CHAPTER SIX

Grounds for Refusing Registration

Section 1052 of the Lanham Act contains a series of grounds for refusing federal registration of trademarks. We will take its subsections in turn.

1.) 1052(a)

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501 (9) of title 19) enters into force with respect to the United States.[1]

i.) Disparaging marks. Since 1992, there have been repeated attempts to cancel the Federal registrations of six trademarks containing the term REDSKINS issued between 1967 and 1990 to the “Washington Redskins.” The plaintiffs argued that those marks were disparaging to Native Americans in violation of § 1052(a). In July 2015, the Eastern District of Virginia upheld a decision of the TTAB that the REDSKINS marks should be canceled under § 1052(a). Before reaching this conclusion, however, the court had to address a constitutional question: Does the disparaging marks provision violate the First Amendment? The court said “no.” Following earlier case law, it found that refusing to register disparaging marks does not impermissibly restrict free speech because the trademark holder is free to go on using the mark, just without the benefits of Federal registration. However, in December 2015, in unrelated litigation, the Federal Circuit issued a landmark decision holding that the disparaging marks provision does violate the First Amendment. These contrasting opinions are below. Which analysis do you find more convincing? (You may find Chapter 3’s discussion of intellectual property and the First Amendment useful.) Remember that the question here is constitutionality. One might find the marks offensive (we do) but believe that the government does not get to deny them registration for that reason alone.

Pro-Football, Inc. v. Blackhorse

112 F. Supp. 3d 439 (E.D. Va. 2015)

GERALD BRUCE LEE, District Judge.

. . . The registrability of the Redskins Marks has been litigated for over two decades. In 1992, Susan Harjo and six other Native Americans filed a petition to cancel the registrations of the Redskins Marks under Section 2(a) of the Lanham Act. Seven years later, the TTAB ruled that the Redskins Marks “may disparage” Native Americans when registered and ordered that the registrations of the marks be cancelled. Harjo v. Pro-Football, Inc. (T.T.A.B. 1999). On appeal, the United States District Court for the District of Columbia reversed the TTAB, holding that (1) the TTAB’s finding of disparagement was unsubstantiated, and (2) the doctrine of laches precluded consideration of the case.

The case traversed back and forth between the district court and the D.C. Circuit, with the final outcome being that D.C. Circuit affirmed the district court’s ruling that laches barred the claim. The D.C. Circuit never addressed the TTAB’s finding of disparagement on the merits.

On August 11, 2006, while Harjo was pending, Amanda Blackhorse [and others] filed a petition to cancel the same six registrations of the Redskins Marks. The TTAB suspended action in the Blackhorse case until the Harjo litigation concluded in 2009. The parties here have agreed that the entire Harjo record could be entered into evidence in the case before the TTAB.

On June 18, 2014, the TTAB scheduled the cancellation of the registrations of the Redskins Marks under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), finding that at the time of their registrations the marks consisted of matter that both “may disparage” a substantial composite of Native Americans and bring them into contempt or disrepute. This action seeks a de novo review. . . .

A. Trademark Registration vs. Trademarks Themselves

As a threshold matter, throughout the pleadings the parties conflated the legal principles surrounding trademarks with those surrounding trademark registration. Just as Allen Iverson once reminded the media that they were wasting time at the end of the Philadelphia 76ers’ season “talking about practice” and not an actual professional basketball game, the Court is similarly compelled to highlight what is at issue in this case — trademark registration, not the trademarks themselves. It is the registrations of the Redskins Marks that were scheduled for cancellation by the TTAB’s decision, not the trademarks. In fact, the TTAB itself pointed out that it is only empowered to cancel the statutory registration of the marks under Section 2(a); it cannot cancel the trademarks themselves. Thus, regardless of this Court’s ruling, PFI [Pro-Football, Inc.] can still use the Redskins Marks in commerce. . . . [U]se of a mark in commerce, by itself, creates a host of common law rights. The Lanham Act does, however, contain a cause of action for the enforcement of unregistered trademarks. See 15 U.S.C. § 1125(a).

The owner of a trademark can apply to register it with the PTO under the Lanham Act. After reviewing an application, “[if] a trademark examiner believes that registration is warranted, the mark is published in the Official Gazette of the PTO” as well as the Principal Register. Registration confers several benefits upon the owner of a mark in addition to those available at common law:

(1) constructive notice of the registrant’s claim of ownership of the trademark; (2) prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of his exclusive right to use the mark in commerce as specified in the certificate; (3) the possibility that, after five years, registration will become [incontestable] and constitute conclusive evidence of the registrant’s right to use the mark; (4) the right to request customs officials to bar the importation of goods bearing infringing trademarks; (5) the right to institute trademark actions in federal courts without regard to diversity of citizenship or the amount in controversy; and (6) treble damage actions against infringing trademarks and other remedies.

Incontestability and proof of ownership are among the most significant advantages of registration.

What is at issue here is the registration of the Redskins Marks and the benefits associated with registration, not the use of the marks.

B. Constitutional Challenges

1. PFI’s First Amendment Challenge Fails

. . . First, Section 2(a) of the Lanham Act does not implicate the First Amendment. Second, under the Supreme Court’s decision in Walker v. Tex. Div., Sons of Confederate Veterans, Inc. (2015), the Fourth Circuit’s mixed/hybrid speech test, and Rust v. Sullivan (1991), the federal trademark registration program is government speech and is therefore exempt from First Amendment scrutiny.

a. Cancellation of Trademark Registration Does Not Implicate PFI’s First Amendment Rights

. . . The Federal Circuit and Fifth Circuit have both held that the PTO’s refusal to register an applicant’s mark does not infringe upon the mark owner’s First Amendment rights as “[no] conduct is proscribed[] and no tangible form of expression is suppressed.” In re McGinley (C.C.P.A. 1981); Ritchie v. Simpson (Fed. Cir. 1999) (“denial of federal registration of a mark does not prohibit the use of that mark”).

Nothing about Section 2(a) impedes the ability of members of society to discuss a trademark that was not registered by the PTO. Simply put, the Court holds that cancelling the registrations of the Redskins Marks under Section 2(a) of the Lanham Act does not implicate the First Amendment as the cancellations do not burden, restrict, or prohibit PFI’s ability to use the marks. . . .

PFI further contends that Section 2(a) of the Lanham Act should be closely scrutinized because although it may not prohibit speech outright, it may drive ideas from the marketplace (citing Simon & Schuster, Inc. v. Members of N.Y. State Crime Victims Bd. (1991)). Simon & Schuster is distinguishable from this case as it involved a New York statute that required publishers to pay a fee to the State Crime Victims Board for any monies derived from the sales of books where criminals spoke of their conduct. Because statutes that impose a financial burden on a speaker based on the content of their speech are unconstitutional, the Supreme Court declared this New York Son of Sam law unconstitutional. The Court finds PFI’s unsuccessful attempt to map incongruent First Amendment jurisprudence onto the Lanham Act unpersuasive as Section 2(a) imposes no financial penalty on speech—it simply cancels a trademark’s registration; the speech itself is uninhibited. . . .

b. The Federal Trademark Registration Program is Government Speech and is Exempt from First Amendment Scrutiny

. . . [T]he federal trademark registration program is government speech and is thus exempt from First Amendment scrutiny.

As an initial matter, the Court finds that the federal trademark registration program is not commercial speech. Commercial speech is defined as “speech that does no more than propose a commercial transaction.” Marks approved through the federal trademark registration program are published in the Official Gazette of the PTO and the Principal Register in order to inform the public of marks registered with the federal government. The Principal Register does not propose a commercial transaction and therefore is not commercial speech. . . .

i. Walker Test

The Court finds that the federal trademark registration program is government speech under the Supreme Court’s decision in Walker. Walker involved Texas’ specialty license plate program. Groups may propose license plate designs with a slogan, graphic, or both, to the Department of Motor Vehicles Board (“the Board”). The Board “may refuse to create a new specialty license plate” for many reasons, including “if the design might be offensive to any member of the public . . . or for any other reason established by rule.” If approved, the license plate design becomes available for Texans to select and place on their vehicles.

In 2009, the Sons of Confederate Veterans, Texas Division (“S.C.V. Texas”), applied to sponsor a specialty plate with a design that included a picture of the Confederate flag. The Board rejected the design because many members of the general public found the Confederate flag portion of the design to be offensive. In 2012, S.C.V. Texas filed a federal lawsuit against the Board, claiming that its decision violated the First Amendment’s Free Speech Clause. The district court entered judgment for the Board, while a Fifth Circuit panel held that license plate designs are private speech and by rejecting S.C.V. Texas’ design, the Board engaged in constitutionally forbidden viewpoint discrimination.

