Friday, April 24, 2015

Disparaging the Disparagement Doctrine

Remember the Titans. Empowering film about race relations. Remember the Redskins? That trademark registration so famously cancelled in 2014 for disparaging Native Americans, a.k.a., a serious detriment to race relations? 

Well we are back on the issue of disparagement on race lines once again, but not black-white, or Native American-Colonizing American, but Asian-Asian.

You read that right. Asians disparaging Asians is the issue. It's not that simple, though.

Quick recap of the case, In re Tam:
1. Band (comprised of members of Asian descent) files for name "The Slants" with the U.S. Patent & Trademark Office (Application Ser. No. 77/952,263).
2. Application denied for a likelihood of disparagement of persons of Asian descent under Section 2(a) of the Trademark Act.
3. Decision appealed to the Trademark Trial & Appeal Board.
4. Decision upheld for failure to brief, and application deemed abandoned.
5. Band re-files for the name "The Slants" with the USPTO (Application Ser. No. 85/472,044).
6. Decision again rejected on identical grounds.
7. Decision appealed to TTAB, again affirmed, stating "it is abundantly clear from the record not only that THE SLANTS ... would have the 'likely meaning' of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band's performances."
8. Decision appealed to the Court of Appeals for the Federal Circuit, and affirmed.

If a white or black band (or any non-Asian racial group) files for "The Slants," that would rightly be rejected, all day, every day. In that context, "slants" would refer to Asians in a derogatory sense, just like "Redskin" has always been a derogatory reference when used by white Americans to refer to Native Americans.

Important side note: the band, The Slants, would not be prevented from using the name by the Federal Circuit's decision. In fact, nobody would be able to be stopped from using "Redskins" or "Slants" as their trademark, regardless of their race. Rather, it is just that the USPTO, and under some precedents the Federal Courts, would not protect that use from infringment. Though scholars disagree, the relevant USPTO rulings and case law arguably support free speech: the government does not have to protect commercial speech that is disparaging (since commercial speech receives less protection than non-commercial speech), but it also will not bar it from being used. In other words, disparage away, just don't expect to stop others from doing it in a way that's confusingly similar to your use. That was the rationale the Federal Circuit adopted in affirming the denial of the application for registration.

While the Redskins famously lost their protection of the registration, the case for "The Slants" is distinguishable. The Redskins organization is owned by a white man, employs staff and fields a team of few, if any, Native Americans. The Slants band is entirely Asian. There is a particular decision on-point from the PTO, which allowed and registered the mark "Dykes on Bikes" on October 30, 2007 (U.S. Reg. No. 3,323,803). Initially it was refused under a 2(a) finding of disparagement of lesbians. However, because the owners of the mark were themselves lesbians and had significant evidence it was empowering as used by the registrant, the use made by the registrant of "Dykes on Bikes" was found not disparaging.

So what does that mean for The Slants? Well, with supporting evidence of the non-derogatory impact of reappropriation of derogatory terms and of other PTO decisions and registrations (as done in the Dykes on Bikes mark prosecution), I'd posit that the mark should have been allowed to register.

But why?

The Examining Attorney, TTAB, and Federal Circuit were all correct that the use of "The Slants" was clearly referring to persons of Asian descent, is an ethnic slur for Asians, and in the general sense thus disparaging of Asians. In this writer's opinion, however, the focus was entirely misplaced.

American trademark law is all about use. The meaning of a mark is determined by the context of its use. I'll say that again: the meaning of a mark is determined by the context of its use.

The Slants are all Asians. They embrace and champion the derogatory term in an ironic way as a means of reappropriating it to empower Asians. So did the registrants of Dykes on Bikes.

I would like to know the legal distinction from lesbians calling themselves dykes and Asians calling themselves slants.

"The Slants" as used is no different from the "Dykes on Bikes" use. These are Asians using it for positive connotations of being Asian. As the band's website makes plain, not only is the name used positively, ironically, and to reappropriate the "slant" slur, but the music the band produces makes significant commentary on the issue. Therefore, I'd argue the Federal Circuit was wrong. The entire examination focus drove away from that chief rule of trademark analysis: it must always be case-by-case, because it is all about the actual use in commerce. The use as a consumer would encounter the mark "The Slants" in commerce would be one that is indicative of Asian pride and of "retaking" one's racial identity by reappropriation of slurs.

