Supreme Court Delves Into Question Of Whether Or Not You Can Trademark 'Disparaging' Terms

from the not-an-easy-question dept

A little over a year ago, we wrote about an appeals court ruling saying that the US Patent and Trademark Office (PTO) could not reject a trademark based on the fact that it was "disparaging" towards an individual or group. The case focused around whether or not a Portland band named "The Slants" could trademark its name. The band, which is fronted by an Asian American named Simon Tam, had its trademark rejected by the PTO on the claim that it was disparaging to Asians.

As I noted at the time, I had struggled with my own opinion on this question as well -- initially arguing that this shouldn't be a First Amendment issue, because refusing to grant a trademark registration in no way interfered with anyone's freedom of expression. Instead, it did the opposite, and made it clear that anyone could make use of the content without restriction or fear of infringing on someone's registered mark (though, a common law trademark may still be an issue). Over time, and after lots of discussions with lots of people on all sides of this issue, I eventually came down on the other side. The key issue was not whether or not speech was blocked, but rather that there's a law that determines something based on the content of speech, and it's that point that makes it a First Amendment issue.

The PTO appealed the appeals court ruling, and it's been pretty fascinating to follow the case over the past year. For some fun, I encourage folks to read some of the amicus briefs filed in the case. Public Citizen's brief (in support of neither party) most closely matches my own views. The brief from the think tank Cato is also a fun read in that it tries to make its point about the vagueness of what's disparaging and what's not in somewhat amusing ways:

For example, one of this brief’s authors is a cracker (as distinct from a hillbilly) who grew up near Atlanta, but he wrote this sentence, so we can get away with saying that. Another contributor—unnamed because not a member of the bar—is an Italian-American honky who has always wanted to play in a band called the Dagos, which of course would close every set with "That's Amore" from "Lady and the Tramp." But, with only his great grandparents having come from Italy, is he dago enough to "take back" the term? And amici's lead counsel is a Russian-Jewish emigre who’s now a dual U.S.-Canadian citizen. Can he make borscht-belt jokes about Canuck frostbacks even though the first time he went to shul was while clerking in Jackson, Mississippi?

It gets complicated. And that’s the point. The disparagement clause places an unconstitutional condition on those who consider the use of an edgy or taboo phrase to be part of their brand.

Separately, I also highly recommend reading Sarah Jeong's impressive and detailed deep dive into the case for the NY Times Magazine. It has the following analogy which is just incredible:

Federal registration is the T.S.A. PreCheck of intellectual-property law: Not everyone has to get it, but if you do a lot of business, you probably should. The problem is that in the Slants’ case, the trademark office has come to look a bit like the popular image of the T.S.A.: a bureaucracy of bored enforcers just trying to churn through the queue and get through the day. Except that every now and then, something complicated comes down the screening belt, or someone gets a little overzealous about the job, and everyone winds up looking bad.

And this bit of background concerning the years-long back and forth between the Slants' lawyers and the PTO:

Shortly after receiving their initial refusal from the patent office, the Slants sent a response explaining that “Applicant’s Mark, as used ... is a positive term of self-reference that promotes cultural pride and recognition.” The response included several exhibits, including declarations from longtime Asian-American community organizers. The office replied with yet another refusal, just as lengthy and full of screenshots as the last one. This strange back-and-forth went on for over a year. In June 2011, the Slants submitted a 250-page request for reconsideration that included the results of a survey designed by two university professors, who concluded that few members of the Asian and Pacific Islander community viewed “the Slants” as disparaging. The office responded with a 157-page denial that included more dictionary definitions, arguments in internet forums and, strangest of all, the comments thread under a blog post about the trademark dispute itself. In the comments, the blogger opines that the Slants’ name “would be like a black performer calling himself the N-word.” The writer continued, “It would be ridiculous and people would see that performer as ridiculous.” Then, Tam himself barges into the thread the office cites, with a long, detailed response that begins by pointing out that the “N” in the name of the rap group N.W.A. stands for the N-word.

There's much more in there, so go read it.

And that brings us to Wednesday, when the case was finally heard before the Supreme Court. You can read the full transcript of the oral arguments with the standard caveat that very rarely can you actually determine how the Supreme Court will rule based on oral arguments. I won't dive into the whole thing, but it is worthwhile to read through it. The lawyer representing the PTO, Deputy Solicitor General Malcolm Stewart, gets tripped up pretty early on. The Justices are trying to understand why it's okay for the PTO to reject "disparaging" trademarks, and the best Stewart can argue is that such marks are a "distraction" from the original intent of trademark, to be an indicator of origin of a good or service. Justice Breyer points out how little sense that makes:

The only question I have for you is what purpose related to trademarks objective does this serve? And I want to be sure I have your answer. Your answer so far was, it prevents the --or it helps to prevent the user of the product from being distracted from the basic message, which is, I made this product.

I take it that's your answer. And if that's your answer, I will --my follow-up question to that would be, I can think probably, and with my law clerks, perhaps 50,000 examples of instances where the space the trademark provides is used for very distracting messages, probably as much or more so than the one at issue, or disparagement. And what business does Congress have picking out this one, but letting all the other distractions exist?

