Immoral or Scandalous Matter?

October 14, 2009

by Jason Fischer

One of the "peculiarities" of U.S. trademark law is that the government has a stick up its collective ass about recognizing trademarks that may be suggestive of dick-and-fart humor.  Section 2 of the Lanham Act (the federal statute that creates trademark rights) provides:

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 . . . .

15 U.S.C. § 1052 (2008).

epic-name-fail

Presumably, you can decide for yourself whether the above image is offensive or (as I did) worthy of a snicker or three.  It looks like, from the license plate and unfamiliar make/model of the van, this company is doing business overseas, but rest assured this mark would never appear on the principal register of trademarks in this country.  Now, don’t misunderstand me; if this business opened up an office on this side of pond, they could likely prevent others from using the same mark, based on any common law rights that could be established, but our federal government would never give them the benefits of a federal registration for the mark.

Now, you may be asking yourself, "Wait; isn’t that the whole point of trademark law — preventing others from using your mark?"  That is true, but the game gets much, MUCH easier when you have a federal registration.  Establishing common law rights is generally an extremely lengthy and expensive evidentiary process, which involves paying your attorney to prepare and file a phone-book-sized amount of paperwork in any infringement suit.  Compare that with the single sheet that must be presented by the owner of a federally registered trademark, and you begin to see some of the benefits of registration.

Lots of hardcore civil libertarians that I know pound the table and froth at the mouth while denouncing the puritanical nature of our trademark regime.  Even though I don’t get as worked up, personally, I do happen to agree.  What difference does it make that someone wants to call their business "Butt Drilling"?  Do we really need the federal government to discourage that guy from doing what he wants with his entrepreneurial humor?  Should we be shielded from this "attack of immorality" at the expense of his freedom?  Trust me, plenty has already been written on whether there is even a rational basis for Section 2(a), by people way smarter than I — enough that I won’t bore you with any more.  Suffice it to say, it is something that must be given careful consideration when choosing your brand.


This story has also been published on The Tactical IP Blog.


The North Face claims that consumers don’t know their heads from their asses

October 3, 2009

by Jason Fischer

The North Face logo

Clothing producer, The North Face (TNF), recently got a lesson in how bad trademark enforcement decisions can make a company look silly. It seems a St. Louis teen thought that it would be amusing to create a clothing line parody, calling it “The South Butt,” — south being the logical opposite of north and butt being… well… you get the idea. TNF was not amused, however, and they set their attorneys to attack mode, sending a cease and desist letter to the college freshman (source).

TNF’s letter asserted that use of the “South Butt” logo (pictured below) constitutes an infringement of their own federally registered trademark (pictured above). On its face, TNF’s claim is not so unreasonable. As any trademark owner (who has a decent attorney) can tell you, trademark rights can be lost if you don’t enforce them. TNF must, in order to maintain its ability to sue legitimate infringers, actively look for unauthorized uses of its logo. However, owning federal trademark rights does not mean you can stop every use of your mark that you don’t like. Federal trademark law was created to prevent consumers from becoming confused about the source of goods, not give complete exclusionary rights in logos, words, and phrases. It certainly wasn’t meant to give companies the power to stifle criticism — a point that corporate attorneys seem to frequently fail to explain to their clients.

The South Butt logo

In order to be actionable as an infringement, the South Butt logo must be likely to cause confusion in the minds of the consuming public. In other words, if “an idiot in a hurry” would not be able to tell the difference between these two logos, then TNF could conceivably stop South Butt from using their logo. I think South Butt’s attorney states the issue with TNF’s claim pretty well:

I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt. (source)

The irony is that, as many other companies have learned in the past, over enforcing your trademark rights can have the exact opposite effect from the one that you intended. In this case, only a few people were even aware of the “South Butt” brand before TNF took any action. Presumably, TNF wanted to suppress this innocent gibe at their popular brand, but instead, they only managed to boost web traffic at shop.thesouthbutt.com.


This story has also been published on The Tactical IP Blog.


Glenn Beck’s WIPO Complaint

September 28, 2009

wipo logoA very interesting case that Marc is handling.

