USPTO Issues Exam Guideline on Merely Informational Matter

On July 30, 2017, the USPTO issued an Examination Guideline 2-17 on Merely Informational Matter.  The Guideline is meant to assist Trademark Examining Attorney on case law relevant to trademarks and service marks which can merely be considered informational in nature only, and do not function as a source identifier for a particular good or service.  Because the nature of what constitutes informational matter is a moving target, the Examining Attorney will have further guidance in the Guidelines as to what may or may not be a registrable mark.  See TMEP 1202.04.

Informational matter in a mark is “[s]logans and other terms that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry.”  TMEP 1202.04.

If a mark consists entirely of merely informational matter, the mark must be refused because it fails to function as a mark by conveying the indicia of source.  Further, a merely informational refusal cannot be overcome by amending the application to have the mark registered on the Supplemental Register, by acquiring distinctiveness, or by submission of substitute specimens.

In general, widely-used messages or everyday, ordinary messaging, in addition to messages with a social or political undertone, would qualify as being merely informational.  The Examining Attorney must document evidence to support the conclusion of a merely informational refusal.

For example, in In re Eagle Crest, Inc.,[1] Applicant sought ONCE A MARINE, ALWAYS A MARINE as a trademark in Class 25 for use on various clothing items.  However, the application was refused because the mark failed to function as a mark because a consumer could not readily identify it as the source of applicant’s clothing line.  The slogan is a very familiar Marine expression, and evidence to support this assertion was that a search engine revealed nearly 3 million hits.[2]

Another example was the well-used BOSTON STRONG mark, filed by several Boston-area companies[3] in a variety of goods and services in Classes 14, 25, 28, 30, 35, 40 and 41.  All were refused registration because they all failed to function as trademarks or service marks since all were based on a merely informational and commonplace slogan widely used in the media following the Boston Marathon bombing on April 15, 2013.[4]

All Examining Attorneys will now be expected to follow these Guidelines on merely informational marks when examining trademark/service mark applications.

[1] 96 USPQ2d 1227 (TTAB 2010).

[2] Id. at 1230.

[3] 10 applications were filed by these various companies in 2013, with Serial Nos. 86007909, 85926320, 85910709, 85911532, 85910589, 85910126, 85910031, 85909994, 85906569, and 85906495.  All were abandoned due to the merely informational rejections by the Examining Attorney.

[4] See Exam Guidelines 02-17, at A-16 – A-17.

USPTO Issues Exam Guidelines Consistent with Tam Decision

On June 26, 2017, the United States Patent and Trademark Office issued an updated Examination Guideline 01-17, consistent with the recent Matal v. Tam, 582 U.S.___ (2017), ruling by the United States Supreme Court, and for which our analysis was the subject of a previous post.  In that decision, the Supreme Court held that the disparagement clause of §2(a) of the Lanham Act violates the First Amendment of the U.S. Constitution by prohibiting registration of trademarks that may disparage persons, institutions, beliefs, or national symbols.

Going forward, the Trademark Examiners will not refuse trademark registration based on this provision of §2(a).  Any currently suspended application will proceed to examination under other aspects of the TMEP.  An application which was abandoned due to a §2(a) refusal, but is within the timeframe for filing a petition to revive, may be revived through such mechanism.  See TMEP 1714.01.  However, the subject matter of an abandoned application with is beyond the timeframe for filing a petition to revive can only be re-examined through the filing of a new application.

A caveat to the Guideline is that constitutionality of the companion clause to disparagement, the scandalousness clause, is still awaiting decision before the Court of Appeals for the Federal Circuit with the In re Brunetti case.  Any suspended application will remain suspended until Brunetti is decided.  It is expected that the scandalousness clause, like the disparagement clause, will be struck down.

SCOTUS Watch: Lanham Act’s §2(a) Disparagement Clause Struck Down

By Brent T. Yonehara

On June 19, 2017, the U.S. Supreme Court finally, and somewhat as expected, handed down its ruling in Matal v. Tam (formerly Lee v. Tam).[1]  By a unanimous vote, the Supreme Court struck down the Lanham Act’s §2(a) prohibition on registration of disparaging trademarks as a violation of the First Amendment’s Free Speech Clause.

The Lanham Act’s §2(a) reads, in full:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it –

(a) 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; or a geographical indication which, used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.[2]

(emphasis added.)