The Supreme Court reversed the Fifth Circuit and held that Texas’ specialty license plate program is government speech. The Court found that the program was government speech for three reasons. First, history shows that “insofar as license plates have conveyed more than state names and vehicle identification numbers, they long have communicated messages from the States.” Second, the public closely associates official state license plate designs with the state. The Court further explained that Texas license plates “are[] essentially government IDs” and issuers of IDs “‘typically do not permit’ the placement on their IDs of ‘messages with which they do not wish to be associated.’” Third, Texas maintains “direct control” over the message conveyed on the plates as the Board must approve every specialty plate design. The Board has “actively exercised this authority” by rejecting designs. “This final approval authority allows Texas to choose how to present itself and its constituency.”

Here, the federal trademark program is government speech under the Supreme Court’s analysis in Walker. The first Walker factor weighs in favor of government speech as registry with the federal trademark registration program communicates the message that the federal government has approved the trademark. The second Walker factor weighs in favor of government speech because the public closely associates federal trademark registration with the federal government as the insignia for federal trademark registration, ®, is a manifestation of the federal government’s recognition of the mark.

Finally, the third Walker factor weighs in favor of government speech because the federal government exercises editorial control over the federal trademark registration program. Section 2 of the Lanham Act empowers the PTO to deny or cancel a mark’s registration, and thus control what appears on the Principal Register, on a number of grounds. . . . Because all three Walker factors weigh in favor of government speech, the Court finds that the federal trademark registration program is government speech.

ii. Fourth Circuit’s Mixed/Hybrid Speech Test

The federal trademark registration program also qualifies as government speech under the Fourth Circuit’s mixed/hybrid speech test. In SCV (4th Cir. 2002), the Fourth Circuit identified four instructive factors courts should look to in determining whether speech is that of the government:

(1) “the central purpose of the program in which the speech in question occurs”; (2) “the degree of editorial control exercised by the government or private entities over the content of the speech”; (3) “the identity of the literal speaker”; and (4) “whether the government or the private entity bears the ultimate responsibility for the content of the speech[.]”

The Court finds that the first factor, the central purpose of the program in which the speech in question occurs, weighs in favor of finding that the speech at issue here is government speech. The government has long played a role in protecting trademarks. In 1946, Congress created the Lanham Act in order to protect trademarks used in interstate and foreign commerce. The Lanham Act’s federal trademark registration program was created to help protect marks.

The Fourth Circuit’s analysis of the “central purpose” factor in ACLU v. Tata (4th Cir. 2014), vacated, Berger v. ACLU of N.C. (U.S. June 29, 2015), is particularly instructive. Tata concerned a question of whether North Carolina’s specialty license plate program, including a “Choose Life” license plate, was government or private speech. The court found that because the central purpose of the program was “to allow North Carolina drivers to express their affinity for various special interests,” the purpose of the program weighed in favor of finding the speech at issue private.

Here, the purpose of the program is not for the expression of private views or interests. Such expression would lay in the creation of the mark itself, which is done by the owner by using the mark in commerce. Instead, the purpose of the federal trademark registration program is to provide federal protection to trademarks, in part achieved by providing notice to the public of what trademarks are registered through the Principal Register. When the symbol for a federally registered trademark, ®, is affixed to a mark, it is a declaration by the federal government that it has approved that mark. Accordingly, the Court finds that the purpose of the program weighs towards it being considered government speech. . . .

The Court finds that the second factor, the degree of editorial control exercised by the government or private entities over the content of the speech, also weighs in favor of government speech. . . . As explained above in the editorial control analysis under Walker, the PTO regularly rejects applications for registration on grounds enumerated in Section 2 of the Lanham Act. Accordingly, the Court finds that the second SCV factor weighs in favor of government speech.

The Court finds that the third factor, the identity of the literal speaker, weighs in favor of government speech. The Official Gazette of the PTO and the Principal Register are published by the PTO. Because the government is the literal speaker, this factor weighs in favor of finding the federal trademark registration program to be government speech.

The Court finds that the fourth factor, whether the government or the private entity bears the ultimate responsibility for the content of the speech, weighs in favor of private speech. When a trademark’s federal registration is challenged, it is the mark owner, not the government, who must defend it. Moreover, in deciding this factor courts have considered whether the private entity had to apply or pay to avail itself to the benefits of a program. . . .

Applying SCV’s instructive factors, the Court concludes that because three of the four factors weigh in favor of finding government speech, the federal trademark registration program is government speech.

iii. Government May Determine Contents and Limits of Its Programs

The Court holds that the federal trademark registration program is constitutional because under Rust v. Sullivan (1991), the government may determine the contents and limits of its programs. In Rust, the Supreme Court considered whether regulations restricting the use of funds by grantees under Title X of the Public Health Act violated the First Amendment. The regulations prohibited doctors from engaging in abortion counseling, referral, and activities advocating abortion as a means of family planning in Title X projects. . . .

After considering a viewpoint discrimination challenge to the regulations, the Court upheld them because they were “designed to ensure that the limits of the federal program are observed.” The Court explained that “when the Government appropriates public funds to establish a program it is entitled to define the limits of that program.” The Government can “selectively fund a program to encourage certain activities it believes to be in the public interest, without at the same time funding an alternative program” without violating the Constitution (emphasis added). Moreover, a “legislature’s decision not to subsidize the exercise of a fundamental right does not infringe the right.”

. . . According to the Fourth Circuit, “Rust stands for the principle that when the government creates and manages its own program, it may determine the contents and limits of that program” without violating the First Amendment. Planned Parenthood of S.C. Inc. v. Rose (4th Cir. 2004). This is so because when the government speaks to promote its own policies or advocate for a particular idea, it is ultimately the electorate who holds the government accountable. . . .

Here, the federal trademark registration program’s requirement that a mark cannot receive federal trademark protection if it “may disparage” is well within the constitutional boundaries set forth in Rust and reaffirmed in Open Society. PFI’s suggestion that this requirement is beyond the scope of the program demonstrates a fundamental misunderstanding of the Supreme Court’s decision in Rust and the Fourth Circuit’s opinion in Planned Parenthood: when the government creates and manages its own program, it may determine the contents and limits of that program. Congress has decided that marks that “may disparage” shall not receive the benefits of federal registration. It is well within its power to do so. Affirming the denial of federal registration of a mark under Section 2(a), the United States Court of Customs and Patent Appeals, the Federal Circuit’s predecessor, stated:

In providing that marks comprising scandalous matter not be registered, Congress expressed its will that such marks not be afforded the statutory benefits of registration. We do not see this as an attempt to legislate morality, but, rather, a judgment by the Congress that such marks not occupy the time, services, and use of funds of the federal government. In re McGinley. . . .

In conclusion, the Court holds that the federal trademark registration program is government speech under the government speech tests set forth by the Supreme Court in Walker and the Fourth Circuit in SCV, and the Supreme Court’s decision in Rust. . . .

C. Lanham Act Challenges

. . . The TTAB has established a two-part test to determine whether a mark contains matter that “may disparage.” The parties agree that the test in this case is as follows:

1. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?

2. Is the meaning of the marks one that may disparage Native Americans?

. . . When answering the second question, whether the term “redskins” “may disparage” Native Americans, courts should look to the views of Native Americans, not those of the general public. . . .

1. The Meaning of the Matter in Question is a Reference to Native Americans

The Court finds that the meaning of the matter in question in all six Redskins Marks — the term “redskins” and derivatives thereof — is a reference to Native Americans. . . . As stated by the TTAB in Harjo and confirmed by the D.C. District Court:

This is not a case where, through usage, the word “redskin(s)” has lost its meaning, in the field of professional football, as a reference to Native Americans in favor of an entirely independent meaning as the name of a professional football team. Rather, when considered in relation to the other matter comprising at least two of the subject marks and as used in connection with respondent’s services, “Redskins” clearly both refers to respondent’s professional football team and carries the allusion to Native Americans inherent in the original definition of that word.

The Court agrees and finds that because PFI has made continuous efforts to associate its football team with Native Americans during the relevant time period, the meaning of the matter in question is a reference to Native Americans.

