almost every other country has the same system.  Other countries say offend morality or the public order.

Hunter: procedurally: why should one offended person be able to stop a registration?  If people who aren’t offended had a mechanism to file in support, that might give more information about what percentages of people felt which way.  This is consistent w/ other countries’ systems: makes clear that TM is gov’t information policy.  Some of the policy is about confusion, but other parts are about other issues.  Scandalousness is about avoiding gov’t imprimatur. 

What is a theory of scandal?  We should understand why defectation and sex of a certain sort is shameful? Lots of sociologists/psychoanalytic theory.  If we had a theory of scandal we could figure out which cases were properly decided.

Colman: one of the few instances where IP admits to its political agenda; explore links to other areas where its agenda is less obvious.

Farley: one good empirical question is whether applicants respond to the rejection signal by ending the use of the mark.  If so, then the gov’t is having the effect it wants to have (setting aside whether this is a constitutional means).