He filed this Response (don’t forget the annexes) to Glenn Beck’s Complaint (exhibits included) yesterday.

UPDATE: He has requested that Mr. Beck stipulate to the First Amendment applying to these proceedings. I will update you when Beck responds.

ANOTHER UPDATE — ROUND TWO:

Glenn Beck filed a supplemental filing.
The Arbitrator accepted it and asked for a surreply.
The surreply — (and the exhibits to it)

Marc asked that LS’s editors/writers publish no further commentary on the case until a decision is rendered. However, there is commentary and analysis here.

He has further asked that any comments to this post should be respectful to both Mr. Beck and his attorneys.


“But We’re Just An Innocent Web Host” Ain’t Gonna Cut It

September 7, 2009

Well, yes, you actually do have to worry.  If you are an online service provider, the DMCA is not a magic shield.  Do your homework and keep your eyes open, or you'll get tagged as hard as the actual infringer.

Well, yes, you actually do have to worry. If you are an online service provider, the DMCA is not a magic shield. Do your homework and keep your eyes open, or you'll get tagged as hard as the actual infringer.

Akanoc Solutions Inc., Managed Solutions Group Inc., and Steven Chen, the owner of the two companies learned the hard way that being a web host doesn’t make you automatically free from liability for copyright and trademark infringement committed by your customers. The ISPs involved hosted websites that sold knock-off Louis Vuitton goods, and they were made aware of that fact. A jury found that they knew, or should have known, that their customers were using their services for this purpose, and tagged the web hosting company for a $32 million verdict.

Chen’s lawyers argued that he and his companies were protected from being assessed damages under the DMCA, which generally does protect online service providers from these kinds of suits. However, given that Chen’s companies both provided the infrastructure for the infringement scheme and that they were made well aware of the activity, but turned a blind eye to it, they lost their immunity. See Computerworld.

The case is Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., U.S.D.C., Northern District of California, Case5:07-cv-03952-JW.
The complete case file is available here, on Justia.

Important case documents:

    Vuitton’s Amended Complaint
    Defendants-motion-summary-judgment
    Plaintiff’s Opposition to Motion for Summary Judgment
    Akanoc-Order-on-summ-judgment
    Jury instructions
    Jury verdict form

Medinol v. Neuro Vasx is Dead

August 31, 2009

In Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q. 2d 1205 (TTAB 2003), the Trademark Trial and Appeal Board held that a trademark registration that contains erroneous information, such as goods and services that were never sold under the mark, would render a trademark registration as fraudulent and subject to cancellation. The TTAB imposed a constructive knowledge standard for errors in the trademark application. Calling a mere error “fraud” seemed like harsh medicine.

Under Medinol, if an applicant for a trademark says that he sells Widgets, Donkeys, and Thingamajigs under the trademark RANDUZZI, he had better actually sell Widgets, Donkey, and Thingamajigs under that mark. If the applicant only sells Widgets and Donkeys, Medinol said that he committed “fraud” — therefore the application is void. To the best of my knowledge, nobody has been prosecuted for fraud, nor perjury under this standard — it has just cost them their trademark registration.

There has been a lot of consternation over this case. Calling an honest mistake “fraud,” rubs some people the wrong way. Well, it sure rubbed the Court of Appeals for the Federal Circuit the wrong way. The CAFC just ruled that Medinol is no longer good law. See In Re Bose Corporation, Opposition No. 91/157,315.

The Board stated in Medinol v. Neuro Vasx, Inc. that to determine whether a trademark registration was obtained fraudulently, “[t]he appropriate inquiry is . . . not into the registrant’s subjective intent, but rather into the objective manifestations of that intent.” 67 USPQ2d 1205, 1209 (T.T.A.B. 2003). We understand the Board’s emphasis on the “objective manifestations” to mean that “intent must often be inferred from the circumstances and related statement made.” Id. (internal quotation marks omitted) (quoting First Int’l Serv., 5 USPQ2d at 1636). We agree. However, despite the long line of precedents from the Board itself, from this court, and from other circuit courts, the Board went on to hold that “[a] trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading.” Id. (emphasis added). The Board has since followed this standard in several cancellation proceedings on the basis of fraud, including the one presently on appeal. See Bose, 88 USPQ2d at 1334.