2. The Redskins Marks “May Disparage” a Substantial Composite of Native Americans During the Relevant Time Period

The Court finds that the meaning of the marks is one that “may disparage” a substantial composite of Native Americans in the context of the “Washington Redskins” football team. The relevant period for the disparagement inquiry is the time at which the marks were registered. Here, the Court focuses on the time period between 1967 and 1990. When reviewing whether a mark “may disparage,” the PTO does not, and practically cannot, conduct a poll to determine the views of the referenced group. Instead, three categories of evidence are weighed to determine whether a term “may disparage”: (1) dictionary definitions and accompanying editorial designations; (2) scholarly, literary, and media references; and (3) statements of individuals or group leaders of the referenced group regarding the term. . . .

Section 2(a) does not require a finding that every member of the referenced group thinks that the matter “may disparage.” Nor does it mandate a showing that a majority of the referenced group considers the mark one that consists of matter that “may disparage.” Instead, Section 2(a) allows for the denial or cancellation of a registration of any mark that consists of or comprises matter that “may disparage” a substantial composite of the referenced group. . . .

Accordingly, the Court finds that the Redskins Marks consisted of matter that “may disparage” a substantial composite of Native Americans during the relevant time period, 1967-1990, and must be cancelled. . . .

Questions:

1.) If the District Court decision is upheld, what are the practical effects? Hint: look at the specific rights conferred by registration. Are the Washington Redskins forbidden from using the mark? May others now use the mark without payment? Remember, Pro-Football claims that the loss of a Federally registered mark leaves behind common law trademark rights and Federal protection under § 1125(a). The next case, In re Tam, disagrees, claiming that the enforceability of state law rights over an unregistrable Federal mark is at best unclear, and that § 1125(a) protects only unregistered marks that could have been registered.

2.) Any standard to adjudicate a § 1052(a) cancellation of disparaging marks has to answer the central “what, who, how many and when” questions.

a.) “What”? The court agreed with earlier decisions finding that the meaning of the word “Redskins” was to refer to Native Americans, and rejecting an argument that that term had dropped out of usage and that the primary significance of the term was now its reference to the team. Do you agree? If you heard the word in a conversation, e.g. “How about those redskins?!” what or whom would you assume it referred to? Does that matter, so long as some people find the term offensive?

b.) “Who”? Whose view of whether a mark is disparaging is relevant? The court said it was those who believed they were being disparaged. Do you agree? And who has standing to cancel registration of a mark? Earlier, the TTAB said that the plaintiffs must have “a legitimate personal interest” in the outcome of the proceeding. It found that the five Native American plaintiffs, all of whom found “redskins” disparaging, met that standard. Do you agree? Does this meet the Article 3 threshold for standing?

c.) “How many”? How many members of a group need to find the mark disparaging in order to satisfy the standard for cancellation? This court held that it need not be a majority. Earlier the TTAB had found that when 30% of a group finds a term disparaging, this is a “substantial composite” sufficient to prohibit federal registration. Is this threshold high? Low? What kind of evidentiary showing should be required?

d.) “When”? The court and the TTAB agreed that the question is whether the mark would have been found disparaging by the referenced group at the time of registration. Here, the registration dates were 1967, 1974, 1978, and 1990. Do you agree that this is the relevant time frame? What if a mark we find wildly offensive today had been registered when the term was regarded as respectable? Should it be subject to cancellation nevertheless?

In re Tam

808 F.3d 1321 (Fed. Cir. 2015)

MOORE, Circuit Judge.

Section 2(a) of the Lanham Act bars the Patent and Trademark Office (“PTO”) from registering scandalous, immoral, or disparaging marks. The government enacted this law—and defends it today—because it disapproves of the messages conveyed by disparaging marks. It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys. That principle governs even when the government’s message-discriminatory penalty is less than a prohibition.

Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech. Another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and should be stopped. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech.

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech. We therefore vacate the Trademark Trial and Appeal Board’s (“Board”) holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.

BACKGROUND

“Registration is significant. The Lanham Act confers important legal rights and benefits on trademark owners who register their marks.” These benefits—unavailable in the absence of federal registration—are numerous, and include both substantive and procedural rights. . . .

Under the Lanham Act, the PTO must register source-identifying trademarks unless the mark falls into one of several categories of marks precluded from registration. Many of these categories bar the registration of deceptive or misleading speech, because such speech actually undermines the interests served by trademark protection and, thus, the Lanham Act’s purposes in providing for registration. Section 2(a), however, is a hodgepodge of restrictions. Among them is the bar on registration of a mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” Section 2(a) contains proscriptions against deceptive speech. . . but other restrictions in § 2(a) differ in that they are based on the expressive nature of the content, such as the ban on marks that may disparage persons or are scandalous or immoral. These latter restrictions cannot be justified on the basis that they further the Lanham Act’s purpose in preventing consumers from being deceived. These exclusions from registration do not rest on any judgment that the mark is deceptive or likely to cause consumer confusion, nor do they protect the markholder’s investment in his mark. They deny the protections of registration for reasons quite separate from any ability of the mark to serve the consumer and investment interests underlying trademark protection. In fact, § 2(a)’s exclusions can undermine those interests because they can even be employed in cancellation proceedings challenging a mark many years after its issuance and after the markholder has invested millions of dollars protecting its brand identity and consumers have come to rely on the mark as a brand identifier.

This case involves the disparagement provision of § 2(a). Section 2(a)’s ban on the federal registration of “immoral” or “scandalous” marks originated in the trademark legislation of 1905. The provision barring registration based on disparagement first appeared in the Lanham Act in 1946. It had no roots in the earlier trademark statute or the common law. There were few marks rejected under the disparagement provision following enactment of the Lanham Act. Only in the last several decades has the disparagement provision become a more frequent ground of rejection or cancellation of trademarks. Marks that the PTO has found to be disparaging include: REDSKINS, STOP THE ISLAMISATION OF AMERICA, THE CHRISTIAN PROSTITUTE, AMISHHOMO, MORMON WHISKEY, KHORAN for wine, HAVE YOU HEARD THAT SATAN IS A REPUBLICAN?, RIDE HARD RETARD, ABORT THE REPUBLICANS, HEEB, SEX ROD, MARRIAGE IS FOR FAGS, DEMOCRATS SHOULDN’T BREED, REPUBLICANS SHOULDN’T BREED, 2 DYKE MINIMUM, WET BAC/WET B.A.C., URBAN INJUN, SQUAW VALLEY, DON’T BE A WET BACK, FAGDOG, N.I.G.G.A. NATURALLY INTELLIGENT GOD GIFTED AFRICANS, a mark depicting a defecating dog, an image consisting of the national symbol of the Soviet Union with an “X” over it, and DOUGH–BOY [for condoms]. . . .

II. Facts of This Case

Mr. Tam is the “front man” for the Asian-American dance-rock band The Slants. Mr. Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. The band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes, and its albums include “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” The band “feel[s] strongly that Asians should be proud of their cultural heri[ta]ge, and not be offended by stereotypical descriptions.” With their lyrics, performances, and band name, Mr. Tam and his band weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment.

On November 14, 2011, Mr. Tam filed the instant application seeking to register the mark THE SLANTS for “Entertainment in the nature of live performances by a musical band,” based on his use of the mark since 2006. The examiner refused to register Mr. Tam’s mark, finding it likely disparaging to “persons of Asian descent” under § 2(a). The examiner found that the mark likely referred to people of Asian descent in a disparaging way, explaining that the term “slants” had “a long history of being used to deride and mock a physical feature” of people of Asian descent. And even though Mr. Tam may have chosen the mark to “reappropriate the disparaging term,” the examiner found that a substantial composite of persons of Asian descent would find the term offensive.

The Board affirmed the examiner’s refusal to register the mark. The Board wrote that “it is abundantly clear from the record not only that THE SLANTS . . . would have the ‘likely meaning’ of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances.” To support its finding that the mark likely referred to people of Asian descent, the Board pointed to dictionary definitions, the band’s website, which displayed the mark next to “a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image,” and a statement by Mr. Tam that he selected the mark in order to “own” the stereotype it represents. The Board also found that the mark is disparaging to a substantial component of people of Asian descent because “[t]he dictionary definitions, reference works and all other evidence unanimously categorize the word ‘slant,’ when meaning a person of Asian descent, as disparaging,” and because there was record evidence of individuals and groups in the Asian community objecting to Mr. Tam’s use of the word. The Board therefore disqualified the mark for registration under § 2(a). . . .