Justice Alito also makes a fairly compelling argument against the rule that bars registered trademarks on disparaging terms by noting that pretty much everyone would agree that it would be unconstitutional for the government to deny government programs, like police or fire services, to groups it says have made "disparaging" remarks. The point being: determining who is eligible for certain government benefits based on the content of their speech is... problematic.

The arguments for the Slants were handled by John Connell, and here, Justice Sotomayor raised the initial issue I had with this line of cases, that nothing here stops the Slants from using the name:

No one is stopping your client from calling itself The Slants. No one is stopping them from advertising themselves that way, or signing contracts that way, or engaging in any activity, except that stopping someone else from using the same trademark. But even that they could do. Because you don't need a registered trademark to sue under the Lanham Act's entitlement for the confusion of the public in the use of any kind of registered or unregistered mark. If another band called themselves Slants, they would be subject to deceptive advertisements because they wouldn't be this Slants.

Connell does a pretty good job answering that:

In this case, the government has used the disparagement clause to selectively deny those legal benefits to a mark holder expressing negative views that the government favors, as opposed to mark holders who received those benefits because they express neutral or positive views that the government does favor.

In other words: isn't it a problem when the government blesses speech it likes, but refuses to bless speech it dislikes? There's a lot more in the arguments that are worth reading, and I (like many) look forward to the eventual ruling from the Supreme Court.

Filed Under: disparaging, first amendment, redskins, simon tam, the slants, trademark, us pto

Washington Redskins Appeal To SCOTUS On Trademark And Seek To Tie Their Case To That Of The Slants

from the teamwork dept

We've talked quite a bit around here about the saga of the Washington Redskins trademark cancellation. The long-held mark by the football team was cancelled after a group of Native Americans petitioned against it, claiming that the team's name was disparaging of their people. After I, dare I say, flip-flopped from cheering on the cancellation to having the team itself change my mind with a delightfully vulgar ruling, which demonstrated that the USPTO grants all kinds of marks on "offensive" terms, the current status of the trademark remains cancelled. Well, the team has now appealed to the US Supreme Court, not only seeking to have its own case reviewed, but also seeking to tie their case to another that we've talked a bit about, that of the Asian music group, The Slants.

The Slants' case is different from the Redskins', with the music group never getting its trademark registration, also based on the notion that its name was disparaging of the very group of people who comprised the band. An appeals court declared the refusal of the band's trademark applications was a First Amendment violation, rightly. But the USPTO has appealed to the Supreme Court. The Redskins, meanwhile, have petitioned the Supreme Court to take the two cases in tandem, arguing that the slight differences between the two would give the court a well-rounded look at the question of whether blocking disparaging trademarks was a constitutional violation.

If this Court grants certiorari in Tam, the Court should grant certiorari before judgment here to consider this case as an ideal and essential companion to Tam. This Court repeatedly has granted certiorari before judgment on those occasions, like this one, when the consideration of complementary companion cases offers the best way to decide important questions of constitutional law. As the government acknowledges,
this case squarely presents the same First Amendment question presented in Tam, a question of undeniable, fundamental national importance.

Tam is the short-form reference to The Slants' case. It's a savvy move by the team, seeking to pair its case with that of The Slants, who by any measure ought to be seen as deserving of more sympathy generally than the football club. After all, there does seem to be a difference in texture between a group of Asian people who want to call their band The Slants and a football team owned by Dan Schneider that wants to have an admittedly racist term for Native Americans serve as its team's name. But the question of law is certainly similar enough that I would agree it would make sense to review both cases together. Under the law, either refusing marks based on disparagement is constitutional or it isn't. There's no provision for who is applying for, or holding, the trademark in question.

Another reason it's a savvy move by the Redskins is that The Slants are coming into the SCOTUS review having won its appeal. In their case, it's the USPTO doing the appealing to SCOTUS. The team likely sees the band having an easier time getting a win before the court, having won on appeal, and is arguing that if The Slants' case holds up, then the cancellation of the team's trademark would make no sense.

And the Redskins are right. The team's name may be antiquated, but under the law, the government has no business applying its schizophrenic sense of morality to speech under the First Amendment.

Filed Under: first amendment, free speech, offensive, redskins, scotus, slants, supreme court, trademark
Companies: washington redskins

Canada Too Has An Issue With Arbitrary Applications Of Morality In Trademark Applications

from the you-bastards dept

In our recent discussion about the delightfully vulgar filing by the Washington Redskins in an effort to point out the arbitrary application of morality by the government to trademark law, the point in the filing was driven home by just how many similarly vulgar and offensive terms the USPTO has been happy to sanctify with a valid trademark. Perhaps some of you out there thought that this was a uniquely American problem, something resulting from our overabundance of political correctness. It's not. A case in Canada over the trademark application for "Lucky Bastard Vodka" shows this quite well. It also shows the inherent problem in trying to have a government institution apply morality to business in this way.

In 2011, LB Distillers applied to the Canadian Intellectual Property Office (CIPO) to register “Lucky Bastard vodka” as a trademark. About eight months later, the agency responsible for trademarks, patents and copyright replied.

