by Dennis Crouch
In re Tam (Fed. Cir. 2015) (en banc order)
Simon Tam has been attempting to register the name of his band “The Slants” as a trademark. However, registration has been denied under Section 2(a) of the Lanham Act as a disparaging mark. In particular, Tam’s band is an Asian-American band and the term “slant” (according to the Urban Dictionary) is “A derogatory term used to refer to those of Asian descent. More accurately, it tends to refer to anybody with slanted eyes.” In a decision last week, the Federal Circuit affirmed the PTO’s denial. Judge Moore penned the original unanimous opinion, but also penned an addendum opinion that added a few additional nuggets. One of those nuggets has caught the eye of the Federal Circuit as a whole and is now the subject of a sua sponte en banc rehearing. Question presented:
Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?
The panel opinion – following prior precedent – answered that question “no.” However, Judge Moore recognized some amount of tension – especially in view of the rise in protections for commercial speech and in the power of the “unconstitutional conditions doctrine.”
Tal, we understand that. But this is commercial speech, and I believe then the question becomes whether the government has a compelling reason to discriminate and I think in this case the government does. H@te groups are a very big problem–huge problem. Not only that but all the isms are a very big problem in our culture.
You cross a line here Night Writer – even for commercial speech.
That line is called “political correctness.”
The context of the Washington Redskins name and logo should make that clear enough to you – that people somehow will find a way to be offended (given the well established context) is surely a sign that the “slope” is just too slippery for the government to be discriminating itself in choosing that which is offensive and that which is not; even for commercial speech.
Some of the commentors here seem not to be grasping what the First Amendment problem is: viewpoint discrimination. The govt. cannot discriminate in granting benefits based on viewpoint, even if it is not obligated to grant the benefits in the first place. A law that stated that patents are only granted to Republicans, or only to those who refrain from criticizing the President, or only to those who affirm that the American system of govt. is the best in the world, would each violate the First Amendment. Even though Constitutionally Congress does not have to grant patents at all, and even though not granting a patent to a particular inventor or invention would not directly impinge upon the First Amendment.
The same applies here. A trademark registration is a benefit. (Not what some people think here — you can still sue with common law rights under Section 43(a) and state law.) Congress can condition that benefit on neutral principles — the mark cannot be generic or descriptive, for example. But the problem here is that by excluding “disparaging” marks, Congress is discriminating against speech that is “disparaging.”
I think the problem with a name like the “Slants” is that perhaps there is a legitimate use for the initial band. Not much different than the African Americans that use the n word. But, the problem seems to be that if you grant the mark, then at that point you lose control. For example, what if the Redskin mark was initially filed by native Americans and used in a way that most people would understand to be not to be disparaging of Native Americans, but then later used in a way that was disparaging to Native Americans by the same business entity. I don’t think there is a great deal of control once you let the mark out of the gate.
So, to some extent the use of the mark beyond say music is irrelevant because there isn’t a way to revisit the use of the mark after it has been granted and used for a long time.
ANY word can be used and can become a disparaging word.
The governmental Thought Police are not up to that never ending job (no matter how Orwellianly appealing it may seem to them)
Can I pose a question by way of analogy? Are “indecent works” – e.g. Playboy, Hustler, etc. entitled to copyright protection? (I used the term “indecent works” loosely, because I’m aware SCOTUS really drilled down on what this term meant in the 1960’s.)
I was initially in favor of the PTO’s de-registering the mark. But after reading the ACLU piece on it (in favor of upholding the mark), I’m in the other camp. I believe “Redskin” is an offensive mark; I just don’t think we can trust the government to police standards of “indecency.”
believe “Redskin” is an offensive mark; I just don’t think we can trust the government to police standards of “indecency.”
Can you come up with an example of a trademark registration denied on the basis of being “disparaging” or perjorative that would surprise most people?
I’m not aware of any government overreaching in this micro-area. Also not aware why anybody would care.
MM, I tried to reply with one very well known trademark that is also on the racial slur database. It did not make it past this site’s filter.
Tells you something.
“Gen er al” does not make it past this site’s filter.
Doesn’t tell you much of anything Ned.