So ask yourself, is this band's use in commerce conveying a meaning of disparagement, or one of empowerment? (Please do feel free to comment - in agreement or not!)

Thursday, March 5, 2015

Who Likes Ornaments? T Swizzle and Beast Mode, That's Who

I'm a fan of celebrity efforts to trademark things. I nerd out a little over it... OK, a lot over it (#trademarkattorney).

INCYMI, in the last couple weeks, Marshawn Lynch (aka, Beast Mode) filed a trademark application. If you thought he gave the NFL rules on player interviews a viral middle finger with his, well, "yeah" interview, then you'll love his new trademark application, based off his candor-filled interview with Deion Sanders, it's for the phrase, "I'M JUST HERE SO I WON'T GET FINED" (Application Serial No. 86539002).

While Lynch might be best known for pounding his fist into wannabe-defenders' faces, he just used the United States Patent and Trademark Office to do the same to the NFL. Remind me again, how did Pete Carroll not hand this guy the ball with the Super Bowl on the line? #beastmode? Uh, yeah.

But will Lynch's trademark application succeed? Well, if prior, similar applications are any indication, I'd say yes.

Lynch's mark is filed for use on: "Athletic shirts; Baseball caps and hats; Beanies; Fleece pullovers; Hooded pullovers; Hooded sweat shirts; Pullovers; Short-sleeved or long-sleeved t-shirts; Sweat shirts; T-shirts; Track jackets." OK, sounds simple enough, just slap that phrase on the shirt and it's good to go, right? Maybe.

Other athletes have succeeded with very similar applications. The San Francisco 49ers' Colin Kaepernick successfully registered KAEPERNICKING for "Clothing, namely, shirts" (Reg. No. 4,431,402). His only evidence of use was a couple shirts with the mark printed right on them (example below).
Substitute specimen filed in support of Colin Kaepernick's filing.
*Image cropped out white space.
Source: United States Patent & Trademark Office.
Anthony Davis of the New Orleans Pelicans (still love that mascot) successfully registered both FEAR THE BROW and RAISE THE BROW for selling: "Belts; Cloth bibs; Coats; Footwear; Hats; Headbands; Jackets; Jerseys; Night shirts; Pajamas; Pants; Parkas; Rugby shirts; Shorts; Sports shirts; Sweat pants; Sweaters; Sweatshirts; T-shirts; Tank tops; Warm-up suits; Wristbands." Similarly, Davis's evidence of actual use in commerce (as is required to obtain a federal trademark registration) was just a few pictures identical in substance to what Kaepernick filed (see below).

Actual specimen filed in support of Anthony Davis's filing. Source: United States Patent & Trademark Office.
Naturally, one would expect Lynch's application to sail right on through. Even if it does, it would not necessarily be the legally correct decision. This is where we get to the headline of this post, a trademark issue referred to as "ornamental use" of a mark.

Ornamental use is somewhat intuitive, but also a really complex concept. If a use is found to be ornamental (by the USPTO in the instance of an application for registration) then that use fails to be use as a mark -- basically, "ornamental use" is a finding that the use is not a trademark, but an image/design serving as an "ornament." The concept here is that the ornamentation is the reason for the good being purchased at all, that without that ornamentation, the purchaser would not have interest in that particular good.

Even the KAEPERNICKING filing was initially refused by the PTO because the specimen (pictured below) "(1) is merely a decorative or ornamental feature of applicant’s clothing; and (2) does not function as a trademark to identify and distinguish applicant’s clothing from that of others and to indicate the source of applicant’s clothing." (May 1, 2013 Office Action on Ser. No. 85822700).
Original specimen filed in support of Colin Kaepernick's filing.
*Image cropped out white space & lower torso.
Source: United States Patent & Trademark Office.