By equating “should have known” of the falsity with a subjective intent, the Board erroneously lowered the fraud standard to a simple negligence standard. See Ileto v. Glock, Inc., 565 F.3d 1126, 1155 (9th Cir. 2009) (“Knowing conduct thus stands in contrast to negligent conduct, which typically requires only that the defendant knew or should have known each of the facts that made his act or omission unlawful. . . .”). (Op. at 5-6)

This result seems fair. Should a company lose its trademark simply because of what could have been an honest error in its original application? On the other hand, this case might prove to be all that is necessary for sleazy companies and sleazier lawyers to make “mistakes,” under a standard that will essentially free them from any responsibility at all. Nevertheless, for better or worse, Medinol v. Neuro Vasx is dead.


Domain Privacy Service Can Be Liable Under the ACPA

May 19, 2009
The wrong approach for a domain privacy service.

The wrong approach for a domain privacy service.

The Central District of California just issued this thoughtful, reflective, and lengthy opinion in a case two of my Los Angeles partners and I are working on.

Web hosting company, Solid Host, took the position that a domain privacy service should be held responsible for the actions of one of its customers, when that customer was a hacker who stole a Solid Host’s domain name, and the privacy service took a “not our problem” approach to the theft.

From a trademark practitioner perspective, the really interesting part is that the court sustained the viability of a claim that a privacy service may be contributorily liable under the ACPA for its customer’s actions.

While this is not a final ruling in the case, the theory that a privacy service can be held liable for the actions of its customers has passed its first test, and got past the privacy service’s motion to dismiss.

See Solid Host v. NameCheap, et.al.


Pussy TTAB upholds pussy Examiner and says that Americans are too pussified to deal with “PUSSY”

May 15, 2009
The TTAB says you can't handle this.

The TTAB says you can't handle this.

Jonathan Shearer launched a new energy drink that he cheekily named PUSSY. When he applied for trademark registration for the logo shown above, the examining attorney denied registration under Section 2(a) of the trademark act — the section that allows examining attorneys and/or their supervisors to impose their personal morality on any trademark before them. See In re: Shearer (TTAB May 14, 2009) (not precedential)

Under Section 2(a), to be considered “scandalous,” a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … [or] calling out for condemnation.” In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994). “Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, … and in the context of contemporary attitudes.” Id.

Llewellyn Joseph Gibbons said it well in his article, Semiotics of the Scandalous and the Immoral and the Disparaging: Section 2(a) Trademark Law after Lawrence v. Texas, 9 MARQ. INTELL. PROP. L. REV. 187, 248 (2005) at n. 89 (“At best, this ‘substantial portion’ of the general public is a vacuous point on a nebulous continuum. One that is often chosen post-hoc to justify the decision-maker’s preconceived determination.”).

Lets see if Mr. Gibbons is right. In rejecting the mark under Section 2(a), the Examining Attorney wrote:

The applied-for mark PUSSY is slang for ‘female genitalia’ or reference to women sexually and is thus scandalous because such term is described as vulgar, offensive, taboo, obscene and coarse. (Op. at )

The Examining Attorney is clearly not all that bright, since he threw “obscene” in there. If anyone would like to educate him on the legal meaning of “obscenity,” perhaps a little remedial reading of a little known case called “Miller v. California” would be helpful. But, lets read some more of his justification.

… the continually evolving meaning of the term “pussy” has come to mean something more, (sic) than merely a cat, or a catkin, a pus wound, or even that of a weak and cowardly male. In today’s attitudes and mind set, the term “pussy” is used in a most offensive and vulgar manner. Specifically, the term “pussy” refers to female genitalia, desire for sexual intercourse with women and ultimately women as sexual objects.”

I don’t know, I think that any man who thinks that the term “pussy” is something that is “immoral and scandalous” would be a good definition for a fucking pussy too.