Plenty – and I do mean plenty – of disparaging things gets by the filter. Look for pretty much any post by your pal Malcolm to see examples.
anon, We shall see if Dennis allows the comment to be posted. It may surprise a lot of people.
My point Ned is that whether or not the post gets through, or the filter is changed, makes no difference to the larger discussion.
Clearly, the filter in place does not stop disparaging posts. It is more than a bit of a joke that there is no open list of “banned” words. Yes, I get that such a list might provide a roadmap to those who would use alternate spellings/symbols to mimic the banned words, but look at the memes running rampant here already (“grifters” and such). It’s a more than a bit ridiculous to be concerned about individual words when the entire mindset of certain individuals (Malcolm being the best example) exemplify disparagement.
I do not believe “free speech” as set down in the first amendment is violated until one is threatened by government or actually silenced or banned from speaking or saying this or that.
Refusing to recognize an IP right to a phrase is completely different, as I assume The Slants can say that name anytime they want, publish it, plaster it on their tour bus etc. They just can’t get rights in the phrase as against others who use and benefit from it.
At most this could be seen as a “violation of property rights”, assuming of course one believes that property ownership (including intangible property ownership) constitutes a “right” of an individual, rather than a “permission” dictated by the State.
Anon2, you speak you have “property” as a privilege, as opposed to a right.
You speak of “belief.”
Anon2, I am not quite certain what planet you are from, but this is the United States. A legal right is property. Some legal rights are conferred by government according to statutes. But most flow from so-called natural rights recognized by common law.
Governments among men are established to protect life, liberty and property. While one can say that one has government even where that government does not protect life, liberty and property, but where the government solely exists to serve its own ends without protecting the rights of its citizens, but such is not a government established by the people, for the people and of the people. Such is tyranny.
Anon2, I am not quite certain what planet you are from, but this is the United States. A legal right is property. Some legal rights are conferred by government according to statutes. But most flow from so-called natural rights recognized by common law.
Ned, I don’t think it’s necessary to accuse Anon2 of being from another planet.
Certain aspects of trademark law (e.g., actions against “passing off”) flow from natural rights, but an awful lot of it doesn’t. For instance, there is no natural right to prevent consumers from being confused, when such confusion doesn’t stem from fraudulent or deceitful activities.
I don’t think the government’s refusal to register a trademark bars actions for fraudulent misrepresentation, passing off, etc., so I’m not sure we’re talking about a property right that flows from natural rights here.
DanH, as with copyright, trademark statutes may provide additional penumbra rights and remedies. But that does not affect the fact that trademarks are property rights and such rights flow from common law.
The central problem with Anon2’s post was his central attack on the whole idea of property. When one does not protect property, one does not protect rights or liberty. If one is not secure in his ownership of property, big or small, tangible or intangible, the government has total power over you. Such thinking is not only alien to America, it is alien to civilization.
Look at Haiti as a example of a society that never did recognize property rights.
When one does not protect property, one does not protect rights or liberty. If one is not secure in his ownership of property, big or small, tangible or intangible, the government has total power over you.
That’s a bit overblown, Ned. Natural rights theory has always recognized that the rights of property owners must sometimes give way to the rights of others. Just labeling something “property” doesn’t end the inquiry.
Regarding trademarks as property, I think this paper from Mark McKenna at Notre Dame is interesting:
link to papers.ssrn.com
Thanks, DanH.
Property vs. Consumer Protection.
I wonder how this distinction will affect the current case, if at all?
Ned:
I did not intent to raise your ire or incredulity. Quite the opposite. You have misinterpreted my tone.
It is in the same vein as one might sarcastically say:
Freedom from being shot by a bureaucrat might be a violation of the “right to life, liberty, and happiness” assuming of course one believes that life constitutes a “right” of an individual, rather than a “permission” dictated by the State, and thus at said bureaucrats whim.
Notice the implication that “one” may not know or believe this, meaning, and pointing out the fact there are those who don’t… tyrants, terrorists, communists.
In the context of “property” and the “rights of the individual” you know who stands in additionally to tyrant, terrorist and communist…
Do not be alarmed Ned, I am not “one” of those.
If you recall any of my posts, you should have realized this quite clearly!
I too missed the sarcasm sign…
I think that too many people really do believe in the parody you presented…
anon2, you protest too much methinks.