If you compare the image at right to the substitute specimen (pictured above), there really is little to no difference. The first image includes a website screenshot where the shirt is referred to as "Colin Kaepernick Kaepernicking Shirt"; this seems to be a specimen that "snuck by" the PTO. In other words, there is no legal distinction between the two specimens such that one supports registration and the other does not. This is because use as a mark requires that the words be used to indicate the source of the goods. Here, the word "Kaepernicking" is not indicating the source of the shirt, rather, even on the substitute specimen, the only source-identifier is "SPORTIGE BRAND APPAREL." That is the only trademark in use on that specimen.

As a point of comparison, I conducted a search on Google shopping for "Eagle Shirt." Below is a screenshot of the results. Notice, just like in the first KAEPERNICKING specimen, the term "Eagle Shirt" is used to describe the shirt itself, not the brand responsible for making the shirt. None of the shirts in the picture below are made by a company or brand named "Eagle Shirt." This is the very distinction between an ornamental use and a trademark use. Ornamental use is the reason for the purchase; the desired communication of a shirt's wearer. Trademark use is the source of the shirt, and in most cases is not the desired communication of a shirt's wearer. The exception for this is famous brands (Nike, Adidas, etc.), designer brands (D&G, Calvin Klein, etc.), and licensed apparel (professional and collegiate sports teams, Harley Davidson, etc.).

Results for "EAGLE SHIRT" come up with several shirts using the term "EAGLE SHIRT" to merely describe the
shirt itself, not the brand source of the shirt. The lone exception is the Philadelphia Eagles shirt, but it is described as
the "Philadelphia Eagles Base Logo T-Shirt" and is a licensed shirt made by Nike. Nike's name does not appear in the
description, much like most brands would not. Additionally, the Philadelphia Eagles use comes via licensing by the team.
There is an argument that even the licensed use of the Philadelphia Eagles (and other licensing similarly done) is also ornamental use. However, the fame of the mark in use and the greater scope of protection is such that any other company attempting to use that logo without a license even on goods or services not offered by the NFL team would likely be infringing, either under likelihood of confusion or dilution. Thus, I will not spend any time here on that issue.

Considering the above examples of certain ornamental use (the "Eagle Shirt" results) and comparing them to KAEPERNICKING and the "Brow" marks, they are wholly indistinguishable to a consumer. Does one purchase Anthony Davis's or Colin Kaepernick's "trademarked" shirts because of the ornamental phrase or are those uses actually trademark use? The PTO seems to take the latter... but only sometimes.

Specimen as filed for Ser. No. 77525450
Source: United States Patent & Trademark Office
Compare the finding by the PTO that Kaepernick and Davis get registrations with the following example, from In re LS&S Retail, Inc., which discussed the use of "Laguna Surf and Sport" on shirts (Ser. No. 77525450; the specimen submitted is pictured to the right).

In affirming a denial of registration by the Examining Attorney, the Trademark Trial and Appeal Board ("TTAB") stated, "'[w]here ... an alleged mark serves as part of the aesthetic ornamentation of the goods, the size, location, dominance and significance of the alleged mark as applied to the goods are all factors which figure prominently in the determination of whether it also serves as an indication of origin.'" Pro-Line, 28 USPQ2d at 1142. In this case, the specimen shows the proposed mark prominently displayed in the upper center portion of the t-shirt. The proposed mark is displayed on the front of the shirt in a manner that immediately catches the eye. The size, location, and dominance of applicant's proposed mark on the t-shirt supports the conclusion that the proposed mark would serve an ornamental rather than a source identifying function on the goods."

The TTAB then continued on, saying that a lack of a "TM" symbol (because the mark was not yet registered and thus could not lawfully use a ®) also increased the nature of the use as "ornamental." So the question I ask is, how is that any different from KAEPERNICKING, FEAR THE BROW, RAISE THE BROW, or the latest effort from Beast Mode?

The answer? It's not different. (Total conjecture and non-legal opinion here: Laguna Surf & Sport just isn't filed by a famous athlete.)

