In the U.S. we have seen in just the last few year’s applications to register:
I Can’t Breathe
Hands Up Don’t Shoot
Occupy Wall Street
As you can see, most of these applications are already dead—the ones that are listed as live were so recently filed that no official action has yet been taken on them. Final refusal was sent in September on the lone “live” Boston Strong application, but that refusal does not yet show up in the Patent and Trademark Office’s electronic search records.
Everything that can be said about the trend of filing these applications has already been said, most recently by trademark attorney Roberto Ledesma on his blog, EverythingTrademarks.com, and less recently but repeatedly by—among others—trademark attorney Ron Coleman on his own blog, LikelihoodOfConfusion.com.
As explained by Coleman and Ledesma, and by just about any knowledgeable practitioner, a threshold problem with trying to secure a registration on a phrase or rallying cry that has already become popular is that the applicant will not be able to demonstrate that the mark is a source identifier for particular goods or services.
Patent examiners are undoubtedly forced to be much more agile than their trademark examining brethren within the PTO. Patent examiners, after all, must incorporate constantly evolving examination guidelines into their routine, and those guidelines are informed by sometimes inconsistent Federal Circuit and Supreme Court patentability jurisprudence.
Disparagement under Section 2(a) is the one area that I think is becoming increasingly wrought within the trademark examination context. Section 2(a), codified at 15 U.S.C. §1052(a), bars, among other things, registration of a mark that “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.”
Three recent cases come to mind on that front. Interestingly enough, there have been developments in all three cases within the last week.
First, on Jan. 9 Coleman raised a slew of reasons why the Trademark Trial and Appeal Board’s Section 2(a) refusal to register “The Slants” for an Oregon-based, Asian-American rock group should be overturned. In re Tam, No. 14-1203 (Fed. Cir.).
Also on Jan. 9, the Department of Justice announced that it would intervene “for the purpose of defending the constitutionality of Section 2(a) of the Lanham Act,” in an action in the Eastern District of Virginia where the Washington Redskins are challenging a TTAB determination that its marks were registered in violation of Section 2(a). Pro-Football, Inc. v. Blackhorse, No. 1:14-cv-01043-GBL-IDD (E.D. Va.).
Then, on Jan. 12, the Supreme Court declined certiorari review to the Federal Circuit’s affirmance of the TTAB’s Section 2(a)-based refusal to register “Stop the Islamisation of America.” Geller v. USPTO, No. 14-175 (U.S.).
These cases suggest a growing unease with the PTO’s exercise of its discretion to determine what is and is not moral or disparaging. The Geller case failed spectacularly in its challenge to Section 2(a), but the other two cases warrant much more attention as the outcomes could, more than any other issue I am aware of, substantially alter trademark examination guidelines.
This is all to say that reasonable minds can apparently differ on Section 2(a). But there seems to be little disagreement on the registrability of trending and popular phrases attached to newsworthy—and often horrific—events. Another terrible event will happen—hopefully much later than sooner—and a defiant rallying cry will be coined soon thereafter. When that happens, it would be nice if, before filing pointless trademark applications, would-be filers instead asked themselves: “U.S. Serial No. 86029071?”
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