Supreme Court Confirms that Trademarks are FUCT!

Jun 26, 2019
speech bubble with curse word symbols
©2018 WIRING DIAGRAM

In a decision surprising absolutely nobody, on Monday the Supreme Court ruled that the U.S. Patent and Trademark Office (USPTO) could not refuse to register trademarks even if they are  “immoral or scandalous.”  The trademark at issue involved the use of the mark “FUCT [F-U-C-T]” for clothing and merchandise.

The Court held that the First Amendment right to free speech trumps Section 1052(a) of Lanham Act (Section 2(a)), which prohibits the use of “immoral, deceptive, or scandalous matter; or matter which may disparage….”

The Slants, the Washington Redskins and Free Speech vs. Disparaging Trademarks

The Court’s recent decision was merely the final domino to topple in the domino chain reaction that started back in 2010 when Simon Shiao Tam, the lead singer for an Asian rock band attempted to register “The Slants” as the name of the band.  The USPTO rejected The Slants’ application, finding it was disparaging to people of Asian descent.  Tam appealed, and the Federal Circuit Court ultimately held that the USPTO’s refusal to register the trademark violated Tam’s First Amendment right to free speech. The Supreme Court affirmed the Federal Circuit Court’s decision, holding that the disparagement clause of  Section 2(a) “violates the Free Speech Clause of the First Amendment.”

The Supreme Court’s Tam decision effectively rescued the Washington Redskins’ trademarks, which the USPTO was in the process of cancelling as disparaging to Native Americans.

The FUCT Trademark, and the Final Domino

The Slants and Washington Redskins’ trademarks addressed Section 2(a)’s prohibition of disparaging trademarks, but the FUCT trademark attacked Section 2(a)’s prohibition of “immoral or scandalous matter….”  When Erik Brunetti sought to register the mark FUCT for his clothing brand, the USPTO refused to register the mark, finding that “‘FUCT’ is the past tense of the verb ‘fuck,’ a vulgar word, and is therefore scandalous.”  Brunetti appealed, the Federal Circuit agreed that the mark FUCT is vulgar, but followed the Supreme Court’s Slants decision, holding that “the bar in Section 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.”

Justice Kagan, writing for a 6-3 majority, held that “the Lanham Act’s prohibition of ‘immoral [ ] or scandalous’ trademarks violates the First Amendment.”  The Court noted that historically the USPTO would refuse to register a mark if the mark was “shocking to the sense of truth, decency, or propriety” or “giving offense to the conscience or moral feeling.”  The Court noted and did not disagree with the USPTO’s conclusion that the FUCT mark “flunked the test” and was “a total vulgar.”  However,  Brunetti brought a facial challenge, basically conceding that his mark was vulgar but arguing that the “immoral or scandalous” prohibition violated his First Amendment right to free speech.  The Supreme Court agreed that Section 2(a)’s prohibition of immoral and scandalous marks is unconstitutional.

As I wrote last year, the Court’s decision is likely to spur a race to the bottom, with certain businesses seeking to gain attention and market share via shocking, vulgar and/or scandalous trademarks from the USPTO.

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USPTO Loses Its-Heads I Win, Tails You Lose Rule re: Attorneys’ Fee Awards

Jul 27, 2018

flippingcoin

Last year I wrote about the United States Patent and Trademark Office (USPTO) taking the position that even when it lost, the other side had to pay its attorneys’ fees.

Today, the Federal Circuit Court issued a decision rejecting the USPTO’s position.  In a split decision, the Court found that the “American Rule [that parties only pay their own attorneys] prohibits courts from shifting attorneys’ fees from one party to another absent a ‘specific and explicit’ directive from Congress” and that the language relied on by USPTO “falls short of this stringent standard.”

In Nankwest, Inc. v. Matal,(E.D. Virginia 2016) 162 F. Supp.3d 540, the USPTO rejected a patent application and the applicant appealed the USPTO’s decision to a federal district court. The district court partially affirmed and partially denied the USPTO’s decision.  The USPTO filed a motion to recover its costs from the patent applicant, including its attorneys’ fees, but the trial court refused to award the USPTO its attorneys’ fees.  The USPTO appealed to the Federal Circuit, which reversed and awarded the USPTO its attorney’s fees, finding that even when the USPTO lost, it was entitled to recover its attorneys’ fees.

That decision was widely criticized and the Federal Circuit withdrew its earlier decision and reviewed the issue en banc. On July 27, the Federal Circuit issued its en banc decision that the USPTO cannot recover its attorneys’ fees from applicants that appeal USPTO decisions to the federal courts, even when the applicant loses: “The American Rule is a bedrock principle of this country’s jurisprudence” that “in the United States each litigant pays his own attorney’s fees, win or lose.”  So as it’s often been asserted, in litigation everybody loses except the lawyers.

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It’s Official — Trademarks are “FUCT”

Mar 14, 2018
swears
©2018 WIRING DIAGRAM

 

It was only a matter of time.

THE “GOOD OLD DAYS” BEFORE DISPARAGING, VULGAR AND SCANDALOUS TRADEMARKS

For seventy years the United States Patent and Trademark Office (USPTO) refused to register marks that consisted of “immoral, deceptive, or scandalous matter; or matter which may disparage…..” citing § 2(a) of the Lanham Act.