From an administration view, I can't say I agree with the PTO's obvious inconsistencies on this issue. There appears to be an obvious lack of consistent use of the rules disallowing ornamental use. However, the argument in the PTO's favor: (1) it screwed up with Laguna Surf & Sport (this admission is a necessity for the rest to hold); (2) the ornamental uses here are recognized immediately by the consumers as referring to a particular individual; and (3) if another person attempted to file on them, they would surely lose an opposition proceeding for unauthorized use of the athlete's likeness.

However, this test does not pass muster from a trademark law perspective, because the shirts are still being purchased solely for the expression the wearer wishes to make that they like that athlete. The marks are not being used to sell shirts, they're being used to stamp shirts with the "marks" as decorations they know consumers want to buy. (Read between the lines, folks; all those licensed goods I said I could argue are not true use as a mark? yeah, they are not use for this same reason. Name one person you know who has purchased a New York Yankees hat because of any reason other than the Yankees' trademark. Good luck finding that needle...)

But enough harping on the athletes getting away with ornamental mark registrations. They don't even hold a candle to the celebrity winner of PTO inconsistency capitalization. That honor goes to none other than...

Taylor Swift.

As a preface, most of her marks scream "ornamental." In particular: (1) CAUSE WE NEVER GO OUT OF STYLE; (2) THIS SICK BEAT; (3) PARTY LIKE IT'S 1989; (4) NICE TO MEET YOU. WHERE YOU BEEN; and (5) COULD SHOW YOU INCREDIBLE THINGS. Not sure yet about SWIFTSTAKES or T.S., those are more legitimate.
Taylor Swift, aka T-Swizzle, is Queen duping the PTO. She owns ONE HUNDRED AND SEVENTEEN trademark filings.
Source: People Magazine.
Last year alone, T-Swizzle threw a load of applications at the PTO, as in a grand total of fifty-seven trademark filings in just two days, bringing her total number of applications (some live, some dead) to 117.

And, since this country-pop music darling is such a magnet at award shows (lolz, Kanye West), there's only one appropriate method of discussing all of her applications, so without further adieu, here are the awards:

Best Mark: SWIFTSTAKES (August 28, 2014). No it's not for impaling weaponry, but for sweepstakes and contests. [Ponder moment: does she present the awards in her Vicky's Secret angel attire?] How can you top that? The VMA's most unforgettable interruptee/award winner now runs her own contests. Take that 'Ye.

Worst Mark: CAUSE WE NEVER GO OUT OF STYLE (October 26, 2014 x 3). I'm calling this one the "Cow 'n' Goose" mark because it's "CWNGOOS" once acronymified, (which is a word, totes magotes!). But seriously, how could T-Swizzle lemme down and not intentionally misspell "cause" as cuz, cuz'? Major lost points for good grammar...

Mark ImageBest Collaboration: T-Swizzle's filing Attorney, Natalya L. Rose. This woman filed 57 marks in 2 days on October 25-26, 2014. The two-day filing-fest was led by 16 filings apiece for: THIS SICK BEAT; PARTY LIKE IT'S 1989; and T.S. (logo at right). Other marks included: 3 for the Cow 'n' Goose mark; 3 for NICE TO MEET YOU. WHERE YOU BEEN; and 3 for COULD SHOW YOU INCREDIBLE THINGS.

Heartbreaker (most dead applications): FEARLESS. Noted for her sensitive stories of high school heartbreak, this mark has suffered the lowest registration success rate, going 0-for-3 in applications. Close behind is LOVE LOVE LOVE, firing 0-for-2.

And finally...

Got the Goods? (best goods applied-for): Wind Chimes. Yup, wind chimes. That's a good T-Swizzle intends to distribute to the droves of fans (if they don't buy Beyonce's instead). Three different applications of T-Swizzle's claim wind chimes: T.S., THIS SICK BEAT, and PARTY LIKE IT'S 1989. How could you not own a T-Swizzle wind chime? The only question would be which trademark do you want it sporting. Just kidding, that's a trick question, gotta buy all three! (Close second: napkin rings. And honorable mention goes to potpourri.)

Oh, and wouldn't you know it, she also filed those three marks for us on, wait for it...

Ornaments.