The purpose of the disparagement clause of §2(a) is to bar registration, on either the Principal or Supplemental Register, of a mark that may show a particular person, institution, belief, or national symbol to disparagement, false connection, contempt, or disrepute.[3]

In writing for the Court, Justice Samuel Alito began the opinion by stating that [§2(a)] “offends a bedrock First Amendment principle: [s]peech may not be banned on the ground that it expresses ideas that offend.”[4]  He noted that in rejecting Tam’s trademark application for THE SLANTS, the Examining Attorney specifically cited dictionary definitions of “slant” and “slant eyes” as a derogatory or offensive term against Asian-Americans.[5]  However, the mark was not being used as a statement against Asian-Americans.  Rather, when the band, The Slants, filed its trademark application for THE SLANTS, the band’s lead singer (and plaintiff in the original action), Simon Tam, sought to “reclaim” its derogatory nature and use the term as a source of empowerment for Asian-Americans.  Indeed, several of the band’s songs sought to address the offensive slurs and statement made against Asian-Americans.[6]

Justice Alito swept away the USPTO’s arguments that trademarks were not subject to First Amendment protection or subject to rational basis review.  Specifically, the USPTO raised the arguments that trademarks are government speech and not private speech, that trademarks are a form of government subsidy, and that trademarks were a government program.

First, Alito disputed the contention that trademarks are government speech because an Examining Atttorney does not have latitude to reject a trademark application merely based on the viewpoint expressed by the trademark.  Further, the Examining Attorney does not inquire in any office action about conformity to Government policy or another registered mark’s viewpoint.  And, finally, the USPTO cannot merely remove a registered mark from the Principal Register, unless through another’s petition for cancellation, expiration of the mark (i.e., for failure to renew or file the appropriate post-registration documents), or through FTC proceedings.[7]  Alito concluded forcefully that “trademarks are private, not government, speech.”[8]

Second, Alito rejected the notion that trademarks are a government subsidy.  Citing a litany of cases where the government paid a cash grant or subsidy to private citizens, Alito noted that the USPTO does not pay private parties to register a trademark.  Rather, it is the exact opposite.[9]

Third, Alito rejected the USPTO’s contention that §2(a)’s disparagement clause was a protected doctrine for government programs.  In what seemed a far-fetched argument by the USPTO, Alito pointedly noted that trademark registration has nothing to do with these line of government program-type of cases, which focused on the Government conferring some benefit to a private party to further some activity the Government was promoting.  These cases, Alito demurred, had no relevance to the current case of trademarks.[10]

All of this amounts in the Court’s opinion to viewpoint discrimination on the part of the Government against a private citizen related to freedom of speech when it comes to registering a trademark.[11]  “Giving offense is a viewpoint,” noted Alito.[12]  §2(a)’s disparagement clause discriminates against speech on the basis of a viewpoint.  Although even-handed in its viewpoint discrimination, the disparagement clause prohibits “public expression of ideas . . . merely because the ideas themselves [are] offensive to some of the hearers.”[13]

The Court further noted the vagueness of determining disparagement while undergoing prosecution before the USPTO, and that there currently exists an unequal level of enforcement of the statute against allegedly disparaging marks, citing the high number of registered marks on the Principal Register that §2(a)’s disparagement clause would likely disparage a racial or ethnic group.[14]  Alito further asserted that §2(a)’s disparagement clause was too broadly drafted and not narrowly tailored to serve the interest of preventing trademarks that supported invidious discrimination against one particular person, ethnicity or racial group.[15]

The case is far-reaching, and perhaps the most immediate beneficiary of the Tam case is the Washington Redskins, who were embroiled in their own trademark cancellation proceeding before the USPTO when a group of Native Americans challenged six trademark registrations for WASHINGTON REDSKINS under §2(a)’s disparagement clause, and which the Federal appellate action is stayed pending the outcome of the Tam case.[16]  (We discussed this case in an earlier post on this blog, here).  Other parts of §2(a), including the prohibition on registration of immoral or scandalous marks, could be ripe for judicial review, and could be struck down in similar fashion as the disparagement clause.  Indeed, in a letter from the USPTO to the Court of Appeals for the Federal Circuit, the Director requested that the In re Brunetti case be remanded back to the USPTO because, in light of the Tam decision before the Federal Circuit in 2015, the USPTO did not believe that “Section 2(a)’s prohibition on registration of scandalous and immoral marks can withstand challenge under the current law.”[17]

It will be a while until the USPTO revises the TMEP and releases an Examination Guideline consistent with the Tam ruling.  It is curious that §2(a) was drafted with the Lanham Act’s enactment in 1947,[18] and it took seventy years for one of its provisions to be struck down as unconstitutional.  Notwithstanding, without a doubt, more trademark applications will be filed containing objectionable or arguably offensive material.

[1] 582 U.S.___ (2017).

[2] 15 U.S.C. 1052(a).

