The U.S. Supreme Court determined that the “disparagement clause” in the Lanham Act was unconstitutional in Mahal v. Tam (aka The Slants rock band case).  The opinion validates the reclamation project of Simon Tam, leader of The Slants, who wanted to use the name to take back the derogatory term the name holds for Asians and Asian Americans.  But, the fight to reclaim a stereotypical name also opens the floodgates to an enormous amount of applications that could seemingly offend many people.  While the Court focused on the bedrock principles of the First Amendment, concerns over race still were prevalent from amicus briefs filed by various organizations.

The opinion written by Justice Alito denounced the allegation that trademarks equate to Government speech.  It treads carefully in extending its government-speech precedents for the concern that the government could be seen as silencing or “muffle the expression of disfavored viewpoints.”

But the racial component of this decision is still important but was not given due chance in this ruling.

Race still matters in the United States stated an amicus brief filed by the Fred T. Korematsu Center for Law and Equality.  The opponents of The Slants argued that the government’s interest was not to suppress speech but “to promote the orderly flow of commerce,” and thus Section 2(a) is content neutral and constitutional.

The brief brought up examples of names on federal maps which were named after racial slurs for African Americans and Japanese.  It stated that the government may decline to allow others to use the programs to contribute to discrimination.

It uses the USPTO’s cancellation of the Washington Redskins football team being a “racist trademark” as an example of the government “can, consistent with First Amendment principles, cancel or refuse to register a racially disparaging trademark given the substantial interest in an orderly flow of commerce.”  It made the point that refusing registration under Section 2(a) does not mean that the entity cannot use the name, it just cannot register it with the USPTO.  In conclusion, the brief noted that a decision in favor of The Slants would mean marks like “Spics Not Welcome” and “Muslim Free Zone,” would be available for trademark registration under the USPTO.

Another amicus brief filed by Native American Organizations cite that the “disparagement clause” advances substantial governmental interests in limiting disparaging speech in commercial contexts.  It also focused on the long history of trademarks that disparage Native Americans including the aforementioned Redskins mark.

The Asian American Advancing Justice amicus brief argued that the Court should issue a narrow ruling and not determine that the “disparagement clause” was unconstitutional.  It provides the Court with what it argues is a balanced approach for all parties by providing a formulaic analysis to account for free speech concerns and considers “the interests of minority groups in guarding against disparagement.”  It is unknown whether this approach would include an examining attorney to decipher whether an applicant’s are well-intentioned.

The Slants decision will make it easier to determine outcomes when registering trademarks that might tend to be considered offensive.  The Examining Attorneys’ decisions on whether a mark might offend were inconsistent as they would engage in varied interpretations of Section 2(a).  However, the Court did note that the First Amendment did not extend to words typically exempted from the definition of “speech.”  Thus, words that might be considered obscene or incite would still be barred from registration.  Yet, what of issues where there are reclamation projects like The Slants?  While Simon Tam’s band may have won, one might wonder if they allowed those seeking to make derogatory statements about a certain group easier to trademark.

The opinion considered the potential for the expansion of government speech which would have been impacted with a ruling that could be applied to copyright registrations.

For many concerned with the potential ramifications it might have on minority groups, there appears to be no safeguard.  While obvious derogatory statements will still be precluded from registration by the USPTO.  Not-so-subtle marks may pass the test for registration.  Unless the legislative branch seeks to amend the Lanham Act to add a section for those seeking to reclaim a derogatory mark, there seems to be no safeguard.

The 12th Man is at odds once again.  But this time  it doesn’t have to deal with the Seattle Seahawks and the “12s”  A lawsuit filed by a sports historian and his publisher against the school’s athletic department and its employees for a copyright infringement claim from a long-form article appearing on the school’s website.

However, the Plaintiffs’ claim that the author of the article was under a “work for hire” agreement to write the article.  Although TAMU attempted to rectify the situation by an apology, seeking permission and a reprint with a promotion of the book according to TAMU’s motion, but the Plaintiffs were not happy and a lawsuit ensued.

TAMU claims that the athletic department cannot be sued due to the fact that it is not a legal entity.  Moreover, even if the Plaintiffs were to correct the lawsuit with TAMU as defendant, it is immune due to sovereign immunity.  The rationale is that as a state entity, TAMU could not be sued for copyright infringement for money damages because it would be considered a “taking” under the 5^th Amendment which TAMU argues is unconstitutional.  It also argues that the claims should be brought in state court as opposed to the filing in federal court.

The lawsuit will be an interesting look at the perils of copyright infringement and “work for hire.”  Here, even when TAMU attempts to rectify the situation, it could not avoid the lawsuit. This will be an interesting case to look at although it might not make it pass the 12(b)(6) stage.

Via Seattle Copyright and Trademark Lawyer Blog

On Friday the USPTO office issued an opinion denying the registration of the mark I BELIEVE THAT WE WILL WIN! sought by Aztec Shops, Ltd. The applicant is the bookstore associated with San Diego State University. They wanted to trademark the name for “Bottoms; Caps; Hats; Jackets; Shirts’ Sweatshirts; T-shirts; Tops.”

The US Soccer Federation opposed registration. It noted that the men’s national team adopted the mark as a rallying cry during the 2014 FIFA World Cup. They claim that the trademarking of the phrase would “deprive…others of the ability to use the mark as an “informational and aspirational slogan.”

The USPTO agreed with US Soccer that “[s]logans and other terms that are considered to be merely informational in nature, or that express support, admiration or affiliation are generally not registrable.”

It noted that chants and slogans cannot be used as source identifiers and must remain available for others to use.

It is surprising that the groups did not come to some type of agreement for use. Of course, SDSU sought to sell clothing which likely included sports apparel which would could feasibly be confused with the US Soccer chant.

I Believe Chant Denied TM by JASONCRUZ206 on Scribd

In a recent ruling by the Trademark Trial and Appeal Board, affirmed an Examining Attorney’s decision that an application for a proposed rifle barrel configuration mark in connection with rifles and rifle barrels could not be trademarked.

There are several elements (sometimes referred to as the Morton-Norwich factors) for analysis when determining whether a product design or feature can be owned as a trademark or whether it is functional and part of the public domain.

1. The existence of utility patent that discloses the utilitarian advantages of the design sought to be registered;
2. Advertising by the applicant that touts the utilitarian advantages of the design;
3. Facts pertaining to the availability of alternative designs; and
4. Facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

TMEP 1202.02(a)(v); In re Becton, Dickinson & Co., 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); In re Morton-Norwich Prods., Inc., 1340-1341, 213 USPQ 9, 15-16 (C.C.P.A. 1982).

While the decision hinged on multiple factors, one of the practical matters cited by TTAB in denying its trademark application was the advertising description on the company’s web site which touted the company’s “patented helical fluting” for its “Fluted Gun Barrel.”  TTAB determined that the applicant’s claims were “more than mere puffery.”  Although the trademark applicant advertised on its web site that it’s product had a “unique appearance,” it also stated on its web site its utilitarian advantages.

A functional matter cannot receive trademark protection.  A product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.

For a company that looks to trademark one of its products, it must be careful with its ad copy on its web site or other promotional materials.  TTAB will review this information in making a determination as to whether the application for a trademark can be approved.

It should be noted that the Examining Attorney originally denied the application for lack of response by the applicant.  TTAB subsequently ruled on the basis of the information described above.

Case: In re E.R. Shaw, Inc. (mailed September 29, 2015)