The US Trademark Trial and Appeal Board has, again, explained how and when surnames may function as trademarks. In re Enumclaw Farms LLC, Application Serial No. 85942195 (TTAB June 24, 2016). This blog has discussed this topic in the past, but the facts in this most recent case are worth another post.
What do Washington D.C.’s NFL team, the Redskins, and Mr. Tam’s rock band, The Slants, have in common? Both have enjoyed unexpected victories recently and both have been called “disparaging” by the Patent and Trademark Office (“PTO”). However, while the Washington Redskins have been winning on the football field, many legal and business news websites have also been counting Mr. Tam’s recent success at the Federal Circuit as a major win for the football team. In reality, that issue is far from settled.
The Federal Circuit first took up the issue of Mr. Tam’s trademark last spring when it affirmed the PTO’s rejection of his application to register the mark “THE SLANTS,” the name of Mr. Tam’s Asian-American dance rock band that is known for its intentional use of Asian stereotypes in its lyrics and imagery in order to weigh in on cultural and political discussions about race and society. Despite the ruling adverse to Mr. Tam, Judge Moore went on to write a lengthy argument addressing the need for a deeper constitutional review of the statutory prohibition against disparaging marks, as codified in Section 2(a) of the Lanham Act. In re Tam, 785 F.3d 567 (Fed. Cir. 2015). This opinion teed up the en banc review by the Federal Circuit, which issued a pivotal opinion on December 22, 2015 overruling prior precedent, In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), and held that the prohibition against registering disparaging marks at the PTO under Section 2(a) of the Lanham Act is an unconstitutional restriction on free speech. In re Simon Shiao Tam, No. 2014-1203, 2015 U.S. App. LEXIS 22300 (Fed. Cir. Dec. 22, 2015).
Based on the Federal Circuit’s ruling, the media immediately decreed victory for the Washington Redskins’ trademark battle, but there are reasons that the recent Federal Circuit ruling is not likely to be the last we hear of this issue:
First, the Federal Circuit is split. While 9 judges agree that the disparaging marks prohibition in Section 2(a) is entirely unconstitutional, the remaining 3 raise some valid concerns in partial or total disagreement. For example, writing for the Majority, Judge Moore places a great deal of importance on the chilling effect such regulation has on expressive speech. However, Judge Reyna and Judge Laurie argue in dissent that the Majority’s analysis is flawed from the very beginning as trademark registration is commercial speech, as was held in precedential opinions, and thus not subject to heightened scrutiny. Meanwhile, Judge Dyk attempts to draw a distinction between “core political speech” and “commercial speech” in trademarks. In the concurrence in part and dissent in part, Judge Dyk argues that the Majority is correct only as to a narrow category of trademarks which contain core political speech, but the statute remains constitutional as to the bulk of trademarks which are merely commercial speech. This fundamental disagreement as to what is or is not commercial speech is exactly the sort of issue that the Supreme Court may take up. In the dissent, Judge Reyna poignantly summarizes the disagreement: “The Majority holds today that Mr. Tam’s speech, which disparages those of Asian descent, is valuable political speech that the government may not regulate except to ban its use in commerce by everyone but Mr. Tam.”
Second, the Redskins’ mark is pending review before a different tribunal. The Redskins are currently appealing to the Fourth Circuit an adverse ruling by a U.S. District Court following the TTAB’s cancellation of the team’s mark recently. In doing so, the TTAB cited the same prohibition against registering disparaging marks under Section 2(a) at issue in the recent Federal Circuit opinion. While the Federal Circuit’s opinion will surely be influential to the Fourth Circuit, it is not precedential and the Fourth Circuit is not required to follow it. Thus, immediate victory for the Redskins is not guaranteed. Furthermore, should the Fourth Circuit rule in any way different than the Federal Circuit on determining constitutionality of Section 2(a), this circuit split would set up a likely Supreme Court review.