It matters not what label one gives someone who does not believe in rights. All one has to know is that when one does not have rights, one does not have liberty. Taking that one step further, one does not have liberty unless one has a government that actually protects rights. The absence of government is not freedom. The absence of government is “might makes right.”
Such goes without saying in certain circles.
It is luadible nonetheless that you have taken a moment to state it to the audience here.
Free speech has broader implications than what you’re suggesting. For instance, can you get a license plate with a confederate flag on it?
link to foxnews.com
No one is being banned from actually saying anything, just from getting a license plate.
Why wouldn’t IP be similar?
Would the Russian band “Pussy Riot” be allowed to trademark their name here (after they get out of Russian prison)?
Because of the band it became perfectly acceptable to say the word “Pussy” on broadcast TV as long as it was followed by the word “Riot”.
That year I went to a Walmart the day after Thanksgiving.
It was a real Pussy Riot.
Maybe the riots were because all of the chocolate roosters were all gone…
OT: It appears that Nautilis won the war but lost the battle (Biosig’s patent deemed definite on remand).
Lol!
Well thank goodness for them at least winning the war. Is it reviewable?
18 page decision, the only “analysis” starts at page 14, and all they do is quote what they said before, hahaha.
The last refuge of a terrible group of analysts.
I wonder what was argued. You’ve have to imagine that Nautilus had to argue that the claim using functional language wasn’t reasonable. If so, I’d try and go back. I mean, they would win with that argument, but I could understand them not wanting the precedent.
MM, the court acknowledges there are numbers of ways to adjust signal output so they are balanced, not just spacing. The claim covers them all. So, any spacing is covered, even if the means for balancing the signal is elsewhere.
The claim covers a result. It makes no difference how balancing a signal is achieved, or whether the way it is done is inventive over spacing, which was claimed. From a big picture point of view, claiming a result without actually claiming the inventive means for achieving the result is what? A violation of 101? 112(a)? 112(b).
I don’t know why the defendant’s once again lost this case. But it seems to me that the Supreme Court really needs to take this case a second time because what happened here should not have happened.
I think this is an example of the Federal Circuit at it most intransigent. People of ordinary mental capacity will be shocked at the result here.
From a big picture point of view, claiming a result without actually claiming the inventive means for achieving the result is what? A violation of 101? 112(a)? 112(b).
According to precedent, at least two of the above, and it’s likely 112(b) too.
I don’t know why the defendant’s once again lost this case.
Yes you do, you just don’t want to say it.
But it seems to me that the Supreme Court really needs to take this case a second time because what happened here should not have happened.
I can imagine them taking it. I can imagine it not being appealed again. It’s so clear that the court never performed a second analysis. The Supreme Court said to take a new look with a new standard and their entire opinion was “See what we said before, therefore it is still indefinite.”
I think this is an example of the Federal Circuit at it most intransigent. People of ordinary mental capacity will be shocked at the result here.
So we should be hearing from anon and NWPA in three, two, one…
What was the war that they won?
Getting rid of the CAFC’s ridiculous “capable of being construed” test for satisfying 112.
I can buy that…
…for now, haven’t read the decision yet, but it smells more like a coat of paint than a full renovation…
Sweet, I’ve been waiting to realize my dream – F*cking Burgers.
I’ve already got a billboard idea – It’s a couple in bed, hair tussled, sheets akimbo, cigarettes lit on the nightstand, they look extremely satisfied. Underneath: Those were some good F*cking Burgers.
One step closer ma, one step closer.
Can I SuperSize(TM) that?
I’m fairly certain what Judge Moore penned are “additional views” and not a “concurrence.”
That’s rather a moot point, given that the writing by Judge Moore has been vacated.
This is an interesting question. The mark, Instaroach, as in Instaroach wired cigarette papers, was initially rejected as scandalous on the ground that “roach” was the butt end of a marijuana cigarette, an illegal substance. The rejection was overcome by pointing out that “roach” was not inherently scandalous, since “Roach Hotel” was trademarked, and the fact although the suggested product may now be unlawful, this should not necessarily be determinative. A prohibition era appellate case prevented a soda shop’s use of “Bud” which was opposed by the owner of Budweiser and Bud, that was still selling brewer’s yeast for home brewing. Wired cigarette papers also had legal use as a convenient rolling paper for tobacco and other lawful herbs.
