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.


“Cocaine” Trademark for Soft Drinks Deemed “Immoral and Scandalous”

October 24, 2008
You can't handle seeing this

You can't handle seeing this

Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), bars the registration of trademarks that are deemed “immoral” or “scandalous.” For the past few years, the USPTO has been on a Section 2(a) rampage, and this decision is the latest step in the PTO’s quest to become the commercial morality police. See In re James T. Kirby, Serial No. 77006212 (Not Precedential).

Mr. Kirby and his company, Redux Beverages, started marketing the soft drink in 2006, and they were immediately descended upon by the Food and Drug Administration. The primary complaint was that “certain claims rendered the product an unapproved new drug.” (source) However, it appears that Redux worked their issues out with the FDA, only to run into trouble with the USPTO.

Redux sought trademark protection for its stylized logo, and the examining attorney determined that the mark was not registrable because:

“Cocaine is an illegal drug, with harsh penalties for its possession or use. Its use as a product name for energy drinks has been widely condemned.”

The TTAB agreed that the mark was, indeed, immoral and scandalous and affirmed the Examiner’s rejection. I have some issues with this decision, but I think that the blame belongs on both sides of the case.
Read the rest of this entry »


“Sex Rod” is “Immoral and Scandalous”

October 15, 2008

A New Yorker, (yeah, it figures) attempted to secure a registration (on an intent to use basis) for the trademark “Sex Rod” — stylized to parody the Boston Red Sox RED SOX mark. Given the similarity of the marks, the Boston Red Sox filed an opposition to the registration. The Sox alleged “that applicant’s mark, displayed in the particular stylized font, is intended and will be understood to refer to the Boston Red Sox Major League Baseball club.” (source at 3)

The Boston Red Sox' Well-Known Trademark

The Boston Red Sox' Well-Known Trademark

The Mark that the Applicant (unconvincingly) alleged he had an Intent to Use

The Mark that the Applicant (unconvincingly) alleged he had an Intent to Use

The Sox prevailed, but not for the reasons you might have predicted. John Welch at the TTABlog reports:

The Board sustained the Club’s opposition, finding that Sherman lacked a bona fide intent to use the mark, and further that the mark is both scandalous and disparaging under Section 2(a). However, the Board dismissed the Red Sox claims of likelihood of confusion and 2(a) false connection. (source)

John does a fine job of discussing most of the issues, and a duplicative blog post would do little to increase the collective body of knowledge. So, if you want to read about the trademark issues, go read John’s post.

I agree that the Opposition should have been sustained for a lack of a bona fide intent to use the mark in commerce. That is without question, and the TTAB should have simply stopped there. Unfortunately, the panel decided to give us all a lesson on immorality. See Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (September 9, 2008) (source at 15-18). In all fairness, my beloved Boston Red Sox raised the issue in the first place. The Red Sox put forth “evidence” of the immorality and scandalousness of the term “Rod” by supplying the opinion of a single dictionary editor that the term was “vulgar” when used to refer to the penis. The Panel then took judicial notice that the New Oxford Dictionary agreed, and thus determined that since the mark was so likely to harm society, it should not be registered.

The significance of “rod” when preceded by the word “sex” denotes only one meaning. In the context of applicant’s goods, with the mark perhaps emblazoned across a t-shirt or some other item of apparel, and in the context of the marketplace, which would include all public places where the clothing would be worn or purchased, the mark would convey, not a sexually suggestive connotation as applicant contends, but rather a sexually explicit message to the viewer. We agree with opposer that the use of the term on children’s and infant clothing makes the term particularly lurid and offensive. (source at 17)

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.”).

Thus far, all USPTO decisions regarding the constitutionality of Section 2(A) rely upon the improperly decided case of In re McGinley, 660 F.2d 481, 484 n.6, 211 USPQ 668, 672 n.6 (C.C.P.A. 1981), aff’g 206 USPQ 753 (TTAB 1979) (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and interpersonal relationship topics” and for “social club services,” held scandalous).

Even if McGinley were properly decided, it has been superseded by multiple cases that have calcified the previously more amorphous area of commercial speech law and the law surrounding the constitutionally of restrictive laws based on morality.

McGinley held that since trademark applicants were still free to use the trademarks, then there was no abridgment of speech. However, this reasoning is simply shoddy and unsupported by a vast body of First Amendment jurisprudence. For example, in striking down New York’s “Son of Sam” law, which prohibited criminals from profiting from writing books about their crimes, the Supreme Court held “[a] statute is presumptively inconsistent with the First Amendment if it imposes a financial burden on speakers because of the content of their speech.” The authors were still free to write, but were denied the financial benefits of their labors. This appears to completely dispense with the McGinley reasoning — but the TTAB doesn’t seem to have gotten that memo.