[3] See TMEP 1203.03, Matter That May Disparage, Falsely Suggest a Connection, or Bring Contempt or Disrepute (Apr. 2017).

[4] 582 U.S. at ___, supra (slip op. at 1-2).

[5] Id. (slip op. at 7).

[6] Id.

[7] Id. (slip op. at 14).

[8] Id. (slip op. at 18).

[9] Id. (slip op. at 18-19).

[10] Id. (slip op. at 21-22).

[11] Id. (slip op. at 7).

[12] Id. (slip op. at 22).

[13] Id. (slip op. at 23) (citing Texas v. Johnson, 491 U.S. 397, 414 (1989); Hustler Magazine Inc. v. Falwell, 485 U.S. 46, 55-56 (1988); Tinker v. Des Moines Independent Community School Dist., 393 U.S. 503, 509-514 (1969)).

[14] Id. (slip op. at 11-12).  Although, it is interesting Justice Alito does not produce a single registered trademark or service mark that he would consider to be a disparaging mark; he does, however, cite the Washington Redskin’s parent company’s amicus curiae brief as authority for this statement.  See id. (slip op. at 12, fn. 6).

[15] Id. (slip op. at 25).

[16] See Pro-Football, Inc. v. Blackhorse, 112 F.Supp.3d 439 (E.D.Va. 2015).

[17] See Letter of January 21, 2016, to Clerk of Federal Circuit Court of Appeals, from Director, USPTO.

[18] See, e.g., Theodore H. Davis, Jr., Registration of Scandalous, Immoral, and Disparaging Matter Under Section 2(a) of the Lanham Act: Can One Man’s Vulgarity Be Another’s Registered Trademark?, 54 Ohio State L.J. 331-401 (1993).

WASHINGTON REDSKINS SKINNED: EFFECT OF THE TTAB’S CANCELLATION

By Brent T. Yonehara

INTRODUCTION

There has been recent controversy regarding the use of the Washington Redskins trade name.[1] Today, the Trademark Trial and Appeal Board (TTAB) summarily cancelled six trademark registrations held by the Pro Football, Inc..[2] Many people, including President Obama, have objected to the continued use of the REDSKINS mark.[3] While there is an anticipated appeal of the TTAB decision, this ruling represents a major victory for Native Americans who see the term as a derogatory and racially offensive slur consistent with the Lanham Act’s Section 2(a) prohibition of disparaging marks.

DISCUSSION

The six service mark registrations at issue include:[4]

Mark Registration No. Class
THE REDSKINS (stylized) 0836122 entertainment services – namely, football exhibitions rendered in stadia and through the media of radio and television broadcasts, in Class 41
WASHINGTON REDSKINS 0978824 entertainment services – namely, presentations of professional football contests, in Class 41
WASHINGTON REDSKINS and design 0986668 entertainment services – namely, presentations of professional football contests, in Class 41
THE REDSKINS and design 0987127 entertainment services – namely, presentations of professional football contests, in Class 41
REDSKINS 1085092 entertainment services – namely, presentations of professional football contests, in Class 41
REDSKINETTES 1606810 entertainment services, namely, cheerleaders who perform dance routines at professional football games and exhibitions and other personal appearances, in Class 41

The petitioners in the cancellation proceeding were five Native Americans.[5] This proceeding was altogether separate from another lawsuit brought by another group of Native Americans against the Pro Football, Inc., the official name of The Washington Redskins organization.[6] In that very convoluted litigation, Harjo v. Pro Football, Inc., the petitioners raised a disparagement claim similar to the Blackhorse petitioners.[7] However, the Harjo case completed its circuitous judicial travails only dealing with procedural issues (and specifically the equitable defense of laches), and never addressed the underlying substantive trademark issue of disparagement.[8]

Trademark Claim of Disparagement

Historically, the term “redskin” meant a scalped head of a killed Native American, which, under the colonial English Phips Proclamation policy, was designed to eliminate existing Native American tribes as English colonists expanded their territorial reach in the Americas.[9]

Section 2(a) of the Lanham Act states that no trademark registration is allowed if it:

(a) 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 . . . [10]

The TTAB reviewed both historical context and expert testimony in determining whether REDSKINS was, in fact, “immoral, deceptive, or scandalous.” Consequently, it found that the term was a “racially designation,” referring to the skin color of Native Americans, and throughout modern history, the lexicon became known to be “offensive, disparaging, contemptuous or not preferred.”[11]   The TTAB, utilizing the “substantial composite” test,[12] determined that a substantial composite of Native Americans found the term “redskins” to be derogatory at the time of the registrations.[13] This evidence was enough for the TTAB to cancel the six Redskins service mark registrations.[14]