Third, the constitutionality of Section 2(a) as to immoral and scandalous marks is now unclear. While the Majority was careful to mention several times that their opinion concerns only the prohibition against registering disparaging marks, Section 2(a) also prohibits registering immoral and scandalous marks. Indeed, the Redskins mark may still be challenged under either of those additional prohibitions at a future date. To some, the logic and reasoning of the recent Federal Circuit ruling may be equally applicable to those prohibitions; both additional prohibitions can be categorized as content based and/or viewpoint based regulation of non-commercial expressive speech that fails the constitutional test of strict scrutiny. To others, there may be reasons to distinguish the Federal Circuit’s ruling as to the other Section 2(a) prohibitions; the prohibition against registering immoral and scandalous marks isn’t as vague or the effect isn’t as chilling on expressive speech. The Supreme Court may be interested in settling this discrepancy before the PTO is flooded with new registrations of offensive marks.
Despite their recent wins on the field, the Redskins’ Super Bowl prospects are still uncertain. The prospects of the team’s trademark registration remains similarly uncertain, despite the recent Federal Circuit holding.
Today the Federal Circuit Court of Appeals ruled that the section of the Lanham Act which bans registration of “disparaging” trademarks is an unconstitutional violation of First Amendment free speech.
The case, In re Simon Shiao Tam (case no. 14-1203), involved the U.S. Trademark Office’s refusal to register the mark THE SLANTS for a music band on grounds that it disparaged an ethnic group. In issuing its decision, the appeals court wrote that “[m]any of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities,” but that “the First Amendment protects even hurtful speech.” It went on to state that “[t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.”
This decision could impact the case pending before the U.S. Court of Appeals for the Fourth Circuit involving the cancellation of the Washington Redskins trademark registrations on grounds of disparagement.
Stay tuned for further updates.
The Federal Circuit has decided to revisit the constitutionality of Section 2(a) of the Lanham Act in the case of In re Shiao Tam, 2015 U.S. App. LEXIS 6840 (Fed. Cir. Apr. 27, 2015). Section 2(a) of the Lanham act allows the USPTO to reject the registration of a trademark that is immoral, scandalous, or disparaging. 15 U.S.C. § 1052(a). Just a week earlier, the Federal Circuit affirmed the PTO’s rejection of Mr. Tam’s application to register the mark “THE SLANTS,” the name of Mr. Tam’s Asian-American dance rock band that is known for its intentional use of Asian stereotypes in its lyrics and imagery in order to “weigh in on cultural and political discussions about race and society.” In re Tam, 2015 U.S. App. LEXIS 6430, *2, *19 (Fed. Cir. Apr. 20, 2015). Mr. Tam argued that this rejection was a violation of his First Amendment right to freedom of speech.
In rejecting Mr. Tam’s arguments that Section 2(a) is unconstitutional under the First Amendment, Judge Moore explained that this argument is “foreclosed by our precedent” in In re McGinley, 660 F.2d 481 (C.C.P.A. 1981). In re McGinley dismissed a First Amendment challenge to Section 2(a) and held that “the PTO’s refusal to register appellant’s mark does not affect his right to use it” and “that no conduct is proscribed, and no tangible form of expression is suppressed” when an applicant’s trademark registration is rejected under Section 2(a). In re McGinley further held that the Section 2(a) standard, “scandalous,” is not too vague as to bar the PTO and the courts to apply the law fairly.
Despite affirming the rejection of Mr. Tam’s registration, Judge Moore went on to write a lengthy “additional views” section that outlines in great detail why “it is time for this Court to revisit McGinley‘s holding on the constitutionality of § 2(a) of the Lanham Act,” and notes from the outset that the McGinley’s holding was “without citation to any legal authority.” Tam, 2015 U.S. App. LEXIS 6430, at *14. Judge Moore reasons that because the PTO is now entirely funded from application fees, and no longer funded by taxpayers as it was when McGinley was decided, the newer constitutional jurisprudence of the “unconstitutional conditions” doctrine may apply. Judge Moore goes on to argue that trademarks are protected commercial speech, and that a rejection is an abridgement of that speech due to the highly beneficial rights a Lanham Act registration confers on a trademark owner. Ultimately, Judge Moore concludes that Section 2(a) cannot pass constitutional scrutiny unless the Court is presented with a “substantial government interest that would justify the PTO’s refusal to register disparaging marks,” which has yet to occur. Id. at *37-38, 45 (citing Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n, 447 U.S. 557, 566 (1980)).