In Bad Frog Brewery, Inc. v. New York States Liquor Authority,134 F.3d 87 (2d Cir. 1998) the Second Circuit analyzed a similar issue. In that case, the appellant sought to use a trademark of a frog “giving the finger” to any and all passerby on bottles of liquor. The Second Circuit held that since trademarks are commercial speech, prohibition on use of so-called “offensive” trademarks did not advance the stated governmental purpose of protecting children from vulgarity or promoting temperance, nor was it narrowly tailored to serve that purpose.

Finally, there can be no clearer authority for the death of Section 2(A) than Lawrence v. Texas. “The fact a State’s governing majority has traditionally viewed a particular practice as immoral is not a sufficient reason for upholding a law prohibiting the practice.”

Unfortunately, for the time being, it seems that the USPTO is governed by Victorian morality, and it intends to make sure that we don’t forget it.


“You Cum Like a Girl” Rejected as Immoral and Scandalous

September 19, 2007

I am beaming with pride that John Welch, over at the TTABlog asked me to guest blog on the TTAB’s latest affirmance of a 2(a) refusal. My discussion of the case is here.


Kink.com Appeals USPTO Refusal to Register “Immoral and Scandalous” Trademarks

June 8, 2007

Orlando Weekly published an article chronicling Kink.com‘s attempts to secure registration of several of its trademarks, such as fuckingmachines and whippedass.

Trademark registration is a standard practice for any business that wants to protect its interests. However, Kink.com and others who have attempted register trademarks that contain a “dirty word” have been told by the United States Patent and Trademark Office (“USPTO”) that “Registration is refused because the proposed mark consists of or comprises immoral or scandalous matter.”

Kink.com is appealing the board’s rejections, claiming that they are unconstitutional and unsupported by the evidence provided by the government. Kink is determined to prove to the Courts and Trademark Office that while “fuck” might raise an eyebrow in polite conversation, in modern times, “fuck” does not rise to the level of “scandalousness” claimed by the USPTO.

Under the legal standard, the mark itself must be “shocking,” and “calling out for condemnation.” Kink has argued through that this particular word’s prevalence in common conversation and popular culture discredits the argument that the American marketplace, and especially the adult internet marketplace, would be “shocked” by this registration. The previous appeal for whippedass was successfully argued on similar grounds.

Read the rest of this entry »


Marc Randazza about Section 2(a) changes

January 8, 2018

Marc Randazza shared his opinion regarding some recent First Amendment and Trademark cases.

15 U.S.C. § 1052(a) (known best as “Section 2(a)”) is a federal trademark law, which prevents certification of certain classes of marks that “may disparage” or can be “immoral or scandalous”. But at the beginning of the year, the Supreme Court found that prohibiting disparaging marks from being registered violates the First Amendment. So, Section 2(a)’s unconstitutional arrangements have finally fallen.

In his latest article on Popehat, Marc Randazza comments on two recent important cases: the Brunetti decision and the Tam precedent. Both cases include trademark registrations and the restrictions of Section 2(a). Since the Supreme Court struck down the disparagement clause, many people speculated whether the immoral or scandalous clause would survive.

Mr. Randazza notes that now, with Brunetti, we no longer need to speculate (if there is no appeal). Brunetti tried to register his trademark FUCT. But the United States Patent and Trademark Office declared that this mark is a synonym with “fuck,” making it sound vulgar, and thus conflicting with Section 2(a).

Now, the Federal Circuit has found that the “immoral or scandalous” restriction on registration is unconstitutional, a decision influenced by the Supreme Court’s Tam decision. The Brunetti court pronounced that the “immoral or scandalous” restriction was likely viewpoint-based.

The Tam decision tossed aside the government’s theories on censorship, that:

  1. Federal trademark registration scheme is a public forum that allows content-based restrictions on speech;
  2. The “immoral or scandalous” portion of Section 2(a) survived the lesser level of examination for restrictions on commercial speech.

In this case, the test was conducted. It was supposed to determine whether a mark is “immoral or scandalous” or if the general public would find the mark “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.”

But finally, after years of unconstitutional actions by the United States Patent and Trademark Office, the trademarks registration process has changed and today there is no “immoral or scandalous” block.


The USPTO Would Prefer Not to Follow the First Amendment

March 19, 2016

The USPTO is, apparently, a big Melville crowd.

In December, U.S. Court of Appeals for the Federal Circuit decided In re Tam, 2015 U.S. App. LEXIS 22593 (Fed. Cir. Dec. 22, 2015). In it, the Federal Circuit made a sweeping pronouncement that the First Amendment applies to trademark registrations, and that a long-criticized prohibition on “disparaging” trademarks could no longer stand. The portion of the trademark act that fell was Section 2(a) of the Lanham Act, 15 U.S.C.S. § 1052(a).

