Seattle Trademark Lawyer

Section 2(a) of the Lanham Act bars registration of trademarks that may “disparage” persons, institutions, beliefs, or national symbols, or bring them into “contempt, or disrepute” (the “disparagement” clause); or that include “immoral” or “scandalous” matter (the “scandalousness” clause).

In June, the Supreme Court held that the disparagement clause violates the First Amendment. See Matal v. Tam, 582 U.S. ___ (2017). In that case, the Court found that the disparagement clause-based denial of an application to register THE SLANTS by the Asian-American lead singer of the Portland-based band of that name infringed the applicant’s free speech rights (and, indeed, his effort to claim a racial slur as a badge of honor). For this reason, the disparagement clause is no longer a ground on which the U.S. Patent and Trademark Office will deny an application for federal trademark registration.

Importantly, however, this decision doesn’t extend to the scandalousness clause. While the constitutionality of that provision is separately being challenged, the case hasn’t yet been decided. See In re Brunetti, No. 15-1109 (Federal Circuit) (considering the registrability of the trademark FUCT for apparel). For now, therefore, any trademark the USPTO deems to be “immoral” or “scandalous” will be placed into suspension (i.e., frozen) until the Bruenetti case directs how those trademarks should be examined.

While trademark law is moving in the right direction, the floodgates have not yet opened on profanity or other trademark elements that some may consider offensive. That time probably will come, but pending the Federal Circuit’s decision in Bruenetti, it’s not here quite yet.

No question, the PTO got it right.

The PTO’s administrative law branch, the U.S. Trademark Trial and Appeal Board, finally decided the REDSKINS trademark is too offensive to continue to justify the expanded rights that stem from federal registration. So it canceled the team’s six registrations on the ground the mark is “immoral or scandalous.”

The mark has been so offensive to Native Americans for so long, it’s a shame it took the government this long to strip the mark of the additional rights it had granted.

However, its doing so in no way means the team has to stop using the mark or that others can sell merchandise bearing the trademark without liability. Both of those things were widely reported, but they’re wrong. Unless and until a court makes the same determination the TTAB made, the Washington Redskins can continue to enforce their common law rights in their mark — rights that date back decades. Hopefully someday soon a court will decide as the TTAB did, but it is not obligated to do so. Unlike other federal agency decisions, U.S. courts do not defer to PTO decisions.

For that reason, the TTAB’s decision is mostly symbollic. Since we recognize common law trademark rights in the United States — rights that automatically arise through trademark use — cancellation of the team’s registrations doesn’t cancel the mark itself.

KIRO interviewed me about this issue on the radio. Text of the story is viewable here. Unlike other news coverage, KIRO didn’t overstate the decision’s limited implications.

Time once again for the STL grab bag!

• On Aug. 20, the Seattle Post-Intelligencer ran Ann Woolner’s syndicated column on Johnson & Johnson’s infringement dispute with the American Red Cross over ARC’s rights to the red cross. Ms. Woolner sided with Johnson & Johnson, concluding if the company “wants to keep what it claims as its 100-year old right to use the mark commercially, it had to either negotiate a compromise or sue. The Red Cross left it with only that one option.”
  
• On Aug. 19, law blogger Marc Randazza wrote a long post about Nautica Apparel Inc.’s TTAB proceeding opposing adult entertainer Shauna Tokumi’s application to register her screen name NAUTICA THORN as a trademark. He was ok with the notice of opposition until Nautica alleged that registration should be refused on the ground that the mark is scandalous or immoral: “Oh, see, now they went and made me mad,” he wrote. “In my opinion, this claim should subject Nautica® to sanctions. … “[I]t appears that Nautica’s® attorneys went way overboard with that claim. Section 2(a) only applies to the mark itself — not the services provided or identified by the mark. The USPTO isn’t supposed to delve into whether the product or services are immoral or scandalous, but solely whether the mark itself is (much to the chagrin of some examiners). This was a gross overreach and Nautica® should have to pay Shauna Tokumi’s fees for dismissing that count. It won’t happen, but they should.” As usual, Mr. Randazza provides a good read.
  
• I have been remiss in reporting on two Seattle law blogs. Really remiss in one case. Seattle attorney Venkat Balasubramani has been writing his blog, Spam Notes, since July 2006. He writes about “Electronic communications, privacy, identity theft, data protection, adware, spyware, and more.” He recently posted a disturbing story about a lawyer who was sanctioned after missing a settlement conference because the court’s minute order didn’t make it past his firm’s spam filter that had been installed earlier that same day. (The District of Colorado’s 10-page order awarding fees against the lawyer here). Ouch!
  
• I feel somewhat less guilty about the other blog, which I can almost passably characterize as “new.” It’s the Open-Government Blog, which Michele Earl-Hubbard and Greg Overstreet began publishing in May in connection with the opening of their new law firm, the Allied Law Group. They write about “open government issues of interest to regular citizens, media, trade associations, and government agencies,” including decisions on Washington’s Public Records Act, Open Public Meetings Act, and the media. These guys are the best at what they do, so I am sure you can count on the o-g blog for breaking news and analysis on Washington’s sunshine laws.

The New York Times reported December 18 that opposition from five students at Cleveland State University’s College of Law to James Kirby’s application to register COCAINE as a trademark in connection with an energy drink has led the Patent and Trademark Office to rethink its tentative approval for the mark. Mr. Kirby reportedly owns Redux Beverages, the maker of the drink. The students and their professor, Michael Davis, represent Americans for Drug Free Youth, Inc. They argued that the mark should be barred from registration under 15 U.S.C. Sec. 1052(a) because it is “immoral or scandalous.” The proceeding is Opposition No. 91173295.

Mr. Kirby is not alone in seeking to register COCAINE. Applications to register COCAINE for beauty creams (Serial No. 78820405) and clothing (Serial No. 77031642) are currently pending with the Patent and Trademark Office, and DEER CO-CAIN BLACK MAGIC is already registered for “nutritional supplements, with attractions for deer” (Registration No. 2662785).