“The examiner came back and said it was immoral, scandalous and obscene, and that the general population of Canada would agree that it was an immoral name,” LB Distillers co-owner Cary Bowman said.

The micro-distillery’s appeal was rejected in 2012, but the company persisted, filing a separate application to register “Lucky Bastard.” On Oct. 8, CIPO sent a letter to LB Distillers stating that it “does not appear registrable” because it violates the Canadian Trade-marks Act, which prohibits trademarks that include “any scandalous, obscene or immoral word or device.”

So, here, as with the Redskins, we have a trademark office refusing a business a trademark because of the offensive nature of a word -- "bastard," in this case. Now, we could have a giant discussion over whether or not that word is truly offensive, as LB Distillers indeed tried to do with the government. Or, on the other hand, as LB Distillers also did, it could instead simply point out the blatant and glaring hypocrisy of the government's position.

A search of the trademark database reveals several containing the word “bastard” — including Fat Bastard wine, he noted. The situation amounts to one examiner applying his or her views to the process, he said.

“When it’s one person who’s deciding the fate of something like that, and they’re basing it maybe on their own morals as opposed to anybody else’s, and yet calling it everybody else’s, that’s quite unfair.”

And, really, that's the problem with these cases. We may think of trademark offices or government more generally as a sort of singular entity within our minds, but they're all just ultimately made up of people. People with differing views, different sensibilities, and different tolerances for different words. With both the American and Canadian trademark provisions around offensive langauge being so open to interpretation, what ends up happening is that these examiners are left to apply their own morality to these cases, which of course means that such morality will be applied inconsistently across all applications. That's how you get "bastard" being rejected by one examiner while it's already been approved by others. And that's partly why an appeals court found the part of trademark law that allows this in the US unconstitutional last week.

There are two possible solutions to this problem. The first is to harmonize the morality standards across all examiners in a trademark office so that they all apply government morality consistently. If that sounds impossible to you, it's because it is impossible. The only workable solution is to get trademark examiners out of the morality business entirely and judge these things purely on business and commerce grounds.

Filed Under: canada, disparaging, free speech, lucky bastard, morality, offensive, redskins, trademark

Redskins, Who Should Get To Keep Their Racist Name, Still Jerks For Running Fake Grassroots Support Website

from the jerkskins dept

As we've previously discussed the trademark issues surrounding the Washington Redskins team name, and as I've personally flip-flopped on the question like I was running for public office to represent salmon on a dry dock, none of that coverage has ever called into question that the team is run by some number of jackasses. Dan Snyder, who owns the team, has gone out of his way to attack all kinds of media and blogs over coverage of the team and its antics. Well, back on the name of the team, even if they got a big gift from a court in a related lawsuit, it turns out the team has been engaging in a bit of subterfuge to try to drum up support for the mascot as well.

But, thanks in part to an errant tweet, the team has been found out. Fans of the team and its name may recognize the Twitter account "Redskins Facts", which purports to be a grassroots conglomeration of fans that back the name of the team.

Redskins Facts is supposedly a grassroots organization aiming to create support for a mascot named after scalping Native Americans. However, it is run by a PR firm, not fans, and the team has carefully skirted around precisely designating it as independent. As SBNation points out, the Washington Post fact-checked the site’s claims and found them misleading.

While Washington was in a close game with Chicago, some suspicious tweeting went down. These two tweets, sent from two purportedly different organizations that have no affiliation with each other, look pretty similar. Given the exact similarities between the two tweets, this is almost certainly a copy/paste job.

pic.twitter.com/j1nJm4Rx6H

— Dan Steinberg (@dcsportsbog) December 13, 2015

Oops. While many have long suspected that the PR firm running the Twitter account had been hired to do so by the team, because there isn't another logical explanation that would make any sense, this copy/paste job between the team's official account and the "Redskins Facts" account seems to confirm it quite nicely. The Redskins Facts website, indeed, has an entire "About Us" section that is nothing short of a series of misleading claims that would probably be more appropriately called lies.

So, even as the legal side of things is going to end up leaving the Redskins to trademark its dumb, racist team name, the fact that the team pulls these kinds of antics ought not be lost in the meantime.

Filed Under: astrotufing, dan snyder, grassroots, pr, redskins, redskins facts, trademark
Companies: washington redskins

Appeals Court Says US Government Cannot Deny Trademarks For Being 'Disparaging'

from the fans-of-that-dc-football-team-celebrate dept

While everyone's been focused on the big dispute over the name of the NFL team from Washington DC... and whether or not it's appropriate for the US Patent and Trademark Office to take back the team's trademark, observant trademark watchers knew that the case to watch on this issue involved a dispute over the trademark for the band "The Slants." The band, whose members are Asian Americans, sued after the USPTO rejected their attempt to trademark the name of the band, claiming that the name was a disparaging term for Asians. The key argument: is it a violation of the First Amendment for the Lanham Act (the law under which registered Federal trademarks exist) to allow the USPTO to reject trademarks for being disparaging. Specifically, Section 2(a) says that:

No trademark... shall be refused registration... unless it... 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...