Following Judge Moore’s thorough argument that a Section 2(a) rejection is an unconstitutional restriction of commercial speech, it will be interesting to see how the Court will decide this question during its en banc consideration. The parties have 45 days to file briefs on the constitutional issues, with a decision to follow.
The outcome of the Federal Circuit’s en banc consideration will be influential. For example, the Washington Redskins NFL football team has been involved in a well-publicized battle surrounding its controversial name in both the courts of law and of public opinion. In the former, the Federal District Court in Virginia is considering an appeal from the Washington Redskins organization challenging the PTO’s cancellation of the “REDSKINS” trademark registration under Section 2(a) for being disparaging to Native Americans. If the Federal Circuit finds that Section 2(a) is unconstitutional, then, in a somewhat ironic twist, Mr. Tam may end up enjoying the same trademark rights and protections as the Washington Redskins.
Unlike most countries, US trademark law generally requires that a mark be in use before it can be protected. The US recognizes common law rights in unregistered marks if they have been adopted in good faith and are in actual use on a product or to provide a service to the public. The US also has a state trademark registration system as well as a federal trademark registration system. Each state adopts its own requirements for registration of a trademark, and the US Congress creates the law for federal registration.
Under federal law, a mark owned by a US based applicant must be in use on all of the goods and to provide all of the services in an application, and proof of use must be filed and accepted by the US Trademark Office before a registration will issue. However, non-US applicants are permitted to register a trademark in the US without ever having used the mark in the US if it seeks registration under Section 44(e) of the Trademark Act based upon a qualified foreign national or European Community registration or if it seeks registration under Section 66(a) based upon an international trademark registration under the Madrid Protocol. Continue Reading Use It or Lose It: When Can a Trademark Registered Under Section 44(e) or 66(a) Be Deemed “Abandoned” in the US?
Written by : Susan Neuberger Weller
The New York Times Magazine had a very interesting article in its January 18, 2014 issue entitled “Call It What It Is.” The article, written by Neal Gabler, looks into the methods and ideologies used to create new product brand names. As a trademark lawyer who has been practicing for quite a while, the substance of the article was not particularly new to me. However, many businesses who struggle each day to invent new company and brand names for their businesses, products, and services may find some inspiration and creative ideas from this piece. As the article makes clear, the naming process can be a very long road and it is better to start sooner rather than later. Moreover, once a new name is chosen, and has been fully searched and cleared by trademark counsel, it is strongly recommended that an intent to use application for the new brand name be filed promptly at the US Trademark Office to protect it at the earliest time possible.
So, roll up those sleeves and let the branding begin!
Written by: Susan Neuberger Weller
The Washington Redskins professional football team will soon not only be battling Native Americans over the registrability of the REDSKINS trademark, but will also have to cross swords with the US Government. Last week, the US Department of Justice filed a Notice of Intervention in the appeal of the US Trademark Trial and Appeal Board’s decision last summer to cancel the REDSKINS trademark registrations. As we reported in our earlier post, the Washington team raised in its appeal constitutional issues that could not be decided by the TTAB. These include the following:
- Trademarks are constitutionally protected commercial speech and Section 2(a)’s provisions prohibiting the registration of “disparaging, “”contempt[uous]”, or “disreput[able]” aspects of a mark are an unconstitutional, content-based restriction on speech that violates the First Amendment to the US Constitution.
- Section 2(a) is facially overbroad and unconstitutionally void for vagueness in violation of the First Amendment to the US Constitution since, inter alia, the terms “disparage,” “may disparage,” “contempt,” “disrepute,” and “may bring…into contempt or disrepute” are not defined in the Lanham Act or its legislative history.
- The cancellation of the REDSKINS registrations violate the team’s due process rights provided by the Fifth Amendment to the US Constitution by unreasonably depriving the team of federally granted property rights that it has relied on for almost half a century.
- The Board’s Order canceling the REDSKINS trademark registrations is an unconstitutional taking of Pro-Football’s property without just compensation in violation of the Takings Clause of the Fifth Amendment to the US Constitution.
The Notice of Intervention states that the US Government will be defending the constitutionality of Section 2(a) of the Lanham Act, and is entitled to do so as a matter of right pursuant to the Federal Rules of Civil Procedure and statute.