Effects of Cancellation

Currently, the TTAB ruling only strips federal trademark registration benefits, namely, allowing a trademark owner to sue alleged infringers under a number of federal trademark causes of action. The practical effect of the ruling is somewhat muted since it would mean anyone could, for example, sell merchandise with the REDSKINS logo and not face a trademark action under federal laws.[15]

However, this does not mean Pro Football does not have a remedy under common law or state trademark statutes.[16] Since Pro Football maintains a principal place of business in Virginia[17] and was incorporated in Maryland,[18] it could seek remedy under Virginia or Maryland trademark or common laws, since Pro Football owns state trademark registrations in Virginia and Maryland.[19] The legal judgments, if any, would be limited to the jurisdictions each respective state. Theoretically, the Blackhorse petitioners could also seek to cancel the state registrations.

Furthermore, Pro Football can also appeal the TTAB decision to the federal courts, which they will do, as expected.[20] This will open the door to an entirely new, and probably protracted, litigation proceeding with an unknown outcome.

On a related note, the TTAB ruling does not affect the domain name registration for “redskins.com,” which is owned by Pro Football.[21] A domain name cancellation would entail commencing a completely separate, administrative proceeding under the Uniform Dispute Resolution Policy (UDRP) through an ICANN registered administrative hearing body.[22] However, the Blackhorse petitioners may have a difficult case showing that redskins.com is confusingly similar, being used in bad faith, and which Pro Football does not have legitimate interests in REDSKINS.[23] Pro Football, though, would have some difficulty with its affirmative defense under the IP Defensive Registration conditions because of the cancelled federal registration.[24] In any case, it would be a lengthy, and quite expensive, endeavor.

CONCLUSION

The TTAB ruling is a victory for Native American history and culture, who have faced centuries of English, and later, American repression.[25] Recently, there has been a movement to address the offensive usages of the Native American persona in sports[26] and academia[27]. The ruling itself may be limited in certain legal scope and jurisdiction. However, symbolically, it represents a change in the public’s perception of the REDSKINS trademark, and more importantly, redress for the Native American people.

By Brent Yonehara. Originally published at http://yonaxis.blogspot.com/2014/06/washington-redskins-skinned-effect-of.html (June 18, 2014).

[1] See, e.g., Maya Rhodan, 50 Senators Demand Washington Redskins Change Their Name, Time, at http://time.com/108893/washington-redskins-name-senators/ (May 22, 2014).

[2] See Blackhorse et al. v. Pro Football, Inc., ___USPQ.2d___ (TTAB 2014), available at http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199 (last visited June 18, 2014).

[3] See Theresa Vargas & Annys Shin, President Obama says, ‘I’d think about changing’ name of Washington Redskins, The Washington Post, at http://www.washingtonpost.com/local/president-obama-says-id-think-about-changing-name-of-washington-redskins/2013/10/05/e170b914-2b70-11e3-8ade-a1f23cda135e_story.html (Oct. 5, 2013).

[4] See Blackhorse, supra note 2 at 2-4.

[5] Id. at 7. A sixth petitioner withdrew during the pendency of the cancellation proceeding. Id. at n.8.

[6] See Harjo v. Pro Football, Inc., 30 USPQ.2d 1828 (TTAB 1994), rev’d 284 F.Supp.2d 96 (D.D.C. 2003), rev’d 415 F.3d 44 (D.C. Cir. 2005), aff’d 565 F.3d 880 (D.C. Cir. 2009).

[7] See Harjo, supra note 5.

[8] See Blackhorse, supra note 2 at 6.

[9] See Baxter Holmes, A ‘Redskin’ is the Scalped Head of a Native American, Sold, Like a Pelt, for Cash, Esquire, at http://www.esquire.com/blogs/news/true-redskins-meaning (June 17, 2014); but see Dan Snyder, Letter from Washington Redskins Owner Dan Snyder to Fans, at http://www.washingtonpost.com/local/letter-from-washington-redskins-owner-dan-snyder-to-fans/2013/10/09/e7670ba0-30fe-11e3-8627-c5d7de0a046b_story.html (October 9, 2013) (“The name was never a label. It was, and continues to be, a badge of honor.”).

[10] See Lanham Act §2(a), 15 U.S.C. §1052(a), at http://www.bitlaw.com/source/15usc/1052.html.

[11] See Blackhorse, supra note 2 at 59-61.