And thus, the question is whether or not this is a law regulating speech based on content, which is not allowed under the First Amendment. I've struggled with this issue in the past, originally coming down on the side of saying that it's not a First Amendment violation, because not giving someone a trademark doesn't do anything to restrict speech. In fact, I originally argued, it does the opposite. Rejecting a trademark leaves speech more open for anyone to use.

Over the past twelve months, however, after discussing the issue with a bunch of lawyers (on both sides of the issue), I've changed my mind, and I see the key point: this is still a law that is based on the content of speech, and that's problematic under the First Amendment. And, now in the case involving the Slants, court of appeals for the Federal Circuit (CAFC) has agreed. The Lanham Act's prohibition on issuing trademarks if they're disparaging is unconstitutional.

The key issue: "content-based regulations are presumptively invalid." And this is a content-based regulation.

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 contentneutral 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.”

The court rejects the claim by the government that the rejection is still "content neutral" because it would reject the same term even if it were meant to be supportive, rather than disparaging. In fact, it points out that The Slants clearly are not trying to be insulting to Asian Americans as proof of this. But the court notes that this claim is basically completely bullshit:

The government’s starting point—that it rejects marks conveying diametrically opposed viewpoints, if they contain the same offensive word—is incorrect. The PTO looks at what message the referenced group takes from the applicant’s mark in the context of the applicant’s use, and it denies registration only if the message received is a negative one. Thus, an applicant can register a mark if he shows it is perceived by the referenced group in a positive way, even if the mark contains language that would be offensive in another context. For example, the PTO registered the mark DYKES ON BIKES, U.S. Reg. No. 3,323,803, after the applicant showed the term was often enough used with pride among the relevant population. In Squaw Valley, the Board allowed the registration of the mark SQUAW VALLEY in connection with one of the appliedfor classes of goods (namely, skiing-related products), but not in connection with a different class of goods.... Section 2(a) does not treat identical marks the same. A mark that is viewed by a substantial composite of the referenced group as disparaging is rejected. It is thus the viewpoint of the message conveyed which causes the government to burden the speech. This form of regulation cannot reasonably be argued to be content neutral or viewpoint neutral.

The court goes on to note other examples of rejected trademarks, noting that it clearly involves the Trademark Office deciding the nature of expressive speech and whether or not it is appropriate.

As for my original argument that rejecting a trademark restricts no speech, the court (rightly, I now believe) rejects that argument as well, basically saying that it still serves to silence certain forms of speech by choosing to remove a benefit based on the content of that speech. And that creates a burden based on content, which is not allowed under the First Amendment.

The general principle is clear: “Lawmakers may no more silence unwanted speech by burdening its utterance than by censoring its content.” ... “[T]he government’s ability to impose content-based burdens on speech raises the specter that the government may effectively drive certain ideas or viewpoints from the marketplace.” ... A law may burden speech even when it does so indirectly. In Sorrell, the challenged statute did not directly ban speech, but rather forbade certain pharmaceutical marketing executives from obtaining and using information that could help them market their products more effectively.... The Court found that the state “ha[d] burdened a form of protected expression,” while leaving “unburdened those speakers whose messages are in accord with its own views.” ...

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.

It further notes that the vagueness in what may or may not be granted a trademark also leads to uncertainty, and "such uncertainty of speech-affecting standards has long been recognized as a First Amendment problem" that may contribute "significantly to the chilling effect on speech."

The court also rejects the argument that because granting a trademark is simply a form of government speech, there's no First Amendment issue here either. The court basically says "uh, no," and points out that under this theory, anything covered by copyright would become "government speech" immune from the First Amendment.

This argument is meritless. Trademark registration is a regulatory activity. These manifestations of government registration do not convert the underlying speech to government speech. And if they do, then copyright registration would likewise amount to government speech. Copyright registration has identical accoutrements—the registrant can attach the © symbol to its work, registered copyrights are listed in a government database, and the copyright owner receives a certificate of registration. The logical extension of the government’s argument is that these indicia of registration convert the underlying speech into government speech unprotected by the First Amendment. Thus, the government would be free, under this logic, to prohibit the copyright registration of any work deemed immoral, scandalous, or disparaging to others. This sort of censorship is not consistent with the First Amendment or government speech jurisprudence.

Various attempts to say that trademarks are just "commercial speech" and thus get less scrutiny are rejected throughout the ruling, noting that it's the expressive speech of users that would be hindered by keeping trademark law as is. And then even if it is commercial speech, the court still says this part of the Lanham Act is no good:

First, we ask whether the regulated activity is lawful and not misleading.... Unlike many other provisions of § 2, the disparagement provision does not address misleading, deceptive, or unlawful marks. There is nothing illegal or misleading about a disparaging trademark like Mr. Tam’s mark.

Next, for speech that is lawful and not misleading, a substantial government interest must justify the regulation.... But § 2(a) immediately fails at this step. The entire interest of the government in § 2(a) depends on disapproval of the message. That is an insufficient interest to pass the test of intermediate scrutiny, as the Supreme Court made clear in Sorrell... (law must not “seek to suppress a disfavored message”);

What about not spending taxpayer money approving racist messages? Well, the court points out, trademark registration is funded by applicants, not taxpayers, so that one fails too.