Is anyone else not too concerned if “Instaroach” were to become a trademark? I’d rather see that than “Redskins”, which I personally find denigrating.
PatentBob,
I am sorry that you find the use of the sports term Redskins “denigrating.”
Being an avid football fan, the term itself connotes no such denigration to me (the play of certain team members may be a different story).
Perhaps you can learn to accept that language changes and not be hung up by any unconnected meanings that you have in your mind…
(Plus, you could always be thankful that you don’t live in Oklahoma)
Anon,
What is the beef with Oklahoma? Ahh…the name itself, I gather?
Perhaps you can learn to accept that language changes and not be hung up by any unconnected meanings that you have in your mind…
Unconnected? Doesn’t the Washington RacialSlurs logo include an image of a native American?
You make my point (again).
Yes, there is an image of a proud warrior, and football is a game for proud warriors. No denigration there.
None.
Maybe you think that money is a denigration of the founding fathers…. Or of white people….
Anon,
Part (but not all) of the problem with a name like Redskins is that to a lot of NA, it feels as if something about them is being used against their will or without their consent, even if it is used in a good way.
I can’t articulate this well but it is something like “You took our land, or way of life and now you also take our likeness and use it to sell tv ads….great.”
Another thing is that even the “proud warrior” thing is a stereotype and a lot of people don’t want stereotypes about their culture perpetuated.
All that being said, I sort of agree with you that a lot of this is motivated by ‘politically correct hooey,’ but I do understand why it bothers a lot of NA.
I don’t buy the PC C R P.
Neither should you.
Hey PatentBob, my mom’s name was Rolfe; and the legend has it we descended from Pocahontas. I haven’t yet had the gene test to see if this is even remotely possible. However, would it be reasonable for me to be offended based on the legend?
Typical:
“In In re McGinley, our predecessor court held without
citation to any legal authority in just a few sentences that
§ 2(a) does not implicate the First Amendment.”
Ditto Patlex — patents are a “public right” because patent validity is a public concern.
Ditto BMC Resources. 271(a) requires a single party perform all steps of a process on the theory that “whoever” means only one person despite a definition of “whoever” that declares it means one or more.
Just so there is absolutely no confusion on this point (because everyone who reads this blog is super dooper smart): nobody is telling this guy that he can’t call his band “The Slants.”
Simon Tam can call his band whatever he wants. One of my other band’s name references Simon Tam and his lawsuit, in fact. It’s a really, really funny band name and plays on some “ethnic stereotypes”, just like Simon’s own bandname does. It’s really, really funny stuff.
The issue here is whether the government — my government, Simon’s government, our government — is Constitutionally required to recognize our super funny (but disparaging) band names with a government registered trademark …. because commercial “speech” or some such nonsense.
Seems to me that if it is Constitutionally required to do so because of “freedom” then the ridiculous laws that make it illegal for me to “tarnish” another’s mark with my private (i.e., non-registered) “commercial speech” (e.g., “Cocaine” spelled in script reminiscent of Coca-Cola’s trademark or “Charbucks Coffee”) are far more Constitutionally suspect than the denial of a government registered mark.
MM,
A band of radical whatever’s wants to protest perceived oppression. They announce that they will use foul language, and racial/religious epithets directed at their perceived oppressors.
Should they be given a parade permit?
Ned: A band of radical whatever’s wants to protest perceived oppression. They announce that they will use foul language, and racial/religious epithets directed at their perceived oppressors. Should they be given a parade permit?
I think protests whose sole purpose is to express a point of view are qualitatively extraordinarly different from governmental registration of an intangible brand or “trademark”, and those extraordinary differences lead to opposite conclusions.
To the extent that trademark rights expansionists like Tam are upset by the alleged “viewpoint discrimination” by the government’s refusal to register their brand name, I would favor a rule whereby the government refuses to register any mark that
(1) expresses any viewpoint or
(2) is a perjorative
over a rule that requires the government to register any trademark, regardless of its “content”.