Then, the Department of Justice conceded that § 2(a) was no longer enforceable in light of In re Tam.

We do not believe that given the breadth of the Court’s Tam decision and in view of the totality of the Court’s reasoning there, that there is any longer a reasonable basis in this Court’s law for treating them differently… The reasoning of Tam requires the invalidation of § 2(a)’s prohibition against registering scandalous and immoral Trademarks as well.”

One might think then, for a moment, that the USPTO would stop relying on an unconstitutional provision, no? Well, time for a literature lesson:

In Herman Melville’s classic, Bartleby the Scrivener, an attorney finds frustration with his scrivener, Bartleby. Any time Bartleby is directed to perform a task, he replies with the classic refrain: “I would prefer not to.”

The first of many such exchanges continued thus:

“Prefer not to,” echoed I, rising in high excitement, and crossing the room with a stride. “What do you mean? Are you moon-struck? I want you to help me compare this sheet here – take it,” and I thrust it towards him.
“I would prefer not to,” said he. Herman Melville, Bartleby, the Scrivener: A Story of Wall Street 10 (Dover 1990) (1853).

Initially infuriated, but beguiled by Bartleby’s charmingly passive insolence, the narrator tolerates Bartleby’s masterfully eccentric defiance, but eventually fires him. Once fired, Bartleby’s behavior becomes stranger, and he refuses to leave the premises of his employer, who finds Bartleby’s stubbornness to be an immoveable object. Bartleby’s defiance, as effective as it is, eventually leads to his undoing. Bartleby’s preference leads to his imprisonment and starvation, as he finally encounters both men and forces of nature who are unmoved by his antics.

We have, at least for the moment, a government agency that fancies itself in the role of Bartleby. The USPTO has already been instructed by the Federal Circuit that Section 2(a) (at least as far as the “disparaging” portion of it) is unconstitutional, and the case law that the USPTO has relied upon to justify its bullshit standard under the “scandalous” portion is specifically overruled.

Rumored to be the new USPTO policy director

Rumored to be the new USPTO policy director

Nevertheless, the USPTO has essentially decided “we would prefer not to” follow the Constitution.

The USPTO continues to examine applications for compliance with the scandalousness and disparagement provisions in Section 2(a) according to the existing guidance in the Trademark Manual of Examining Procedure § 1203. While the constitutionality of these provisions remains in question and subject to potential Supreme Court review, for any new applications the USPTO will issue only advisory refusals on the grounds that a mark consists of or comprises scandalous, immoral, or disparaging matter under Section 2(a). If a mark’s registrability under these provisions in Section 2(a) is the only issue, the examining attorney will identify the reasons for the advisory refusal and suspend action on the application in the first Office action. For all applications, including those initially examined before the Federal Circuit’s decision in Tam, if the examining attorney made other requirements or refusals in the first Office action, action on the application will be suspended when the application is in condition for final action on those other requirements or refusals. Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension. Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision. (source)

Please note, I received this document from an intellectual property lawyers’ list serve, and I have not confirmed its authenticity. Nevertheless, the document properties say that the author is Christina J. Hieber, who does check out as an attorney with the USPTO’s office of the solicitor. (source)

So, remember folks – the Court of Appeals for the Federal Circuit told the USPTO that it was violating the Constitution. Their position? “We don’t care, we might appeal, and then again, we might not. But, until we are told that the courts really really mean it, the Constitution doesn’t matter.” And they think that the word “fuck” is “immoral” and “scandalous.”

You know what is “immoral” and “scandalous?” A petty little bureaucrat, or group thereof, deciding that they are above the Constitution, because… well, dirty words and all.

____

If you find the issue of morality and intellectual property rights of interest, I’d be delighted if you downloaded and read my law review article on the subject. See Marc Randazza Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights

This post originally appeared on Popehat. View it here.


Death to Section 2(a)! Hail Coleman, Connell, MacMull, and The Slants!

January 24, 2016
If they are not your favorite band, they should be. (Unless you hate freedom and America)

If they are not your favorite band, they should be. (Unless you hate freedom and America)

Last month, the U.S. Court of Appeals for the Federal Circuit decided In re Tam, 2015 U.S. App. LEXIS 22593 (Fed. Cir. Dec. 22, 2015). In it, the Federal Circuit made a sweeping pronouncement that the First Amendment applies to trademark registrations, and that a long-criticized prohibition on “disparaging” trademarks could no longer stand. The portion of the trademark act that fell was Section 2(a) of the Lanham Act, 15 U.S.C.S. § 1052(a).

Of course, I was delighted. I have long railed against Section 2(a). My first (losing) fight against this provision was in 2007. See Billman, Jeffrey, The F Bomb, Orlando Weekly, Jun. 7, 2007. And, once CNN gave me some column space, I used a lot of it to write about this issue. (Marc Randazza, Decision on Asian-American band’s name is wrong and Why Redskins decision is wrong.