And, yes, the court admits, racist and disparaging speech may be troubling and we may not like it, but that doesn't mean the government should be in the business of deciding what is and what is not appropriate.

Moreover, at the level of generality at which the government invokes “racial tolerance,” it is hard to see how one could find that § 2(a) “directly and materially advanc[es]” this interest and is narrowly tailored to achieve that objective.... Disparaging speech abounds on the Internet and in books and songs bearing government registered copyrights. And the PTO has granted trademark registrations of many marks with a racially charged character.

The court concludes by noting that it's not endorsing disparaging speech -- even the name of the band in this case. It's not endorsing a trademark on "The Slants." It's just noting that §2(a) appears to be unconstitutional for violating the First Amendment.

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.

There is also a concurring opinion that says that beyond the fact that Section 2(a) is a violation of the First Amendment it's also a violation of the Fifth Amendment for being "unconstitutionally vague," specifically arguing that the term "may disparage" leaves things wide open in a way that is unconstitutional. There's another concurrence that includes a partial dissent, arguing that the commercial speech argument is not correct, and noting that the Trademark Office is not rejecting speech that offends the government, but rather which offends "a substantial composite of the referenced group." Finally, there are two more dissents. The first is on the First Amendment issue, saying that the USPTO's rejection of a trademark doesn't harm anyone's free expression rights. The second one argues that the government has a "substantial interest" in refusing to allow such trademarks. Feel free to read the arguments on that below.

What will be interesting is if the government seeks to appeal this to the Supreme Court (and whether or not the Supreme Court takes the case). It's possible that any Supreme Court decision may wait and depend on a ruling in the case about the Redskins trademark (which is in the 4th Circuit). If that court rules differently then it's much more likely that the Supreme Court will take on this issue to clear up the circuit split. If the 4th Circuit sides with the Redskins, then there will be two such rulings on the books in different circuits. But, for Redskins fans who don't want that name to go away, today's court ruling is a big win in your favor. And while I'll admit I'm no fan of the Redskins name, I'm now pretty firmly in the camp that agrees with the First Amendment argument that it's not the government's place to decide whether the speech is disparaging or not.

Filed Under: disparaging, first amendment, free speech, lanham act, redskins, slants, trademark, uspto

Judge Does Mental Gymnastics To Deem Left Nut Brewing Trademark To Be Non-Offensive

from the paging-the-redskins dept

We had just been talking about the awkward place the Washington Redskins most recent legal filing has left the government in, regarding the team's trademark. In that filing, the team pointed out the sheer hypocrisy of the government's stance that the term "Redskins" is too offensive to receive trademark registration status, yet the government has seen fit to award that status to all kinds of terms and phrases that are equally if not more offensive on any number of levels. But it isn't only for already-registered marks that the awkwardness exists. For new applications too, the courts now have to weigh whether offense applies to granting new trademarks. And, frankly, it's causing some in the Trademark Trial and Appeal Board to employ some serious mental gymnastics when ruling.

The most recent example of this concerns a brewery out of Georgia named Left Nut Brewing Company. A recent ruling has allowed the brewery to trademark its name.

On November 16, the Trademark Trial and Appeal Board decided to allow a Georgia-based brewery to register their name as a trademark . Established about 30 years ago, “Left Nut Brewing Company” will finally be allowed to register after the reversal of an examiner’s decision that the brewery’s name was too vulgar for registration.

To get the appeal board to allow this, the brewery pointed to langauge on its own website about how the name was derived. The site claims that its name is not of the vernacular one might initially think, but is instead a vernacular use with, according to the site, a different meaning.

Instead, it is “built on a vernacular which epitomizes the willingness to give up something of extreme value to do something or create something unique.” In allowing the name to become a trademark, Judge Shaw used such meaning for the phrase to defend his ruling saying that the figure of speech can mean a multitude of things and only one was arguably vulgar.

Okay, let's not play around. The only meaning this refers to is indeed about a willingness to give up something of value: a man's left-leaning testicle. That's it. That's what left nut means. Now, I happen to love the brewery's name and think it should be adopted in every kind of industry, but the claims about the name having some other etherial meaning is laughable at best. But the judge's ruling claims to have bought the brewery's argument so as to grant it a trademark.

What's becoming clear is that even having to go through these mental gymnastics is dumb and nothing more than a waste of time. The easiest solution would be for the government to get out of the offense-measurement business entirely on trademark matters.

Filed Under: brewery, confusion, left nut beer, offensive, redskins, trademark, uspto

How The Redskins' Delightfully Vulgar Court Filing Won Me Over

from the team-redskins dept

I've never really made it a secret how much I loathe the Washington Redskins organization. I dislike their tasteless, stupid, racist team name. I hate their dumb, overly-litigious owner. And I really have nothing but disdain for the team's attempt to control public perception by strong-arming the media. And, in past posts, I've come down on the side of the government when it cancelled the team's trademark for its name, declaring that the government shall not be in the business of granting trademarks for terms that are disparaging. I was slightly less comfortable when the DOJ made a weak argument that denying the trademark wasn't a First Amendment violation, but, still, no Redskins trademark was a good thing in my mind, partially because I hate the Redskins.