I think there are great reasons to provide protesters I vehemently disagree with (or who nearly everyone finds offensive) with the right to protest. I’m not aware of equally persuasive reasons requiring the government to enhance the intellectual property rights of such people by registering their views as trademarks (even where my own offensive trademarks might by impacted).
I acknowledge the “slippery slope” arguments made by proponents of registering disparaging trademarks (i.e., the argument that “every trademark could potentially be deemed offensive by somebody”). As a practical matter, I just don’t see much of a slope there. On the other hand, a trend whereby trademarks (or other IP laws) are used to claim ownership over and/or monetize “viewpoints” is one worth keeping a close eye on.
But if a trademark serves dual purposes, one communicating one’s point of view as well as attributing source, can one deny registration simply because one disagrees with the point of view, or that some might? The denial of registration, like the denial of a parade permit, impairs the ability to speak through choice of trademarks.
If one cannot deny the use of the mark in connection with a public performance — meaning, the parade permit must be granted, then the trademark registration must be granted.
Free speech is strong speech — speech that calls attention, that moves the heart. Censorship has many forms. But all forms lead inevitably to a denial of free speech and from there to conformity and oppression.
Ned,
I think there is a pretty big difference between allowing offensive protests and registering offensive trademarks.
With offensive protests, we’ve decided that the government shouldn’t intervene. People are allowed to do offensive things/say offensive things in a public space.
Similarly, with offensive trademarks, we are saying that the government shouldn’t intervene. The Redskins are free to use their mark in connection with their team. They just can’t sue others for using the same mark in connection with similar services. They just can’t use the power of the state to silence others using the same mark.
Seems to me the positions are completely consistent.
Yes, the redskins can sue under state law and other common law theories. They likely still have federal rights, just no presumption of national use (though that wouldn’t be too hard to show).
go, in the end you might be right here. But I am fairly certain the Supreme Court does not want to confer or deny federal rights depending upon the content of speech.
Go,
That’s a difference without a distinction.
Is a parade different than handing out a leaflet? Certainly. Is the difference a material one to the point under consideration? No.
Suppose a band composed of freedom-of-speech supporting lawyers wants to register the mark “Slippery Slopes.” Should they get it?
Same question, but suppose the band in question is composed entirely of Asian musicians. Apparently, they would have a harder time.
Obvious discrimination.
Your example is an interesting one but, in the end, I think it just means that whether a mark is offensive depends on the context in which it is used.
Which makes sense.
Context of use makes perfect sense.
That’s why football fans (specifically) and sports fans (gen er ally) see the whole Washington Redskins debate as so much political correctness huuey.
The irony of comments censored on a free speech thread….
Delicious.
The irony of comments censored on a free speech thread….
This case isn’t about “free speech”. It’s about government registration of trademarks.
Such registration being potentially violating the first amendment and therefore impinging on free speech.
Such registration being potentially violating the first amendment and therefore impinging on free speech.
Nobody’s “free speech” is being impinged.
If some speech is given protection while other equally situated speech is not, and the only difference is the government making a call as to “not liking it” because of the notion that “someone may be offended” – you most definitely have a free speech issue.
If some speech is given protection
Trademarks don’t “protect” “speech” as that term is properly understood under the First Amendment.
Again: Tam is free to call his band whatever he wants.
His IP rights, however — i.e., his ability to claim ownership over that name and control how other people choose to identify their own bands — may surely be limited by the same concerns that control what I can broadcast over the government regulated FM or AM airwaves or what I can put on my license plate. Or is he arguing that those regulations are equally unconstitutional?
As I’ve noted before, it’s always a hoot when wanna-be libertarian types seek to expand their intellectual property rights.
“properly”..?
Assume your conclusions much?
Hey, I get that this is commercial speech and that commercial speech has a lower protection level – but it is STILL protected, and especially where – as here – the government is doling out that protection and we are talking about like situated items.
Not sure I understand your “hoot” aspect….
This is the case of governmental speech. The government can choose or not to choose to fund or protect one form of speech at the expense of another, or not. See Rust v. Sullivan.
And trademarks are an antithesis of free speech. A trademark is permission of the government for a person to exclude others from using free speech. They are contrary to liberty. Not arguing against the existence of trademarks, just pointing out the seemingly obvious.