So when this decision came in, I jumped for joy. That said, it was a huge pain in my ass. I had just sent off my law review article on the subject to the printer, with all the final edits completed. I had a whole section criticizing Section 2(a) jurisprudence, and unflatteringly comparing U.S. law to recent European decisions. Then, In re Tam came out, and I had to rush to update it. Thank goodness that the Federal Circuit didn’t wait one more day to release the decision.

Ron Coleman

Ron Coleman

But, of course, this was a small price to pay for the delight of seeing our First Amendment rights protected, and seeing the personal victory for the lawyers in the case – Ron Coleman, John Connell, and Joel MacMull – First Amendment Bad Asses of 2015, as far as I am concerned.

However, the decision seemed to leave an important fight for another day. But, a recent missive by the Department of Justice might have brought us that day.

John Connell

John Connell

Section 2(a) does not only prohibit “disparaging” marks. Section 2(a) has some restrictions in it that remain – some of them reasonable, even. Section 2(a) bars registration of marks that deceptively suggest a connection with persons, institutions, beliefs, or national symbols. Since the function of a trademark is to distinguish a mark owner’s goods and services from those of other producers or suppliers, these prohibitions make perfect sense. There is no commercial rationale to permit false advertising in a trademark.

The First Amendment Lawyers Association provided an amicus brief to the In re Tam Court, in which it argued that § 2(a)’s prohibition on “immoral and scandalous” trademarks should also die along with the prohibition on “disparaging” trademarks. However, since that specific issue was not presented squarely before the Court, the Court declined to explicitly expand its ruling to include all of § 2(a).

Joel Mac Mull

Joel Mac Mull

Despite this urging, In re Tam left this most problematic portion of Section 2(a) standing, if just barely. It is not that the court approved of this clearly unconstitutional provision. Far from it. The Court simply recognized that this particular portion of the Act was not being challenged in this particular case. Nevertheless, in Footnote 1 of the decision, the Court augured the downfall of this provision as well.

We limit our holding in this case to the constitutionality of the § 2(a) disparagement provision. Recognizing, however, that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks, we leave to future panels the consideration of the § 2 provisions other than the disparagement provision at issue here. To be clear, we overrule In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), and other precedent insofar as they could be argued to prevent a future panel from considering the constitutionality of other portions of § 2 in light of the present decision.

And with that, the most offensive portion of 2(a) remained intact.

But it was like a billiard ball hanging on the edge of the pocket. One tap, and it would fall in. However, just like when you play pool, sometimes the ball hangs there for a second, and then falls in on its own. That just happened. In a letter brief issued Thursday, the Department of Justice conceded that § 2(a) was no longer enforceable in light of In re Tam.

We do not believe that given the breadth of the Court’s Tam decision and in view of the totality of the Court’s reasoning there, that there is any longer a reasonable basis in this Court’s law for treating them differently…
The reasoning of Tam requires the invalidation of § 2(a)’s prohibition against registering scandalous and immoral Trademarks as well.”(source)

Before we call the game over, the Department of Justice hints that it may appeal the In re Tam decision. Should that happen, the Supreme Court outcome would be anything but preordained. However, the In re Tam decision seems to be on solid constitutional grounds. I am optimistic that if the government does decide to appeal, that it will not be overturned. That said, I think I would be naïve if I said it would be a 9-0 decision.

Certainly, I find both prohibitions to be offensive under the First Amendment, but I can at least emotionally (if not Constitutionally) get on board with the government wanting to put its fingers on the scales of justice when it comes to opposing racism. But, as the In re Tam case shows us, when the government tries to do that, it usually does so with all the grace and logic of a Chris Farley character. Nevertheless, give them credit for good intentions.

On the other hand, the prohibition on “immoral and scandalous” trademarks was nothing more than a neo-Comstock attempt to legislate morality and to suppress sexual speech in order to serve illegitimate goals. One of my favorite law review articles ever was by Steve Russell, writing about the Communications Decency Act. He wrote:

By trying to regulate obscenity and indecency on the Internet, you have reduced the level of expression allowed consenting adults to that of the most anal retentive blueballed fuckhead U.S. attorney in the country. (source)

Every time I got a Section 2(a) rejection under the immoral and scandalous clause, I heard those words in my head, replacing “U.S. Attorney” with “trademark examiner.” Today, perhaps, those examiners can go listen to Louie Louie, see if they find naughty words in it, and go whine to the FBI about it.

Some may feel this is a narrow decision regarding trademark rights, and those who don’t own any trademarks may not think this is a big deal, especially if they won’t be applying for any “immoral or scandalous” registrations. If you feel this way, you would be precisely wrong.