[In an earlier opinion, a panel of this Court, on appeal] held that binding precedent foreclosed Mr. Tam’s arguments that § 2(a) is unconstitutional, including Mr. Tam’s argument that § 2(a) violates the First Amendment on its face. As the panel explained, in In re McGinley, our predecessor court held that the refusal to register a mark under § 2(a) does not bar the applicant from using the mark, and therefore does not implicate the First Amendment. The entirety of the McGinley analysis was:

With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.

In subsequent cases, panels of this Court relied on the holding in McGinley. More than thirty years have passed since the decision in McGinley, and in that time both the McGinley decision and our reliance on it have been widely criticized. Furthermore, the McGinley analysis was cursory, without citation to legal authority, and decided at a time when the First Amendment had only recently been applied to commercial speech. First Amendment jurisprudence on the unconstitutional conditions doctrine and the protection accorded to commercial speech has evolved significantly since the McGinley decision.

Other courts’ reliance on the reasoning in McGinley [also] reinforces the importance of taking this case en banc. . . . [A] district court in the Eastern District of Virginia relied upon McGinley when it concluded that the cancellation of trademark registrations under § 2(a) did not implicate the First Amendment. Pro-Football, Inc. v. Blackhorse (E.D. Va. 2015). For these reasons, we sua sponte ordered rehearing en banc. . . .

DISCUSSION

I. Section 2(a)’s Denial of Important Legal Rights to Private Speech

Based on Disapproval of the Message Conveyed Is Subject to, and

Cannot Survive, Strict Scrutiny

Strict scrutiny is used to review any governmental regulation that burdens private speech based on disapproval of the message conveyed. Section 2(a), which denies important legal rights to private speech on that basis, is such a regulation. It is therefore subject to strict scrutiny. It is undisputed that it cannot survive strict scrutiny.

A. The Disparagement Provision, Which Discriminates Based on

Disapproval of the Message, Is Not Content or Viewpoint Neutral

“Content-based regulations are presumptively invalid.” “Content-based laws—those that target speech based on its communicative content—are presumptively unconstitutional and may be justified only if the government proves that they are narrowly tailored to serve compelling state interests.” A regulation is content based even when its reach is defined simply by the topic (subject matter) of the covered speech.

Viewpoint-based regulations, targeting the substance of the viewpoint expressed, are even more suspect. They are recognized as a particularly “egregious form of content discrimination,” though they have sometimes been discussed without being cleanly separated from topic discrimination. Such measures “raise[ ] the specter that the government may effectively drive certain ideas or viewpoints from the marketplace.” “The First Amendment requires heightened scrutiny whenever the government creates ‘a regulation of speech because of disagreement with the message it conveys.’” This is true whether the regulation bans or merely burdens speech. . . . “The distinction between laws burdening and laws banning speech is but a matter of degree. The Government’s content-based burdens must satisfy the same rigorous scrutiny as its content-based bans.” “Lawmakers may no more silence unwanted speech by burdening its utterance than by censoring its content.”

It is beyond dispute that § 2(a) discriminates on the basis of content in the sense that it “applies to particular speech because of the topic discussed.” Section 2(a) prevents the registration of disparaging marks—it cannot reasonably be argued that this is not a content-based restriction or that it is a content-neutral regulation of speech. And the test for disparagement—whether a substantial composite of the referenced group would find the mark disparaging—makes clear that it is the nature of the message conveyed by the speech which is being regulated. If the mark is found disparaging by the referenced group, it is denied registration. “Listeners’ reaction to speech is not a content-neutral basis for regulation.”

And § 2(a) does more than discriminate on the basis of topic. It also discriminates on the basis of message conveyed, “the idea or message expressed”; it targets “viewpoints [in] the marketplace.” It does so as a matter of avowed and undeniable purpose, and it does so on its face.

First, the government enacted and continues to defend § 2(a) “because of disagreement with the message [disparaging marks] convey [ ].” When the government refuses to register a mark under § 2(a), it does so because it disapproves of “the message a speaker conveys” by the mark. . . . The legal significance of viewpoint discrimination is the same whether the government disapproves of the message or claims that some part of the populace will disapprove of the message. This point is recognized in the Supreme Court’s long-standing condemnation of government impositions on speech based on adverse reactions among the public.

Second, the disparagement provision at issue is viewpoint discriminatory on its face. The PTO rejects marks under § 2(a) when it finds the marks refer to a group in a negative way, but it permits the registration of marks that refer to a group in a positive, non-disparaging manner. In this case the PTO refused to register Mr. Tam’s mark because it found the mark “disparaging” and “objectionable” to people of Asian descent. But the PTO has registered marks that refer positively to people of Asian descent. See, e.g., CELEBRASIANS, ASIAN EFFICIENCY. Similarly, the PTO has prohibited the registration of marks that it found disparaged other groups. See, e.g., Pro–Football (affirming cancellation of REDSKINS); Geller (affirming rejection of STOP THE ISLAMISATION OF AMERICA); Lebanese Arak Corp. (refusing to register KHORAN for wine); Heeb Media (refusing to register HEEB); Squaw Valley Dev. Co. (refusing to register SQUAW VALLEY for one class of goods, but registering it for another). Yet the government registers marks that refer to particular ethnic groups or religions in positive or neutral ways—for example, NAACP, THINK ISLAM, NEW MUSLIM COOL, MORMON SAVINGS, JEWISHSTAR, and PROUD 2 B CATHOLIC. . . .

B. The Disparagement Provision Regulates the Expressive

Aspects of the Mark, Not Its Function As Commercial Speech

The government cannot escape strict scrutiny by arguing that § 2(a) regulates commercial speech. True, trademarks identify the source of a product or service, and therefore play a role in the “dissemination of information as to who is producing and selling what product, for what reason, and at what price.” But they very commonly do much more than that. And, critically, it is always a mark’s expressive character, not its ability to serve as a source identifier, that is the basis for the disparagement exclusion from registration. . . . This case exemplifies how marks often have an expressive aspect over and above their commercial-speech aspect. Mr. Tam explicitly selected his mark to create a dialogue on controversial political and social issues. With his band name, Mr. Tam makes a statement about racial and ethnic identity. He seeks to shift the meaning of, and thereby reclaim, an emotionally charged word. He advocates for social change and challenges perceptions of people of Asian descent. His band name pushes people. It offends. Despite this—indeed, because of it—Mr. Tam’s band name is expressive speech. Importantly, every time the PTO refuses to register a mark under § 2(a), it does so because it believes the mark conveys an expressive message—a message that is disparaging to certain groups. . . .

II. Section 2(a) Is Not Saved From Strict Scrutiny Because It Bans No

Speech or By Government–Speech or Government–Subsidy Doctrines

Faced with the daunting prospect of defending a content- and viewpoint-discriminatory regulation of speech, the government argues that § 2(a) does not implicate the First Amendment at all. First, the government suggests that § 2(a) is immune from First Amendment scrutiny because it prohibits no speech, but leaves Mr. Tam free to name his band as he wishes and use this name in commerce. Second, the government suggests that trademark registration is government speech, and thus the government can grant and reject trademark registrations without implicating the First Amendment. Finally, the government argues that § 2(a) merely withholds a government subsidy for Mr. Tam’s speech and is valid as a permissible definition of a government subsidy program. We reject each of the government’s arguments.

A. Strict Scrutiny Applies to § 2(a), Which Significantly Chills Private

Speech on Discriminatory Grounds, Though It Does Not Ban Speech

The government argues that § 2(a) does not implicate the First Amendment because it does not prohibit any speech. The government’s argument is essentially the same as that of our predecessor court in McGinley: “it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed.” But the First Amendment’s standards, including those broadly invalidating message discrimination, are not limited to such prohibitions.

The point has been recognized in various doctrinal settings. “For if the government could deny a benefit to a person because of his constitutionally protected speech or associations, his exercise of those freedoms would in effect be penalized and inhibited. This would allow the government to produce a result which it could not command directly.”. . . The general principle is clear: “Lawmakers may no more silence unwanted speech by burdening its utterance than by censoring its content.”. . . Here, too, § 2(a) burdens some speakers and benefits others. And while it is true that a trademark owner may use its mark in commerce even without federal registration, it has been widely recognized that federal trademark registration bestows truly significant and financially valuable benefits upon markholders. Denial of these benefits creates a serious disincentive to adopt a mark which the government may deem offensive or disparaging. . . .