But I hate hypocrisy more. And government hypocrisy is the most delicious hate-meal I've ever found, which is why I'm jumping ship and declaring myself on team Redskins. What hypocrisy am I talking about? Well, the government's hypocrisy as delightfully and vulgarly laid out in this filing the team put in its appeals case.

The PTO has registered hundreds if not thousands of marks that the Team believes are racist, or misogynistic, vulgar,
or otherwise offensive. By way of example only, the following marks are registered today: TAKE YO PANTIES OFF clothing; DANGEROUS NEGRO shirts; SLUTSSEEKER dating services; DAGO SWAGG clothing; DUMB BLONDE beer; TWATTY GIRL cartoons; BAKED BY A NEGRO bakery goods; BIG TITTY BLEND coffee; RETARDIPEDIA website; MIDGET-MAN condoms and inflatable sex dolls; and JIZZ underwear. These are not isolated instances. The government routinely registers pornographers’ marks: TEENSDOPORN.COM, MILFSDOPORN.COM, THUG PORN, GHETTO BOOTY, and BOUND GANGBANGS are but a few.

It's hard to decide exactly which part of this is more fun: the clearly gleeful way the filing lists these apparently valid trademarks or the image in my head of a government mid-level employee stamping "GRANTED" on an application for Big Titty Blend Coffee. Regardless, what's made clear in this filing is that the government's unwillingness to grant a trademark on vulgar or disparaging terms is wildly inconsistent. The term Redskins, after all, can't be said to be any more offensive than "Dago." What appeared to be a stance by the PTO on grounds of value instead now looks to be wind-socking for the outrage gale. And for the Redskins organization, that sucks and has to be massively frustrating.

And for the argument I had previously made -- that government ought not endorse the term "Redskins" through granting it a trademark -- to work, the government would need to be consistent on the matter. Otherwise, it is picking and choosing speech as a matter of government acknowledgement. It appears the PTO has proven itself incapable of this consistency, again, per the filing.

No one today thinks registration reflects government approval. But if this Court holds that it does, how will the government explain registrations like MARIJUANA FOR SALE, CAPITALISM SUCKS DONKEY BALLS, LICENSED SERIAL KILLER, YID DISH, DIRTY WHOOORE CLOTHING COMPANY, and MURDER 4 HIRE?

Now, look, is the term Redskins an antiquated, racist term? Absolutely yes. Is it still worth hating Daniel Snyder for making this the hill he wants to die on, rather than simply coming up with another team name? Oh, for sure. But should a government be applying standards of offense to trademark registrations when its shown itself to be incapable of having any consistent standards in doing so? No, I don't think it should any longer. I did think so, but I was wrong.

So...sigh...go Redskins, I guess.

Filed Under: first amendment, free speech, redskins, trademark, uspto, vulgarity
Companies: washington redskins

DOJ Steps Into Redskins Trademark Lawsuit, Saying It Doesn't Violate First Amendment To Deny 'Disparaging' Trademark

from the constitutional-fights dept

No matter what you think of the various fights over whether or not the Washington NFL professional football team should be named the Redskins, the legal side of the fight is raising a fairly interesting First Amendment question. As we've discussed in the past, trademark law (notably 15 USC 1052(a)) says that the Trademark Office has the right to deny a registered trademark on "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." The US Patent and Trademark Office used that tidbit to cancel the registration on the Redskins a few months back (a few months after rejecting a mark on "Washington Redskin Potatoes" using similar logic). Dan Snyder's football team is going to court over this and raising a few arguments, though the one that is most interesting to me is whether or not that clause in the Lanham Act violates the First Amendment. As the complaint argues:

The terms "disparage," "may disparage,""contempt," "disrepute," and "may bring... into contempt or disrepute"—which the TTAB acknowledges are not defined in the statute or in its legislative history—are unconstitutionally vague. The statutory language of Section 2(a) fails to provide people of ordinary intelligence a reasonable opportunity to understand what conduct it prohibits, and therefore conveys no ascertainable standards for trademark owners to follow. The statutory language of Section 2(a) thereby encourages and authorizes arbitrary and discriminatory enforcement by leaving the Board with virtually unfettered discretion to deny registration or to cancel registrations, even in situations such as the one presented here, where for over eighty years Pro-Football has worked to establish valuable rights in its marks, and has owned its initial registration in the series of marks, for over forty years. Section 2(a) thus effectively chills First Amendment free speech rights.

The terms "disparage," "may disparage," "contempt,""disrepute,"and "may bring... into contempt or disrepute" are unconstitutionally overbroad and sweep under their rubrics speech that is not capable of being legitimately regulated by the government. There is no core of easily identifiable and constitutionally proscribable conduct prohibited by Section 2(a). Rather, to the extent there are any legitimate applications of Section 2(a), they are few in comparison to the substantial unconstitutional applications of the law that impermissibly restrict protected speech. Section 2(a) thus chills protected speech that falls within its overbroad language.

The team makes a further argument that the name is a form of protected speech and removing the trademark stifles that speech, but that's a slightly different issue (and one that I don't think is as strong).

The DOJ has now stepped in specifically to defend the constitutionality of that section of the Lanham Act:

The United States will defend the constitutionality of the federal statute.