Every American should be celebrating this news. When the government decides to suppress First Amendment rights, no matter how narrow that suppression might be, we all have a little less liberty. When the courts recognize the expansive nature of those rights, we are all more free. It’s refreshing to see that the Department of Justice decided to yield to the In re Tam decision — even if it turns out to be temporary, rather than pathologically defending an unconstitutional law in the name of one very narrow definition of morality.

My delight at this development is both personal and professional. Professionally, I have been banging my head against Section 2(a) for most of my career. When I speak on the subject, I proudly announce that I have lost more 2(a) administrative appeals than I can remember. It isn’t that I’m proud of losing – but I’m proud of my clients for being willing to take up the fight, even in light of the fact that until In re Tam, it was a hard uphill battle, with the entire weight of the appellate decisions just brushing off the First Amendment as if it were an annoying little gnat.

I’m looking at YOU, In re Fox, 702 F.3d 633 (Fed. Cir. 2012) In re Mavety Media Grp. Ltd., 33 F.3d 1367 (Fed. Cir. 1994) and Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559 (5th Cir. 2005). If you read these cases, it will make you pretty sad that appellate judges can have such little reverence for the First Amendment, and such intellectual laziness in light of their own preconceived notions about morality. But, In re Tam restores all faith!

Those of us who believe in the First Amendment always believed that these decisions were wrong, but unfortunately, the government would exhaust each and every client before getting to the Federal Circuit to challenge it. Besides, how many times can you push that rock up the mountain before you just ask whether it is worth it?

But, finally, there was a client who didn’t give up and who thought it was worth it — Simon Shiao Tam and the Slants (your new favorite band).

Therefore, I think that we all need to slap a few people on the back here. First, the Slants and Simon Shiao Tam for having the conviction to keep fighting this case to the appellate court. And just as much, Ron Coleman and Joel MacMull – the lawyers who handled the case. These lawyers did an incredible job – and they did it pro bono.

Because of them, your First Amendment rights are broader, more robust, and more protected today than they were just over a month ago. I have the privilege of calling Ron and Joel my friends. But, even if I did not know them, I would demand that all readers hoist them on their shoulders for what they’ve done for us. Fighting a First Amendment fight, for free, against some very poor odds is what I call “heroic.”

And if the government does appeal the In re Tam case to the Supreme Court, they’re going to have the bigger guns, unlimited funds, and at least a few of the justices already in their pockets.

Well, that doesn’t concern me.

I like the good guys’ chances, with First Amendment Bad Asses like Ron, John, and Joel fighting for us.

____

If you find the issue of morality and intellectual property rights of interest, I’d be delighted if you downloaded and read my law review article on the subject. See Marc J. Randazza Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights (January 16, 2016). Nevada Law Journal, Vol. 16, No. 1, 2016. This issue is only a part of the article, as it deals with morality and IP rights on a global scale. If you do read it, download it rather than just reading in your browser. (It gets the numbers up)

This post originally appeared on Popehat. View it here.


Federal Circuit’s COCKSUCKER Decision Sucks

December 20, 2012

cork soaker

As many long-time readers know, Section 2(a) of the Trademark Act is one of my pet peeves. This is the section of the Trademark Act that gives pretty much unfettered discretion to a trademark examiner to deny a trademark registration on the basis that the mark itself is “immoral” or “scandalous.” The Federal Circuit just decided In Re Fox, in which it reaffirmed some very bad law, and in which it lacked the integrity to address some Constitutional fictions upon which most 2(a) denials are based.

“[n]o 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) [c]onsists of or comprises immoral, deceptive, or scandalous matter.” 15 U.S.C. § 1052.

One of the most absurd elements of a 2(a) denial is that the evidentiary standard is so open to abuse. An examiner may prove “immorality” or “scandalousness” by simply establishing that the mark is “vulgar.” In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003). Essentially, if the examiner finds a single online dictionary or chat board where someone says “that’s vulgar,” then that is usually enough for the examiner, the TTAB, and the Federal Circuit.

So, another 2(a) denial is just a “ho hum” event. But, this portion of the opinion shows just how little respect the Federal Circuit has for Constitutional issues. I mean, come on guys, at least try and make it look like you didn’t just mail it in.

The prohibition on “immoral . . . or scandalous” trademarks was first codified in the 1905 revision of the trademark laws, see Act of Feb. 20, 1905, Pub. L. No. 58- 84, § 5(a), 33 Stat. 724, 725. This court and its predeces- sor have long assumed that the prohibition “is not an attempt to legislate morality, but, rather, a judgment by the Congress that [scandalous] marks not occupy the time, services, and use of funds of the federal government.” In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994) (quotation marks omitted). Because a refusal to register a mark has no bearing on the applicant’s ability to use the mark, we have held that § 1052(a) does not implicate the First Amendment rights of trade- mark applicants. See id. (Op. at 2)

I find it outrageous not just because the court is wrong, but because the court was so glib and dismissive of the First Amendment.