For those reasons, the § 2(a) bar on registration creates a strong disincentive to choose a “disparaging” mark. And that disincentive is not cabined to a clearly under-standable range of expressions. The statute extends the uncertainty to marks that “may disparage.” The uncertainty as to what might be deemed disparaging is not only evident on its face, given the subjective-reaction element and shifting usages in different parts of society. It is confirmed by the record of PTO grants and denials over the years, from which the public would have a hard time drawing much reliable guidance.[2]7 Such uncertainty of speech-affecting standards has long been recognized as a First Amendment problem, e.g., in the overbreadth doctrine. . . .

The government argues that the denial of Mr. Tam’s registration “does not eliminate any common-law rights that might exist in [his] mark.” But as the government’s use of “might” indicates, it is unclear whether Mr. Tam could actually enforce any common law rights to a disparaging mark. The 1964 Model State Trademark Act, which most states have adopted, provides that “[n]othing herein shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.” However, the term “mark” is defined as “any trademark or service mark entitled to registration under this Act whether registered or not.” Common law rights to a mark may thus be limited to marks “entitled to registration.” Whether a user of an unregistrable, disparaging mark has any enforceable common law rights is at best unclear. The Restatement (Third) of Unfair Competition notes that the Lanham Act and the Model State Trademark Bill both prohibit registration of disparaging marks and that adoption and use of such marks may preclude enforcement under the common law doctrine of unclean hands. The government has not pointed to a single case where the common-law holder of a disparaging mark was able to enforce that mark, nor could we find one. The government’s suggestion that Mr. Tam has common-law rights to his mark appears illusionary.[3]11

Whether Mr. Tam has enforceable common-law rights to his mark or could bring suit under § 43(a) does not change our conclusion. Federal trademark registration brings with it valuable substantive and procedural rights unavailable in the absence of registration. These benefits are denied to anyone whose trademark expresses a message that the government finds disparages any group, Mr. Tam included. The loss of these rights, standing alone, is enough for us to conclude that § 2(a) has a chilling effect on speech. . . .

B. Trademark Registration Is Not Government Speech

The government suggests, and several amici argue, that trademark registration is government speech, and as such outside the coverage of the First Amendment. “The Free Speech Clause restricts government regulation of private speech; it does not regulate government speech.” Although we find it difficult to understand the government’s precise position as to how trademark registration constitutes government speech, we conclude that there is no government speech at issue in the rejection of disparaging trademark registrations that would insulate § 2(a) from First Amendment review. . . .

In Walker v. Texas Division, Sons of Confederate Veterans, Inc., the Supreme Court detailed the indicia of government speech. The Court concluded that specialty license plates were government speech, even though a state law allowed individuals, organizations, and nonprofit groups to request certain designs. The Court found several considerations weighing in favor of this holding. It emphasized that “the history of license plates shows that, insofar as license plates have conveyed more than state names and vehicle identification numbers, they long have communicated messages from the States.” It stressed that “[t]he State places the name ‘TEXAS’ in large letters at the top of every plate,” that “the State requires Texas vehicle owners to display license plates, and every Texas license plate is issued by the State,” that “Texas also owns the designs on its license plates,” and that “Texas dictates the manner in which drivers may dispose of unused plates.” As a consequence, the Court reasoned, “Texas license plate designs ‘are often closely identified in the public mind with the State.’” Amidst all of its other aspects of control, moreover, “Texas maintains direct control over the messages conveyed on its specialty plates.” “Indeed, a person who displays a message on a Texas license plate likely intends to convey to the public that the State has endorsed that message.”

The government’s argument in this case that trademark registration amounts to government speech is at odds with the Supreme Court’s analysis in Walker and unmoored from the very concept of government speech. When the government registers a trademark, the only message it conveys is that a mark is registered. The vast array of private trademarks are not created by the government, owned or monopolized by the government, sized and formatted by the government, immediately understood as performing any government function (like unique, visible vehicle identification), aligned with the government, or (putting aside any specific government-secured trademarks) used as a platform for government speech. There is simply no meaningful basis for finding that consumers associate registered private trademarks with the government.

Indeed, the PTO routinely registers marks that no one can say the government endorses. See, e.g., RADICALLY FOLLOWING CHRIST IN MISSION TOGETHER; THINK ISLAM (religious marks); GANJA UNIVERSITY (drug-related); CAPITALISM SUCKS DONKEY BALLS; TAKE YO PANTIES OFF; and MURDER 4 HIRE. As the government itself explains, “the USPTO does not endorse any particular product, service, mark, or registrant” when it registers a mark. . . . Trademarks are understood in society to identify the source of the goods sold, and to the extent that they convey an expressive message, that message is associated with the private party that supplies the goods or services. Trademarks are not understood to convey a government message or carry a government endorsement. . . .

In short, the act of registration, which includes the right (but not the obligation) to put an ® symbol on one’s goods, receiving a registration certificate, and being listed in a government database, simply cannot amount to government speech. The PTO’s processing of trademark registrations no more transforms private speech into government speech than when the government issues permits for street parades, copyright registration certificates, or, for that matter, grants medical, hunting, fishing, or drivers licenses, or records property titles, birth certificates, or articles of incorporation. To conclude otherwise would transform every act of government registration into one of government speech and thus allow rampant viewpoint discrimination. When the government registers a trademark, it regulates private speech. It does not speak for itself. . . .

C. Section 2(a) Is Not a Government Subsidy Exempt from Strict Scrutiny

We reject the government’s argument that § 2(a)’s message-based discrimination is merely the government’s shaping of a subsidy program. The government’s defense is contrary to the long-established unconstitutional conditions doctrine. The Supreme Court has repeatedly invalidated denials of “benefits” based on message-based disapproval of private speech that is not part of a government-speech program. In such circumstances, denial of an otherwise-available benefit is unconstitutional at least where, as here, it has a significant chilling effect on private speech.

[T]he Supreme Court has wrestled with how to apply the unconstitutional conditions doctrine while protecting Congress’s ability to direct government spending. . . .” [W]hen the Government appropriates public funds to establish a program it is entitled to define the limits of that program.” United States v. Am. Library Ass’n (2003) (quoting Rust v. Sullivan (1991)). For purposes of a message-discriminatory condition on the grant of government funds, the Supreme Court has said that the government can “disburse[] public funds to private entities to convey a governmental message.”. . .

[T]he government funding cases have thus far been limited to situations where the government has chosen to limit funding to individuals that are advancing the goals underlying the program the government seeks to fund. The restriction on the registration of disparaging marks bears no relation to the objectives, goals, or purpose of the federal trademark registration program. Preventing disparaging marks does not protect trademark owners’ investments; in fact, because § 2(a) can be brought in cancellation proceedings decades after a mark is granted, this provision actually undermines this important purpose of the Lanham Act. And the disparagement proscription has never been alleged to prevent consumer confusion or deception. The government’s viewpoint—and content-based discrimination in this case is completely untethered to the purposes of the federal trademark registration program. It would be a radical extension of existing precedent to permit the government to rely upon its power to subsidize to justify its viewpoint discrimination, when that discrimination has nothing to do with the goals of the program in which it is occurring.

Were we to accept the government’s argument that trademark registration is a government subsidy and that therefore the government is free to restrict speech within the confines of the trademark program, it would expand the “subsidy” exception to swallow nearly all government regulation. In many ways, trademark registration resembles copyright registration. Under the logic of the government’s approach, it follows that the government could refuse to register copyrights without the oversight of the First Amendment. Congress could pass a law prohibiting the copyrighting of works containing “racial slurs,” “religious insults,” “ethnic caricatures,” and “misogynistic images.” It is difficult to imagine how trademark registration with its attendant benefits could be deemed a government subsidy but copyright registration with its attendant benefits would not amount to a government subsidy. And if both must be treated as government subsidies by virtue of their conference of benefits or advantages, though not public money, then the government has the right to make content—or viewpoint-based determinations over which works to grant registration. This idea—that the government can control speech by denying the benefits of copyright registration to disfavored speech—is anathema to the First Amendment. . . .

CONCLUSION

Although we find the disparagement provision of § 2(a) unconstitutional, nothing we say should be viewed as an endorsement of the mark at issue. We recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities. Even Mr. Tam, who seeks to reappropriate the term “slants,” may offend members of his community with his use of the mark. But much the same can be (and has been) said of many decisions upholding First Amendment protection of speech that is hurtful or worse. Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech “inflict[s] great pain,” our Constitution protects it “to ensure that we do not stifle public debate.” The First Amendment protects Mr. Tam’s speech, and the speech of other trademark applicants.