“The Department of Justice is dedicated to defending the constitutionality of the important statute ensuring that trademark issues involving disparaging and derogatory language are dealt with fairly,” said Acting

Assistant Attorney General Joyce R. Branda for the Civil Division. “I believe strongly in the rights of all Americans to celebrate and maintain their unique cultural heritage. Going forward, we will strive to maintain the ability of the United States Patent and Trademark Office to make its own judgment on these matters, based on clear authorities established by law.”

From a pure legal wonkery position, this whole thing is fascinating. I have to admit that specifically putting into law that the USPTO can deny trademarks based on "matter which may disparage" or which might bring "persons, living or dead, institutions, beliefs, or national symbols... into contempt, or disrepute" bothers me on a basic First Amendment level. Asking bureaucrats to determine whether or not content is disparaging or might bring someone into disrepute certainly seems to raise some First Amendment issues. It certainly doesn't seem to fall into the very limited categories of "content-based restrictions" that the Supreme Court has allowed.

That, however, is only half of the equation. The more important half is the question of whether denying a trademark registration is a content-based "restriction on speech." And that doesn't seem even close to reasonable. There are tons of trademarks that are denied all the time, and it seems perfectly reasonable to say that the USPTO can deny a trademark. If it's somehow argued that denying (or cancelling) a trademark registration can be seen as a First Amendment violation, then would the USPTO be able to reject any trademarks? Or would it always face a First Amendment challenge?

And that brings us to the final point. Cancelling a trademark registration doesn't actually block any form of speech. The team can still use the name (and could even still claim a common law trademark, allowing it to block most others' attempts to use the mark anyway -- it basically just limits the ability to get monetary damages). In fact, the trademark lawyer for the Redskins, Bob Raskopf, more or less made this point himself in response to the USPTO cancelling the registration, noting (among other things) that:

This ruling – which of course we will appeal – simply addresses the team’s federal trademark registrations, and the team will continue to own and be able to protect its marks without the registrations.

He's right, but it also undermines the First Amendment question raised in the appeal, and more or less makes the DOJ's case for it on this particular point. If no speech is hindered or stopped by the cancelling of the registration (or a denial of a registration) based on 1052(a) then where is the First Amendment problem? It may be a "content-based" regulation, but it's not clear that it's a content-based restriction on speech.

Either way, as a First Amendment issue, it's an interesting one to watch. Should the Redskins prevail, and the DOJ fail, on this particular point, there could be some other interesting challenges to rejections of trademarks -- or even potentially patents or copyrights as well. Saying that rejecting a registered form of intellectual property is a violation of the First Amendment could open the door on a series of troubling legal questions. Still, this isn't the only case exploring this issue. A case in front of CAFC currently, involving the USPTO rejecting a trademark for the band "The Slants" via this same part of the Lanham Act has opened the door to it being called unconstitutional. At least one judge seems to agree with the Redskins' take on this:

At the Federal Circuit, Tam and attorney Ronald Coleman are swimming against 34 years of precedents. But it sounded from Friday's argument as if at least one judge wants to reconsider them. Judge Kimberly Moore described the seminal decision upholding Section 2(a) of the Lanham Act as outdated, cursory and a candidate for en banc review in light of "an immense evolution of Supreme Court jurisprudence on this point."

In that case, one of the judges pointed out, as we have, that rejecting the trademark doesn't limit speech, but in fact expands it by not restricting it via the trademark. After some coaxing from Judge Moore, the lawyer for The Slants' Simon Tam disagreed with that point. However, again, the others on the panel seem to feel as we do that it's not clear what speech is being stifled here. According to Judge Kathleen O'Malley:

"Isn't there a difference, though, between prohibiting speech on the one hand, which very much would be censorship, and refusing to give one a monopoly on a particular mechanism for that speech?"

Indeed, there is. And it seems likely that the Redskins are going to lose on this point as well.

Filed Under: disparaging, doj, first amendment, free speech, lanham act, redskins, slants, trademark
Companies: washington redskins

Redskins Decide That Suing Offended Native Americans Should Really Help Their Case

from the the-white-man-cometh dept

When last we checked in on the DC area's professional football team, we had just learned that the USPTO had decided to remove certain trademark protections from certain aspects involving the team's name on the basis that it is a demeaning slur against Native Americans. Whatever you think of that particular decision, things are about to get strange. That decision was made following a petition by five Native Americans who appeared before the USPTO and argued successfully that the term "redskin" is disparaging and racist. Daniel Snyder, owner of the Redskins, has since claimed that the team's name is not racist at all and has vowed to continue the fight to keep his trademarks in place.

One would have thought that this would mean going through the normal USPTO appeals process. One would have been wrong, it turns out. Daniel Snyder and the Washington Redskins, who insist that they respect Native Americans, have instead decided to take the five Native Americans who petitioned the USPTO for the removal of the team's trademarks to court in a lawsuit.

In June, the five activists – Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan and Courtney Tsotigh – won a landmark decision from the US Patent and Trademark Office to cancel the NFL franchise’s trademark registration. In their decision in June, the Patent office board said the trademarks were “disparaging to Native Americans.”