Trademarks propose a commercial transaction; speech that proposes a commercial transaction is “commercial speech” and thus subject to First Amendment protection. Virginia State Bd. Of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748, 762 (1976). Trademarks convey messages about the type, cost and quality of the product or service associated with the mark. See Friedman v. Rogers, 440 U. S. 1, 11 (1979). The trademark is a tightly targeted bit of expressive activity that seeks to persuade a potential customer to choose one product over another, either due to the identification of goods or to the communicative element of the trademark itself.

Thus far, all USPTO decisions regarding the constitutionality of Section 2(A) rely upon the improperly decided case In re Robert L. McGinley, 660 F.2d 41 (Fed Cir. 1981).

McGinley is where we get the idea that since trademark applicants are still free to use the trademarks, then there is no abridgment of speech if your trademark is denied registration due to its content. However, this reasoning is simply shoddy and contrary to a body of First Amendment jurisprudence. For example, in striking down New York’s “Son of Sam” law, which prohibited criminals from profiting from writing books about their crimes, the Supreme Court held “[a] statute is presumptively inconsistent with the First Amendment if it imposes a financial burden on speakers because of the content of their speech.” Simon & Schuster v. New York State Crime Victims Bd., 502 U.S. 105, 115 (1991). In the Son of Sam case, the authors were still free to write, but were denied the financial benefits of their labors. That was the end of that law. This appears to completely dispense with the McGinley reasoning.

Bad Frog Brewery, Inc. v. New York States Liquor Authority, 134 F.3d 87 (2d Cir. 1998) analyzed a similar issue. In that case, the appellant sought to use a trademark of a frog giving the finger. The Second Circuit held that since trademarks are commercial speech, prohibition on use of so-called “offensive” trademarks did not advance the stated governmental purpose of protecting children from vulgarity or promoting temperance, nor was it narrowly tailored to serve that purpose. Not binding on the Fed. Cir., but I think that the Fed. Cir. is the wrong place to challenge McGinley. There is no indication that the Fed. Cir. will ever admit that it was wrong in McGinley, and every time it gets a chance, it doubles down.

Finally, there can be no clearer authority for the death of Section 2(a) than Lawrence v. Texas. (“The fact a State’s governing majority has traditionally viewed a particular practice as immoral is not a sufficient reason for upholding a law prohibiting the practice.”)

“Morality” is not a valid reason to confer or deny a governmental benefit – instead the government must articulate a reason why registration of a mark might be harmful, and then apply that reason to the particular circumstances at hand, in a narrow manner. The government has done none of this in this case, nor in any other 2(a) denial.

2(a) Delendum Est!


Vagina Mints

October 18, 2009
Awesome logo.  Creepy product.

Awesome logo. Creepy product.

“Linger” is a new product… the company describes them as “internal feminine flavoring.” See, get it? The little schematic va jay jay? I have to hand it to them. That is both clever and visually pleasing. Of course, given that it represents a vagina, I wonder how it will fare if they ever try and get it registered as a trademark. See posts on “Immoral and Scandalous” trademarks.

Now lets look at the product itself. Here is how the company’s website describes its utility.

Linger Internal Feminine Flavoring, was created to flavor the woman in such a manner that is safe and effective, decreases self consciousness, and increases excitement. It improves the length and quality of oral sex between a woman and her intimate partner. (source)

Wow.

Not “wow” as in “awesome.” “Wow” as in WTF?

I mean, unless there is something actually wrong going on down there, vaginas are naturally, well, umm vagina flavored. If you need mint flavoring to “linger,” well then maybe your girlfriend needs a new boyfriend (or a new girlfriend as it were).

But, I suppose that the occasional novelty of something different can’t be discarded out of hand.

The story of how the coochie mints came to be actually makes them sound exotic… erotic… exciting! The owner claims to have met some aristocratic Indian guy who introduced her to this Subcontinental erotic secret. Source.  It’s a good story. She might have gotten away with it too, if it wasn’t for you meddling kids that meddling Jen Phillips over at Mother Jones. She writes:

My tin of Linger looked a lot like one of those tins of mints that are given away at trade shows. And guess what? That’s what it is. A little digging revealed that Linger is made/distributed by a company called Admints, which just happens to make trade show mints. And the Linger samples just happen to have have the exact same shape, taste, and ingredients as Admint’s sample mints. (source)

Phillips also informs her readers that the primary ingredient in these mints is sugar, “which is not safe for the vagina. It messes up the pH and can lead to a really painful yeast infection, a condition that definitely doesn’t make someone want to “linger.‘”

So for eight bucks, you can get a 99 cent box of mints and a yeast infection. Right this way, ladies!

The logo for my new product - Baco-vajayjay!