We hold that the disparagement provision of § 2(a) is unconstitutional because it violates the First Amendment. We vacate the Board’s holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.

[Concurring and Dissenting opinions omitted.]

PROBLEM 6-1

Certiorari petitions have been filed in both  In re Tam and Pro-Football, Inc. Assume that the Supreme Court has granted certiorari to the combined petitions. You are clerking for Justice ToBeConfirmed. The “Question Presented” is “Whether the disparagement provision of 15 U.S.C. 1052(a) violates the First Amendment.” What is your answer? Refer to the two opinions you have just read. They diverge considerably on whether § 1052(a)’s disparagement provision 1) burdens constitutionally-protected speech, 2) is government speech (citing Walker), or 3) is akin to a government program (citing Rust). Which arguments do you find convincing? How would you frame the issue? What slippery slopes do you see? Bonus question: In a footnote, the Tam court explicitly confines its holding to the disparagement provision, leaving open the question of whether § 1052(a)’s other provisions, including those prohibiting registration of immoral and scandalous marks, are constitutional. How would you answer that question?

ii.) Marks that falsely suggest a connection to persons. In addition to disparaging marks, § 1052(a) also prohibits marks that “falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.” Note that this is different from disparagement – falsely suggesting a connection need not be disparaging. It is also distinct from § 1052(c)’s prohibition on using names of particular living individuals, and § 1052(e)’s prohibition on marks that are “primarily merely a surname” (both discussed below). The provision barring false associations with “persons” emerged from the concepts of rights of publicity and privacy. It only precludes registration when, among other things, “the plaintiff’s name or identity is of sufficient fame or reputation that when the defendant’s mark is used on its goods or services, a connection with the plaintiff would be presumed.” So, for example, BO BALL with a baseball/football design could not be registered because it falsely suggested a connection with the famous athlete Bo Jackson, but DA VINCI could be registered for jewelry and leather giftware because reasonable buyers would not assume a connection between Leonardo Da Vinci and the trademark owner’s products.[4] The descendants of Crazy Horse, the Native American leader who strongly opposed alcohol use by his people, have objected to the use of his name on “Crazy Horse Malt Liquor.” If they opposed a federal registration of “Crazy Horse Malt Liquor” on disparagement grounds, would they succeed? What would they need to show? What if they opposed a “Crazy Horse Gentleman’s Club” mark for a domestic franchise of France’s famous “Crazy Horse” nude revue?

iii.) Immoral or scandalous marks. To determine whether a mark is too immoral or scandalous to be registrable, courts look at whether a “substantial composite” of the public views it as vulgar or offensive. Courts have held that terms such as BULLSHIT and JACK-OFF have obvious vulgar meanings. But what if the mark in question is capable of multiple meanings? Compare the two opinions below.

In re Marsha Fox

702 F.3d 633 (Fed. Cir. 2012)

DYK, Circuit Judge.

The mark at issue here has two parts: a literal element, consisting of the words COCK SUCKER, and a design element, consisting of a drawing of a crowing rooster. Since 1979, Fox has used this mark to sell rooster-shaped chocolate lollipops. . . . The consumers targeted by Fox’s business are, primarily, fans of the University of South Carolina and Jacksonville State University, both of which employ gamecocks as their athletic mascots. . . .

[T]he association of COCK SUCKER with a poultry-themed product does not diminish the vulgar meaning—it merely establishes an additional, non-vulgar meaning and a double entendre. This is not a case in which the vulgar meaning of the mark’s literal element is so obscure or so faintly evoked that a context that amplifies the non-vulgar meaning will efface the vulgar meaning altogether. Rather, the mark is precisely what Fox intended it to be: a double entendre, meaning both “rooster lollipop” and “one who performs fellatio.” . . .

[T]here is no requirement in the statute that a mark’s vulgar meaning must be the only relevant meaning—or even the most relevant meaning. Rather, as long as a “substantial composite of the general public” perceives the mark, in context, to have a vulgar meaning, the mark as a whole “consists of or comprises . . . scandalous matter.” . . . We therefore see no reason why the PTO is required to prove anything more than the existence of a vulgar meaning to a substantial composite of the general public in order to justify its refusal. . . .

Image from the USPTO Trademark record.

Image from the USPTO Trademark record.

[T]he outcome of our decision is that Fox will remain free to use her mark in commerce. She will be unable, however, to call upon the resources of the federal government in order to enforce that mark.

In re Hershey

6 U.S.P.Q.2d 1470 (T.T.A.B. 1988)

KRUGMAN, Administrative Judge.

While the Examining Attorney has demonstrated that “pecker” is a slang expression for penis, one reference, The American Thesaurus of Slang, bears a 1947 copyright notice indicating that said reference is over forty years old. The more recent reference, the 1975 edition of The Dictionary of American Slang, indicates that use of the term “pecker” meaning penis is rapidly becoming archaic. . . . [Dictionary] evidence, standing alone, is at best marginal to demonstrate that the mark is a vulgar, slang reference to male genitalia and would be recognized as such a reference by a substantial composite of the general public. Moreover, applicant has demonstrated from dictionary definitions of “pecker” that its primary meanings to the public are innocuous, namely, one that pecks, a woodpecker or a bird’s bill. In addition, while not part of the mark sought to be registered, the specimens of record comprise labels showing a design of a bird appearing below the mark. . . . We conclude, therefore, that the term “BIG PECKER BRAND” is, at most, a double entendre, one meaning of which may be a vulgar reference to male genitalia. However, considering the relative paucity of evidence concerning the public’s perception of “pecker” as referring to penis and considering the bird head design on the specimens reinforcing the more conventional meaning of the term, we believe the mark neither offends morality nor raises scandal, and we reverse the refusal of registration under Section 2(a).

PROBLEM 6-2

Hooters is often held up as the oldest example of a restaurant subgenre dubbed “Breastaurants”—defined by Wikipedia as “a restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily-dressed waitresses and barmaids and double-entendre brand name.” (Others include the Tilted Kilt, Twin Peaks, Bone Daddy’s, and Mugs & Jugs.) Hooters, on the other hand, has sometimes referred to itself as “a family restaurant.” HOOTERS owns numerous trademarks including the term HOOTERS and the image of the owl peering through the “OO,” first registered in 1985 (Owls hoot).

Does the federal registration of the HOOTERS mark comply with 1052(a)? Is it scandalous and immoral? Disparaging? Does your answer only go to the word mark, or to the combination of word and logo? Both?

Your analysis will require you to answer the following:

1.) What is the meaning of “Hooters”? Does the owl image make a difference? Positive or negative? Would the reasoning of the Fox court and the Hershey TTAB decision provide different answers?

2.) Did a “substantial composite” of the public or a particular group (which?) find the term immoral, scandalous, or disparaging when it was registered?

3.) Who would have standing to challenge? The courts have been relatively generous with standing in the context of cases alleging marks are immoral or scandalous, just as they are in the disparaging marks cases. In  Bromberg v. Carmel Self Service, Inc., 198 U.S.P.Q. 176 (T.T.A.B. 1978), the TTAB held that two women had standing to oppose a registration application of ONLY A BREAST IN THE MOUTH IS BETTER THAN A LEG IN THE HAND for restaurant services on grounds that the mark was immoral and scandalous, and disparaging to women, even though they were not in the restaurant business and pleaded no commercial injury; they needed merely to be “members of a group who may believe the mark to be scandalous.” (Emphasis added.) Is this enough to meet a constitutional standing requirement?

iv.) Deceptive marks. A deceptive mark can never be registered, unlike “deceptively misdescriptive” marks (see the discussion of § 1052(e) below), which can be registered upon acquiring secondary meaning. A mark is deceptive if its misrepresentation materially affects purchasing decisions. LOVEE LAMB for car seat covers made entirely of synthetic fibers and WHITE JASMINE for tea that contained no white tea were found to be deceptive because they were likely to affect the purchasing decisions of customers who wanted sheepskin seats, or the purported health benefits of white tea.[5]

2.) 1052(b)

Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

Flags and other government insignia. Section 1052(b) denies registration to a mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” Government “insignia” is a narrow category, and only includes “specific designs formally adopted to serve as emblems of governmental authority,” such as flags and official seals.[6] Other national symbols, such as the Statue of Liberty or the Capitol building, may be part of a registered mark, as long as the mark does not falsely suggest a connection with the government in violation of § 1052(a).[7] What is the policy behind keeping core “emblems of governmental authority” from serving as registered trademarks, but allowing the registration of other national symbols?