[12] Determining whether a mark meets §2(a) requires that the views of the referenced group are “reasonably determined by the views of a substantial composite thereof (emphasis added).” See Pro-Football, Inc. v. Harjo, 284 F.Supp.2d 96, 144-145 (D.D.C. 2003). A substantial composite does not have to be a majority of the allegedly offended group. See In re Heeb Media LLC, 89 USPQ.2d 1071, 1074 (TTAB 2008). Additionally, the relevant viewpoint is not a majority but a substantial component of the general public in the context of contemporary attitudes. See In re Mavety Media Group Ltd., 33 F.3d 1367, 1382 (Fed. Cir. 1994).

[13] See Blackhorse, supra note 2 at 68.

[14] Id. at 72.

[15] See Erik Brady, How Will Pending Trademark Ruling Impact Redskins Name?, USA Today Sports, at http://www.usatoday.com/story/sports/nfl/redskins/2014/05/28/washington-redskins-mascot-controversy-trademark-daniel-snyder/9680563/ (May 28, 2014, 9:23 PM EDT).

[16] Id. See also Media Fact Sheet, USPTO TTAB Decision (Cancellation No. 92046185), at http://www.uspto.gov/news/USPTO_Official_Fact_Sheet_on_TTAB_decision_in_Blackhorse_v_Pro_Football_Inc.pdf (June 18, 2014).

[17] See State Corporation Commission Business Search database, Commonwealth of Virginia, at https://sccefile.scc.virginia.gov/Business/F024104 (last visited June 18, 2014) (Reg. No. F0241044, formation date of July 21, 1971).

[18] See Department of Assessments & Taxation, State of Maryland database, at http://sdatcert3.resiusa.org/UCC-Charter/DisplayEntity_b.aspx?EntityID=D00176966&EntityName=PRO-FOOTBALL%2c+INC.+++++++++++++++++++++++++++++++++++++++++&TabNum=1 (last visited June 18, 2014) (Dept. No. 300176966, formation date of December 4, 1936).

[19] See Division of Securities & Retail Franchising, Trademarks and Service Marks Registered in Virginia database, at https://www.scc.virginia.gov/srf/SERFWEB/RegistrationSearches/WebForms/Search.aspx?SearchType=TMSM (last visited June 18, 2014) (WASHINGTON REDSKINS, registered February 14, 1995, with first use date of July 31, 1972); Trademarks & Service Marks Database, Maryland Secretary of State, at http://www.sos.state.md.us/registrations/trademarks/TMSearch.aspx (last visited June 18, 2014) (11 separate registrations).

[20] See Frank Schwab, Washington Redskins Will Appeal Trademark Office Ruling Over ‘Disparaging’ Nickname, Yahoo Sports, at http://sports.yahoo.com/blogs/nfl-shutdown-corner/u-s–patent-and-trademark-office-cancels-washington-redskins–trademarks-144712305.html (June 18, 2014).

[21] See Whois database, at http://who.is/whois/redskins.com (last visited June 18, 2014) (redskins.com, registered through MarkMonitor, Inc., registered on July 29, 1996, and expiring on July 28, 2014).

[22] See generally ICANN, Uniform Domain Name Dispute Resolution Policy (UDRP), at https://www.icann.org/resources/pages/policy-2012-02-25-en (last visited June 18, 2014).

[23] See UDRP Rules §3(b)(ix)(1)-(3), at https://www.icann.org/resources/pages/rules-be-2012-02-25-en (last visited June 18, 2014).

[24] See UDRP Intellectual Property Defensive Registration Challenge Policy §4(b)(iii), at https://www.icann.org/resources/pages/ipdrcp-2012-02-25-en (last visited June 18, 2014) (“the trademark or service mark registration is of national effect” (emphasis added)).

[25] See generally Sarah Harding, Justifying Repatriation of Native American Cultural Property, 72 Ind.L.J. 723 (1997); Lenora Ledwon, Native American Life Stories and “Authorship”: Legal and Ethical Issues, 9 St. Thomas L. Rev. 69 (1996).

[26] See generally Ethan G. Zlotchew, “Scandalous” or “Disparaging”? It Should Make a Difference in Opposition and Cancellations Actions: Views on the Lanham Act’s Section 2(a) Prohibitions Using the Example of Native American Symbolism in Athletics, 22 Colum.-VLA J.L. & Arts 217 (1998); George Likourezos, A Case of First Impression: American Indians Seek Cancellation of Trademarked Term “Redskins”, 78 J. Pat. Trademark Off. Soc’y 275 (Apr. 1996).

[27] See generally Daniel J. Trainor, Native American Mascots, Schools, and the Title VI Hostile Environment, 1995 U. Ill. L.R. 971 (1995); Stanford Native American Cultural Center, The Removal of the Indian Mascot of Stanford, at http://nacc.stanford.edu/mascot.html (last visited June 18, 2014).