As of this writing, no responsive pleadings have yet been filed by either the team or the Native Americans. Stay tuned.
Written by: Susan Neuberger Weller
Fabric design is a creative art form that has existed for thousands of years. Although the methods for creating such designs have evolved, the purpose and function of such designs has not changed as significantly. Fabric designs are used for purely ornamental and decorative purposes, for purposes of identity, and also to convey information. From an intellectual property standpoint, how a fabric design is used may dictate what type of protection it can claim. In addition, the time it takes to obtain each type of IP protection, its duration, and the procedures for enforcement may also dictate the type of protection to seek. Continue Reading It’s a Material IP World: Trademarks, Copyrights, Design Patents and Fabric Designs
Written by: Susan Neuberger Weller
The Washington Redskins trademark controversy is far from over. Despite the fact that certain news and sports commentators and mainstream newspapers and organizations have announced that they will no longer use the term “Redskins” when reporting on the National League football team, and the fact that a variety of public figures, including President Obama, have expressed an opinion that the name should be changed, team owner Dan Snyder continues to steadfastly defend the name as expressing only “honor and respect” and state that he has no intention of ever changing it. In support of that promise, the team has appealed the cancellation of its US trademark registrations by the US Trademark Trial and Appeal Board which held in a split 2-1 decision that the REDSKINS trademark was disparaging to Native Americans and, therefore, no longer eligible for continued registration. Continue Reading Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act
Written by: Susan Neuberger Weller
The overwhelming public reaction to the US Trademark Trial and Appeal Board’s June 18 decision canceling six REDSKINS trademark registrations on grounds that the mark disparaged Native Americans has been impressive. However, news articles, op-ed pieces, informal commentary, and anecdotal stories all evidence wide range confusion about and a misunderstanding of the meaning and impact of the decision. This is an effort to set the record straight on the legal effect of this decision.
- The Washington Redskins still own valid and enforceable federal trademark rights in the REDSKINS marks. The federal registrations will not be formally canceled until all appeals have been exhausted, which will take years given the fact that the Redskins have indicated an intent to appeal the decision.
- Unlike most other countries in the world, US trademark law recognizes fully valid and enforceable trademark rights at common-law in trademarks that are being used but which are not registered. Thus, even if the registrations are eventually canceled, the Redskins will continue to own common-law rights in the trademarks which can be fully enforced in state and federal courts against third-party infringers.
- While the trademarks are still registered, the federal trademark registration notice ® may be used in connection with the REDSKINS marks. If these registrations are eventually canceled at the end of the legal process, the team can continue to use the REDSKINS marks and can use the unregistered trademark notice ™ with the marks.
- Anyone who thinks the Washington REDSKINS trademark is now up for grabs and can be used without incident is sorely mistaken, and anyone who has already begun to make unauthorized use of any of the REDSKINS marks is just asking for trouble. Should it choose to do so, the Redskins can still bring suit for infringement throughout the country.
- This decision is not based on a new law or any new Federal Government action, power, position, or initiative. The Section of the Trademark Act upon which the Trademark Trial and Appeal Board based its decision has been in existence and has been applied since 1946. The US Trademark Office, the Board, and courts around the country have regularly and for years refused to register trademarks and have canceled existing trademark registrations which were determined to be immoral, deceptive, scandalous, disparaging, or which brought persons, living or dead, into contempt or disrepute. The list of such marks is quite lengthy.
- Moreover, this is not a new case. These disparagement claims have been around for decades. This the second time that the Board has canceled these REDSKINS registrations on grounds of being disparaging to Native Americans. The first case, which was initially brought in 1992 and which was not litigated to a conclusion until 2010, was finally dismissed on grounds that had nothing to do with the disparagement issue. Rather, the case was dismissed on grounds of laches, which means that the specific Native Americans who filed the first case waited too long to do so and that delay prevented the case from moving forward.
- Until the registrations are formally canceled, which will be years from now if appeals are pursued, the REDSKINS trademark registrations will continue to be recorded with US Customs. This means that any unauthorized merchandise bearing a REDSKINS trademark which attempts to enter the country is still subject to seizure at the border by US Customs.
So, the Washington Redskins’ trademark rights are not dead and the REDSKINS trademark saga is far from over. Stay tuned.