The Applicant countered:

“Applicant respectfully submits that its mark is not scandalous on the grounds that (1) the mark is not obscene under its ordinary meaning; (2) the general public does not perceive the mark to be scandalous; and (3) any ambiguity as to the meaning of the mark must be construed in favor of the Applicant.” Applicant’s Brief at 5. In this regard, Applicant argues that the Examining Attorney has failed to meet the burden of showing that the entire mark is scandalous and that the Examining Attorney has disregarded “… the numerous common meanings [of PUSSY] that are not scandalous or vulgar.” Id. at 7.

Applicant continues, “While it may be a slang term for female genitalia, this meaning clearly does not apply to Applicant’s all natural energy drinks, whether explicitly or implicitly. At best, the term is a double entendre that has been used for more over (sic) 100 years.” Id.

In his reply brief Applicant argues further that we must look at his mark in its entirety, stating, “Nothing about this design is suggestive of female genitalia.” (Op. at 7)

The TTAB clearly had its mind made up before examining the case. All three judges were appointed in 2005 and 2006 — the high water mark of the religious conservatives’ grip on power in Washington. You can rest assured that none of these three douchebags got where they are by respecting the constitution or due process, and why should they begin now.

A joyful little quote from the TTAB:

Section 2(a) may be difficult to define, we reject the notion that those boundaries are coextensive with the boundaries of permissible, that is, uncensored, artistic expression. Neither vaudeville nor South Park provide a useful guide for applying Section 2(a). (Op. at 21)

However, the TTAB has it precisely wrong here. If a highly-rated show like South Park does, indeed, use a term regularly, and even basic cable doesn’t censor it, that should be highly persuasive evidence that the American people can handle the word. Nevertheless, the nanny-staters decided that in modern-day America, we must endeavor to never offend anyone, lest their little hearts break into a million Jesus-shaped pieces. Even the double entendre, previously approved of in everything from James Bond movies to daytime television, is no longer acceptable to the TTAB.

We reject out of hand the argument that, in the context of beverages, including natural energy drinks, the public would view the term PUSSY as conveying a double meaning. This case is distinguishable from the Hershey case where the Board found a credible double entendre in the BIG PECKER mark based on the display of a chicken with a beak along with the BIG PECKER word mark in the specimen of record. In re Hershey, 6 USPQ2d at 1470, 1472 (TTAB 1988).

In this case Applicant posits that his PUSSY NATURAL ENERGY mark, when used on an energy drink, on the one hand would suggest either a cat, a weak or cowardly man or boy, a catkin of the pussy willow, or a pussy wound, and simultaneously on the other hand, might suggest PUSSY in the vulgar sense.

We do not find this proposition credible, nor has Applicant provided any support for the proposition. We see no double entendre in this context. We conclude so whether we view the term PUSSY alone or as part of Applicant’s full mark. Furthermore, there is nothing in the display of the mark or the additional wording, “natural energy” which affects the perception of the term PUSSY. Accordingly, we
reject Applicant’s double-entendre argument. (Op. at 22)

The Board then looked at the relevant marketplace and concluded that since the energy drink market is one that seeks to grab the consumer’s attention, that it should be held to a different standard than other products.

The Examining Attorney has provided additional evidence which not only confirms that the term PUSSY is vulgar, but evidence that the attention-grabbing meaning is the only reasonable meaning to conclude the relevant public would perceive in this context. An excerpt from factexpert.com discusses the highly competitive marketing of energy drinks, stating:

Energy drink packaging is more often flashy and bright than subtle and understated. The primary consumer group of energy drinks includes extreme sports enthusiasts, young adults and teenagers, and the hip-hop crowd. … Because this group is a group excited by speed, energy, flash and instant thrill, most energy drink packaging appeals to these tastes.

In this context, it is not reasonable to conclude that the relevant public will perceive PUSSY as referring to a cat, a weak or cowardly man or boy, a catkin of the pussy willow or a pussy wound. The offensive, vulgar meaning is the only one which makes sense in this context. (Op. at 24).

Finally, the Board concluded that a substantial composite of the public, “in particular women,” (as evidenced by the Examiner’s quotation of unsigned comments on a typepad blog) would find that PUSSY has a vulgar, offensive, sexual meaning.

Here is some poetry for the pussy Examiner and the pussy judges. By that, I use the definition of “pussy” that refers to those with little courage.


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