Government entities are also precluded from registering official insignia as trademarks.[8] Outside of this narrow prohibition, however, the government owns many marks. In the wake of recent wars, there has been an uptick in trademark registrations by the Marines and other armed forces, along with efforts to protect their brands. The Navy successfully objected to Disney’s efforts to trademark the name SEAL TEAM 6. The Marines have objected to uses ranging from Marine-themed toilet paper called “Leatherneck Wipes” to a Star Trek fan site called “Starfleet Marine Corps Academy” that used the Marine Eagle (the website could keep the name but had to remove the eagle). They have also objected to uses by veterans—for example, a veteran who started a company called Semper Fidelis Garage Doors was required to remove the Marine emblem from his trademark. Who should have the exclusive right to use something like the Marine emblem as a source indicator? The government? Veterans? Disney? Entrepreneurs who successfully associate it with a product?

3.) 1052(c)

Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

Names and portraits of living individuals. Section 1052(c) bars the registration of a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual” or “deceased President of the United States during the life of his widow,” unless there is written consent. (Does this language need to be amended if Ms. Clinton becomes president?) This section only applies when “the person is so well known that the public would assume a connection or there will be an association of the name and the mark as used on the goods because the individual is publicly connected with the field in which the mark is being used.”[9] For example, registration of the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS and BARACK’S JOCKS DRESS TO THE LEFT was rejected because they clearly identified President Obama.[10] By contrast, the authors of this casebook do not have § 1052(c) claims against BOYLES or JENNIFER HOME FURNITURE, both registered marks for furniture stores, because the public would not associate them with those trademarks.

4.) 1052(d)

Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive:

Confusingly similar to existing marks. Section 1052(d) provides that a mark cannot be registered if it is likely to cause confusion with another active mark, though concurrent registration may be allowed in limited circumstances based on good faith prior use. The test for likelihood of confusion at the registration stage is the same as that used for infringement, and is explored in detail elsewhere in this book. Students who enter trademark practice after graduation will spend considerable time assessing whether marks proposed for registration are likely to cause confusion with existing marks.

5.) 1052(e)

Consists of a mark which

(1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them,

(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title,

(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,

(4) is primarily merely a surname, or

(5) comprises any matter that, as a whole, is functional.

Section 1052(e) precludes registration of a mark that is: functional; merely descriptive or “deceptively misdescriptive”; “primarily geographically descriptive” or “primarily geographically deceptively misdescriptive”; or “primarily merely a surname.” However, marks within some of these categories can become registrable after they acquire distinctiveness (see § 1052(f) below).

i.) § 1052(e) “deceptively misdescriptive” v. § 1052(a) “deceptive.” Marks that are functional or merely descriptive, and the reasons they are ineligible for protection, have already been discussed elsewhere in this chapter. But what about deceptively misdescriptive marks? Like merely descriptive marks, these marks describe their products in a way that falls short of being suggestive; however, the description is misleading. The mark TITANIUM for RVs might be “merely descriptive” if the vehicles are made of titanium, but is “deceptively misdescriptive” if the RVs do not contain titanium.[11] The test is “(i) whether the mark misdescribes the goods to which it applies; and (ii) whether consumers are likely to believe the misdescription.”[12] If the misdescription is one that materially affects purchasing decisions—for example, if consumers purchased TITANIUM RVs because they thought they were made of titanium—then the mark goes beyond being deceptive misdescriptive and is flat out “deceptive” under § 1052(a). The distinction between “deceptive” under § 1052(a) and “deceptively misdescriptive” under § 1052(e) is important because deceptive marks are never registrable, while deceptively misdescriptive marks can be registered if they acquire distinctiveness (see § 1052(f) below).

ii.) Primarily geographically descriptive, or geographically deceptively misdescriptive. For a mark to be geographically descriptive, consumers must assume that the goods or services originated from the place designated in the mark. So, for example, CALIFORNIA PIZZA KITCHEN was found geographically descriptive. “[E]ven if applicant may have opened a branch of its restaurant outside of California, we believe customers encountering this out-of-state restaurant would believe that the services originated in California. It should be noted that restaurant services would include the restaurant concept, menu, recipes, etc., and even though a customer in Atlanta, Georgia would obviously recognize that the particular branch of the restaurant was physically located outside of California, he would be likely to assume that the restaurant services such as the concept, recipes and even possibly the food originated in the state of California. Thus, we believe that the primary significance of “CALIFORNIA” in applicant’s mark would be its geographical significance.”[13] Registration was thus refused. Similarly, CAROLINA APPAREL for a clothing store was found geographically descriptive. “Accordingly, although applicant acknowledges that its services are rendered in the state of North Carolina, the actual items of clothing may come from a variety of locations, applicant contends. It is applicant’s position, therefore, that the asserted mark is not primarily geographically descriptive of its services.” The Board was not convinced by this reasoning. “It is clear that the primary significance of the designation CAROLINA APPAREL, APPAREL being generic and disclaimed by applicant, is geographic. The addition of a generic term to a geographic term does not avoid the refusal of primary geographic descriptiveness. Inasmuch as the services admittedly do or will come from the place named in the mark, a public association of the services with the place named in the mark is presumed. . . . Accordingly, there is clearly an association of applicant’s retail clothing store services with the place named in the mark.”[14] Registration was refused. Do you agree with these conclusions? On the other hand, AMAZON for the online marketplace, SATURN for cars, and ATLANTIC for the magazine are not geographically descriptive because there is no goods/place association. While geographically descriptive marks are initially unregistrable, they can be registered if they acquire distinctiveness (see 1052(f) below).

Examples of “geographically deceptively misdescriptive” marks include HAVANA CLUB for cigars that were not from Cuba and NEAPOLITAN for sausages made in Florida instead of Naples.[15] However, a misleading mark might not be deemed geographically deceptively misdescriptive if it does not mislead a “substantial portion of the intended audience.” MOSKOVSKAYA—Russian for “of or from Moscow”—on vodka that was not from Moscow was initially rejected for registration, but this decision was vacated and remanded because it was not clear that the mark would deceive a substantial portion of relevant consumers, as only 0.25% of the U.S. population speaks Russian.[16] Consider the following: the mark SWISS ARMY KNIFE is used on penknives that are made in China rather than Switzerland. Is the mark registrable? Why or why not?

Some geographical terms, such as SWISS cheese and PEKING duck, have become generic and cannot serve as trademarks at all. But if geographical terms cease being generic, and gain secondary meaning, they may become registrable. At one time, BUDWEISER was the generic term for beer brewed according to a method pioneered in the town of Budweis. However, it is now associated in the minds of consumers with Anheuser-Busch and registrable in the US (though not in the EU because of preexisting use of the mark by the Czech company Budvar).

iii.) Primarily merely a surname. On its face, this prohibition focuses on surnames rather than full names. So JOHN SMITH might be registrable, but SMITH would not, absent secondary meaning (see 1052(f) below). What is the general policy behind this provision? Why not allow a business owner to register SMITH for her products, without a showing of secondary meaning? Of course, many surnames have secondary meaning and are famous registered marks, such as FORD, DUPONT, or MCDONALD’S. What about J. SMITH—is this still “primarily merely a surname”? How about J.D. SMITH? SMITH ELECTRONICS? The touchstone for answering such questions is “the primary significance of the mark to the purchasing public.”[17] So, for example, when surnames are combined with other terms (DELL COMPUTERS, DUKE UNIVERSITY), registrability would turn on whether or not the public perceives the mark as a whole as “primarily merely a surname.” Similarly, when a mark consists of a surname that is a double entendre (BIRD, COOK, KING), courts will look at the predominant meaning in the minds of consumers encountering the mark (does BIRD refer to the surname or the feathered vertebrate?). When the name of a famous person is used as a mark, it is unlikely to be “primarily merely a surname” because the public will instead associate it with the well-known personality.[18]

6.) 1052(f)

Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before December 8, 1993.