In response, instead of taking the case to an appellate court, the team decided to sue the five petitioners in a US district court in Virginia. This is an option used when there is a dispute over a trademark; two companies selling products under the same or very similar logos or names, for example. This case is extremely unusual because the five defendants have no vested interest in the team name or logo – they petitioned to have the trademark protection removed because of its offensive nature. On this basis, the defendants’ lawyers filed a motion to have the case dismissed.

And that filing was denied by the judge, who will allow this ridiculous lawsuit to go forward. The team's lawyers apparently feel that using a lawsuit outside of its intended purpose is just fine in this case, even if it means the five activists will have to go through the legal proceedings, which will certainly involve some sort of time and monetary cost to them. It's beginning to look as though Daniel Snyder can't take a breath without pissing off at least some Native Americans. But, again, regardless of what you think of the team's name, the important part of this story is that Snyder and the Redskins are pursuing a path specifically designed to chill speech regarding trademarks a corporation might have in place. Should this start some kind of movement to allow for lawsuits against mere petitioners in trademark disputes, well, the team with the most money wins. The point is that allowing this sort of thing to go forward attaches a legal firearm to every dollar a company has within its coffers. Who will dispute a trademark with the threat of an expensive lawsuit staring them down?

But even this move might backfire. While legal experts seem to agree the move is absurd, some of the involved parties are champing at the bit.

David Glass, the president of the National Coalition Against Racism in Sports and Media, said that he welcomed the legal challenge. “We’re all smiling. We want to get Dan Snyder in court,” he told the Guardian.

I imagine one of the things Glass wants to get on the table is Snyder's ridiculous claim that the removal of trademark protections violates his free speech rights, all while taking five activists to court simply for speaking their minds. It'll take some serious tap dancing to make that look logically consistent.

Filed Under: daniel snyder, lawsuits, native americans, offensive, racist, redskins, trademark, uspto

USPTO Cancels Trademark Registration For Washington Redskins

from the finally dept

Given that I've been quite vocal about my interest in the Washington NFL team changing its name from the disparaging "Redskins" moniker to something more civil, you might think that I'm doing some kind of happy dance in my office now that the USPTO has rescinded the trademark registration for the team (something I had predicted, along with others, a while back). Look, I won't pretend like any steps moving us closer to a world where that team's name is changed don't make me happy, but I do take the counterpoints seriously. I don't particularly care for a world where speech deemed "offensive" can't be uttered, nor do I generally like when the government sticks its nose in most things. I understand that completely -- I just think there are some serious arguments for ensuring the government doesn't grant exclusive rights to organizations on the backs of horribly racist terms. So when the USPTO says they're removing the registration because the term is disparaging and they don't want to grant rights for the team to seek trademark damages to that kind of language in all of our names, I happen to think that make sense.

“We decide, based on the evidence properly before us, that these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered,” the board wrote in its opinion, which is here.

Again, if you think this is yet another example of government's intrusion on free enterprise, I get where you're coming from. After all, damn it, we wouldn't need to have come to this point if the citizens of D.C. had risen up and refused to go to games until the name was changed. That would have been a far preferable solution. That said, the provision in trademark law forbidding marks of a racial nature is fairly clear and I think there's fairly good reason for that language. As plaintiff Amanda Blackhorse said:

“I am extremely happy that the [Board] ruled in our favor,” Blackhorse said in a statement. “It is a great victory for Native Americans and for all Americans. We filed our petition eight years ago and it has been a tough battle ever since. I hope this ruling brings us a step closer to that inevitable day when the name of the Washington football team will be changed. The team’s name is racist and derogatory. I’ve said it before and I will say it again – if people wouldn’t dare call a Native American a ‘redskin’ because they know it is offensive, how can an NFL football team have this name?”

This ruling isn't only in the name of being politically correct to Native Americans, it's about a government office that purports to represent all of us granting exclusive rights based on language that an overwhelming majority of outlets define as racist. The public can and does have an interest in how government represents us and granting trademark to that kind of term just isn't okay.

Now, before anyone gets their First Amendment panties in a twist here, the team doesn't lose the right to use the name and even keeps its registered mark during the appeals process, which has already begun.

The team will almost certainly appeal the case, and it will be able to keep its trademark protection during appeal. Losing the trademark would not force the team to change its name, but it would allow anyone who wanted to use “Redskins” on merchandise or through other means to do so, which could cost the team — and, because of the NFL’s revenue-sharing model, other NFL teams — “every imaginable loss you can think of,” as the team’s lawyers argued in the original case. For that reason, the trademark has long been thought of by opponents of the team’s name as the easiest avenue to changing it.

If Dan Snyder, a man who has filed lawsuits claiming anti-semitism, wants to stick to his racist guns and keep the team name, he can. He just doesn't get the ability to seek damages that a registered mark affords him. Speech is actually opened up by this ruling, not infringed upon. In other words, for those of you that think the team name is awesome and/or the USPTO shouldn't be getting involved in this, all is not lost. The racist term you wish to protect can still be used by the team if it wishes, it's just that those of us who think the government shouldn't be sanctioning that kind of thing are finally being represented.

Filed Under: dan snyder, free speech, redskins, trademark, uspto, washington redskins
Companies: washington redskins