The logo for my new product - Baco-vajayjay!

I have a better idea! We’ll call it “The Legal Satyricon Technique.” Just stuff your vagina with bacon! It is a proven scientific fact that both men and lesbians LOVE bacon. AND, it won’t change the pH in there. Put a half a pound of bacon (cooked please) in your vagina. He can’t have entry into your vagine until he makes all gone with the bacon! Of course, since he loves bacon, it won’t be a chore now, will it?

Or you could just buy some Uncle Oinker’s bacon mints and stuff those in your box.


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.


Pennsylvania Says No to Hell

February 22, 2009

Apparently that Highway doesn't run through Pennsylvania

Apparently that Highway doesn't run through Pennsylvania

George Kalman, a Pennsylvania filmmaker and the owner of “I choose hell productionsfiled suit against the state for rejecting his chosen business name. Apparently Pennsylvania law prohibits business names that “constitute blasphemy, profane cursing or swearing or that profane the Lord’s name.”

I guess Obama was right about those bitter Pennsyltuckians who cling to their guns and religion. They might want to take a look at the First Amendment there in Harrisburg. They are about to get their asses handed to them.

Of course, the USPTO still clings steadfastly to the rule that “immoral and scandalous” trademarks can’t be registered.

I may write more about this if the Eastern District of Pennsylvania’s PACER system ever comes back online. If anyone out there finds a copy of the complaint, I’d love to see it.

Email this postBookmark and Share

Short Url: http://bit.ly/NNAFv


Technorati :  ,


Air-O-Matic’s claim of trademark infringement doesn’t pass the smell test

February 17, 2009

by Jason Fischer

picture-2

iPhone application developer, InfoMedia, Inc., filed a complaint last week, seeking a declaratory judgment from a U.S. District Court in Colorado. The pleading seeks to end a dispute that has been bubbling up between InfoMedia and one of its competitors, Air-O-Matic (AOM). What are these two companies fighting over? Dominance in the cutthroat realm of iPhone flatulence apps. (source)

Late in 2008, Apple decided to relax its draconian content censorship rules which govern the kinds of applications that could be offered for sale in its iPhone application store, allowing novelty applications that simulate farting noises. The app store quickly filled up with new entries into this niche market. Currently, a search for the term “fart” in the app store yields nearly 150 results, including such classics as “iToot”, “Fart Box”, and “Fart Piano” – to name a few.

AOM’s current offering is entitled “Fart Lighter – Pull My Finger, Pro Edition” and sells for 99¢. On December 18, 2008, they filed an application with the United States Patent and Trademark Office (USPTO), seeking to register the phrase “Pull My Finger” for use in connection with “[c]omputer application software for mobile phones.” (taken from Federal Trademark Application, Serial No. 77,635,715.) That application is currently awaiting examination by the USPTO, so AOM is not entitled to any presumption of validity or enforceability for the “Pull My Finger” mark, which has only been in use by AOM since December 13, 2008. But that isn’t stopping them from asserting that other fart app developers have infringed on their trademark rights.

According to emails that were attached to InfoMedia’s complaint, AOM is upset about press releases and advertising that InfoMedia has put out, which contain the phrase “pull my finger.” In particular, AOM believes that an alleged user quote that appeared in such advertising, stating that InfoMedia’s iFart Mobile application is “way better than Pull My Finger,” should be actionable as a trademark infringement. There are a few issues with AOM’s claim.

First, as stated above, the USPTO has not granted AOM’s request for registration. AOM may have a serious uphill battle in front of them before they can march into federal court, waving an allowed trademark registration. As InfoMedia’s attorney points out, the phrase “pull my finger” is arguably descriptive, if used in connection with simulated flatulence. Since a descriptive mark cannot be registered unless the marketplace has attached some association between the mark and the registrant’s goods or services, AOM will have the significant burden of proving that association to the USPTO. Their current application contains no such evidence, and given the number of competing fart app developers who are already using the phrase in Apple’s app store – all arriving near the end of 2008, AOM may never be able to prove that association, let alone that they were the first to claim it.

AOM will likely have other barriers to registration. Who’s to say that the examining attorney won’t declare the mark “scandalous,” because it is a vulgar reference to bodily functions? Even if the examining attorney does not, when the mark is published for opposition, any member of the public can make that claim. Any one of AOM’s competitors can also raise a claim during opposition, stating that they were the first to use “pull my finger.” In the end, any of these scenarios will leave AOM without a federal trademark registration. Without a federal registration, AOM is stuck trying to bring a claim of infringement based on common law trademark rights – a long and expensive process that, again, puts the burden on AOM to prove that the marketplace has come to recognize “pull my finger” as referring to their goods or services.