Registration of otherwise problematic marks with secondary meaning. Section 2(f) provides that marks that are merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or primarily merely a surname can be registered if they acquire secondary meaning. Proof of exclusive and continuous use in commerce for five years can constitute prima facie evidence of distinctiveness. As a result of international agreements, marks that are primarily geographically deceptively misdescriptive can be registered only if they acquired secondary meaning before December 8, 1993. The remaining categories of marks addressed in § 1052—those that are deceptive, disparaging, immoral or scandalous, functional, falsely suggest connections with people or institutions, use flags or government seals, identify living individuals, or are likely to cause confusion with another mark—are not registrable even if they acquire distinctiveness. Why do we allow the registration of some categories of marks if they acquire secondary meaning and not allow others? What distinctions do you see between the various categories?

Section 2(f) also specifies proceedings for opposing or canceling marks on the basis of dilution, which we will deal with later in this book. Only “famous” marks are protected against dilution. There are two types of dilution, blurring and tarnishment. “[D]ilution by blurring” is “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” “[D]ilution by tarnishment” is “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”[19] Note, that this provision requires the owner of the mark to bring the action to refuse registration, not the PTO to refuse it on application.

A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

PROBLEM 6-3

(We will be returning to this problem in future chapters, but you are asked here only about one aspect of it.)

Alan Turning is the brilliant computer scientist behind a new program known as Faceplant. Mr. Turning is a long-time vocal critic of Facebook, the social network site. He believes that its privacy practices are poor and less than transparent, that it imposes on its users a tightening spiral of narcissism and withdrawal from the “real” world, and that its network structure and architecture is overly controlling and anti-competitive. Mr. Turning is fond of pointing out that Facebook was able to supplant Myspace as the dominant social network because there was “open competition on the open web.” Facebook, by contrast, has boasted that its goal is to be the portal through which users get all their content, e-commerce services and forms of communication. Mr. Turning believe that Facebook is trying to replace the “open” structure of the World Wide Web with its own carefully controlled gated community, from which competitors or rivals can be excluded. His saying, “Their goal is to be the last social network!” has become something of a rallying cry for Facebook’s critics.

Mr. Turning’s solution was to create a program called Faceplant that he claimed would restore “control of privacy to the user and control of competition to the free market.” Mr. Turning’s program simplifies the process of selecting and fine-tuning one’s privacy preferences by automating the process of jumping through Facebook’s cumbersome sets of menus. It also “nags” users if they stayed on Facebook for too long, sending messages such as “Enough with the profile tweaks!” “Only losers stalk their high school boyfriends!” and “It’s Spring! Go for a walk outside!” Finally, the program “unlocks” Facebook’s integration with other apps, so that users can use any app or play any game “inside” Facebook, not merely those approved by the Facebook app store. Mr. Turning made clear by both the name of his program and the logo he selected that his product was critical of Facebook. He claimed that the name “Faceplant” was designed to highlight two of his criticisms – that users become effectively unconscious because of Facebook’s influence (“doing a faceplant” is a slang expression for falling rapidly asleep) and that they turn away from more imaginative engagement with forms of culture such as books, into vegetative recipients of manipulative advertising, mere “plants.”

Both Facebook’s name and its original logo have been registered on the Principal Register since 2005. The logo is shown below.

Mr. Turning’s logo for Faceplant is based on a modification of that image to send a very different message.

Mr. Turning has applied for a Federal trademark on both the name “Faceplant” and the logo above which changes Facebook’s “like” symbol by rotating it 90 degrees and adding a raised middle finger. He is giving the app away for free, but he does make a considerable amount of money from advertisements seen by the millions of users flocking to his website, Faceplant.com.

Would Mr. Turning be able to register his proposed marks? Why? Would Facebook be able to oppose registration? On what grounds and how? Bonus question: If refused registration on the Principal Register, would Mr. Turning be able to seek any other kind of protection for the name “Faceplant” and the logo?

Notes

[←1]

The last clause of § 1052(a) was inserted to comply with the TRIPS Agreement. It prohibits geographical indications on wines and spirits that identify a place other than their origin, even if the term is not misleading; “Champagne” cannot be used on sparkling wine unless it comes from Champagne, France. (Or unless the wine was grandfathered in by being used before the relevant date. Hence the excellent Chandon Brut sparkling wine from California may not use the term “champagne” but Cooks Champagne may.)

[←2]

7 The PTO’s record of trademark registrations and denials often appears arbitrary and is rife with inconsistency. The PTO denied the mark HAVE YOU HEARD SATAN IS A REPUBLICAN because it disparaged the Republican Party, but did not find the mark THE DEVIL IS A DEMOCRAT disparaging. The PTO registered the mark FAGDOG three times and refused it twice, at least once as disparaging. The PTO refused to register the marks FAG FOREVER A GENIUS! and MARRIAGE IS FOR FAGS, but allowed the mark F*A*G FABULOUS AND GAY. And PTO examiners have registered DANGEROUS NEGRO, CELEBRETARDS, STINKY GRINGO, MIDGET–MAN, and OFF–WHITE TRASH—all marks that could be offensive to a substantial composite of the referenced group. We see no rationale for the PTO’s seemingly arbitrary registration decisions, let alone one that would give applicants much guidance.

[←3]

11 The government also argues that Mr. Tam “may” have rights under 15 U.S.C. § 1125(a) (“Section 43(a)”). First, those rights would not include the benefits afforded to federally registered marks. Furthermore, it is not at all clear that Mr. Tam could bring a § 43(a) unfair competition claim. . . .[C]ourts have suggested that § 43(a) is only available for marks that are registrable under § 2. . . .

[←4]

See In re Sauer, 27 U.S.P.Q.2d 1073 (T.T.A.B. 1993), aff’d, 26 F.3d 140 (Fed. Cir. 1994); Lucien Piccard Watch Corp. v. Crescent Corp., 314 F. Supp. 329 (S.D.N.Y. 1970).

[←5]

See In re Budge Mfg. Co., 857 F.2d 773 (Fed. Cir. 1988); In re White Jasmine LLC, 106 U.S.P.Q.2d 1385 (T.T.A.B. 2013).

[←6]

Trademark Manual of Examining Procedure § 1204.

[←7]

Liberty Mut. Ins. Co. v. Liberty Ins. Co. of Tex., 185 F. Supp. 895 (E.D. Ark. 1960) (Liberty Mutual Insurance Company had a valid registration of a mark using the Statue of Liberty); Heroes, Inc. v. Boomer Esiason Hero’s Foundation, Inc., 43 U.S.P.Q.2d 1193 (D.D.C. 1997) (charity had a valid registration for a mark that included an image of the Capitol building).

[←8]

In re City of Houston, 101 U.S.P.Q.2d 1534 (T.T.A.B. 2012) (Houston could not register its city seal).

[←9]

Ross v. Analytical Technology Inc., 51 U.S.P.Q.2d 1269 (TTAB 1999) (James W. Ross, Jr. was sufficiently well-known in the field to bar registration of ROSS for electrochemical analysis equipment).

[←10]

In re Richard M. Hoefflin, 97 U.S.P.Q.2d 1174, 2010 WL 5191373 (T.T.A.B. 2010).

[←11]

See Glendale Intern. Corp. v. U.S. Patent & Trademark Office, 374 F. Supp. 2d 479 (E.D. Va. 2005) (registration of TITANIUM for RVs that were not made of titanium was properly rejected).

[←12]

Id.

[←13]

In re California Pizza Kitchen Inc., 10 U.S.P.Q.2d 1704 (T.T.A.B. 1988).

[←14]

In re Carolina Apparel, 48 U.S.P.Q.2d 1542 (T.T.A.B. 1998).

[←15]

Corporacion Habanos, S.A. v. Anncas, Inc., 88 U.S.P.Q.2d 1785, 2008 WL 4409768 (T.T.A.B. 2008); In re Jack’s Hi-Grade Foods, Inc., 226 U.S.P.Q. 1028 (T.T.A.B. 1985).

[←16]

In re Spirits Intern., N.V., 563 F.3d 1347 (Fed. Cir. 2009) (noting that if a larger percentage of vodka consumers speak Russian, or non-Russian speakers would understand MOSKOVSKAYA to suggest “from Moscow,” then this might amount to a substantial portion).

[←17]

Ex Parte Rivera Watch Corporation, 106 U.S.P.Q. 145 (Comm’r Pat. & Trademarks 1955).

[←18]

Michael S. Sachs, Inc., 56 U.S.P.Q.2d 1132 (T.T.A.B. 2000) (“The mark M.C. ESCHER would no more be perceived as primarily merely a surname than the personal names P.T. Barnum, T.S. Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle.”).

[←19]

§ 1125(c).

Table of Contents

Notes