Even if AOM can either get a notice of allowance from the USPTO or prove their common law trademark rights, they are going to have a hard time getting around InfoMedia’s argument that the “pull my finger” mark can be used in comparative advertising, without violating AOM’s rights. Such use is commonly referred to as “nominative fair use” and is specifically allowed by the Lanham Act. Trademark law is not supposed to impoverish the English language by declaring certain words and phrases “off limits.” It is supposed to prevent consumer confusion. AOM’s trademark rights, if any exist at all, are secondary to that ultimate goal.

Perhaps there are details of this case that I am unfamiliar with. AOM is certainly welcome to spend its hard-earned fart money attempting to take down competitors, but from where I’m sitting, their trademark infringement claim against InfoMedia stinks.


Who Are You Callin’ An A-Hole?

February 13, 2009

Oh the irony meter is just off the charts with this one.

JibJab media filed for a trademark registration for A-HOLE PATROL. Apparently JibJab uses the term to describe its “Online social club that screens jokes submitted by users to control offensive and inappropriate content.” From the JibJab website:

The A-Hole Patrol is JibJab’s volunteer community police force that is entrusted with helping keep the JibJab community safe from pornographers, hate mongers and extremists. The A-Hole Patrol (1) reviews new submissions to JibJab (2) investigates reports of abuse in the community and (3) re-reviews jokes that have been reported as offensive by JibJabbers. (source)

The examining attorney determined that A-HOLE is short for “asshole,” (rather than being its own word — which it is) and then rejected the trademark application as “immoral and scandalous.”

The examining attorney, relying upon several dictionary definitions and printouts of articles retrieved from the Internet, contends that because A-HOLE in applicant’s mark is a term for the word “asshole,” the mark is accordingly scandalous. Specifically, in support of her position, the examining attorney submitted the following definitions:

(1) asshole: Vulgar Slang.

1. The anus.
2. A thoroughly contemptible, detestable person.
3. The most miserable or undesirable place in a particular area.

(2) asshole:

1 usually vulgar: ANUS;
2a usually vulgar: a stupid, incompetent, or detestable person; b usually vulgar: the worst place — used in phrases like asshole of the world.

(3) asshole: Definition 1. (vulgar) the anus.
Definition 2. (slang) a contemptible or stupid person.
Definition 3. (slang) the worst part of a thing or place.

(4) asshole: Noun Vulgar 1. anus. 2. Slang. A. a stupid, mean or contemptible person. B. the worst part of a place or thing. Adjective 3. Slang. Stupid, mean, or contemptible.

Do you hear that sound? It is the IRONY ALARM going off its rocker! Because frankly, anyone who thinks that A-HOLE PATROL is too “immoral and scandalous” for the American public to handle is clearly a thoroughly contemptible and detestable person. And, the USPTO, for supporting such a victorian view of reality and such a dim view of the First Amendment is truly the most miserable part of a thing or place.

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.” See In re Mavety Media Group Ltd., 33 F.3d 1367, 1371 (Fed. Cir. 1994). Whether a term is scandalous 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.

I ask you, if you walked into your pastor and said “those ACLU people, they are just A-HOLES,” do you think even a Bible-belt pastor would blush? I think not. Nevertheless, the TTAB decided to side with the examiner.

Well, the contemptible and stupid win again. The morality police sided with the examiner and her supervisor — no doubt appointed by the same process that squeezed out Monica Goodling. We’re not even allowed to suggest or think “asshole” — of course, it is difficult to think of any other term when reading this opinion.

HT: TTABlog


New Yorkers in Red Sox Nation

July 7, 2008

This is what happens when you let a New York law firm represent the Boston Red Sox.

A Bostonian filed an Intent to Use application for the mark “RAD SEX.” (source). The Boston Red Sox filed an opposition on the grounds of likelihood of confusion, false connection, disparagement of the RED SOX mark, and (drum roll) because the mark is “immoral and scandalous.”

The applicant filed his answer, but the case is still in its infancy.

I’m rooting against the Red Sox — just this once. Not only do I hope that Red Sox Nation loses this dispute, but I’m pretty confident that they will. I can’t see how one entity could claim exclusive trademark rights in the four letters, RDSX. (Maybe if this were Hebrew or some other vowel-challenged language, but not in Tip O’Neil’s English). Perhaps if the applicant used a design with the same colors, or font, or something else that created some kind of mental association with the baseball team — or, if another baseball team wanted to be called the ROD SUX, then the Fenway favorites might have something to say. This just seems too tenuous of a connection for likelihood of confusion or false connection to attach. The 2(a) claim is frivolous, and I would like to see sanctions imposed against the idiot who thought to put that in the complaint.

Question: Of all the excellent law firms in Boston, the Red Sox had to go get some New York barneys to represent them? That’s freakin’ weak. No wonder they put a 2(a) claim in this complaint.

Hat Tip: TTABlog.