Last June the Supreme Court struck down section 2(a)’s prohibition of disparaging marks and the other shoe just dropped when the Federal Circuit struck down its prohibition of vulgar, immoral or scandalous marks, allowing someone to register the mark FUCT.

The Slants Crush § 2(a)’s Prohibition of Disparaging Marks 

In 2010, Simon Shiao Tam, lead singer of the Oregon based Asian American rock band, sought to disarm the “toxic language and symbols” associated with the term “slants” by registering the mark “THE SLANTS” for the band.  The USPTO found the term disparaging to people of Asian descent and refused to register the mark under § 2(a).  Tam appealed, the Trademark Trial and Appeal (TTTBA) affirmed, Tam appealed, the Federal District Court initially affirmed the TTTBA’s decision, but later decided on its own to grant en banc review and reversed, finding that § 2(a) violated the First Amendment.  The USPTO still refused to register the mark and the Supreme Court granted certiorari.  In June 2017, the Supreme Court affirmed the Federal Circuit Court, holding that the disparagement clause of § 2(a) “violates the Free Speech Clause of the First Amendment.”

The Slants decision effectively rescued the Washington Redskins’ trademarks.  In 2014, the TTTBA decided to cancel the team’s registered trademarks, finding the term “Redskins” disparaging.  The team appealed to District Court, which affirmed the TTTBA’s decision, the team appealed to the Fourth Circuit and while the matter was pending, the Supreme Court issued its Slants decision.  Early this year the Fourth Circuit  reversed and remanded the district court, effectively ordering that the team’s marks be reinstated.

The Federal Circuit Orders USPTO to Register FUCT Mark, Striking Down Section 2(a)’s Prohibition of Vulgar, Immoral and Scandalous Marks 

In 2011, Erik Brunetti sought to register the mark FUCT for his clothing brand. The USPTO refused to register the mark, finding that “ ‘FUCT’ is the past tense of the verb ‘fuck,’ a vulgar word, and is therefore scandalous.”  Brunetti appealed to the TTAB.  The TTAB noted that Brunetti “used the mark in the context of ‘strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny’” and held the mark was “vulgar and therefore un registerable under section 2(a) of the Lanham Act.”

Brunettti appealed the TTAB decision to the Federal Circuit, which heard the appeal after the Supreme Court issued its Slants decision. In a ruling that rivals a South Park episode for the number of swear words, the Federal Circuit agreed with the TTAB that the mark FUCT is vulgar, but followed the Supreme Court’s Slants decision, holding that “the bar in § 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.”   The Court rejected the USPTO’s argument, similar to its argument in the Slants case, that trademark registration is a government subsidiary, which allows the government some leeway in regulating speech.  The Court noted that “[t]here are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protectable under federal [copyright] law” and reversed the TTAB’s holding that the mark FUCT “is unregisterable under section 2(a).”

What’s Next for Vulgar and Scandalous Trademarks?

We are likely to see a race to the bottom. Much like shock jocks Howard Stern and Don Imus seek to increase market share with outlandish speech, some business owners are likely to see some value in garnering attention via shocking, vulgar and/or scandalous trademarks, and the USPTO will have no choice but to register those marks.

 

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USPTO’s Attorney Fee Awards – Heads I Win, Tails You Lose

Dec 20, 2017
A businessman about to flip a coin
istock.com/DNY59

Under the American Rule “each litigant pays his own expense, win or lose, unless a statute or contract provides otherwise.” But recently the United States Patent and Trademark Office (USPTO) has sought to flip the American Rule by seeking to recover its attorney’s fees even when it loses.

EXPENSES UNDER THE LANHAM ACT AND PATENT ACT

Parties seeking to register a trademark (symbols or words representing a company, product or service) or a patent (exclusive right to use of invention) must register their applications with the USPTO. If the USPTO rejects their applications, the parties can appeal to their local federal district court or the Federal Circuit Court of Appeals. The Lanham Act, which governs trademarks, provides that  “all the expenses of the proceeding shall be paid by the party bringing the case…” 15 U.S.C. 107(b)(3); The Patent Act, which governs patent applications, provides that “[a]ll the expenses of the proceedings shall be paid by the applicant. 35 U.S.C §145.

Historically, the USPTO only sought reimbursement of costs (travel, expert fees, etc.) borne from opposing these trademark or patent appeals, but in 2013, the USPTO began seeking reimbursement of its attorney’s fee as well.

WHEN YOU LOSE, YOU LOSE

In Nankwest, Inc. v. Matal,(E.D. Virginia 2016) 162 F. Supp.3d 540, the applicant challenged the USPTO’s decision rejecting its patent application.  The trial court partially accepted and partially rejected the challenge to the USPTO’s decision. The USPTO sought to recover its attorney’s fees along with its other costs, but the trial court rejected the USPTO’s request, finding that such fees are “authorized only when there is a specific and explicit provision for the allowance of attorney’s fees under the selected statute.” Id. at 543.

The USPTO appealed to the Federal Circuit, which reversed the trial court, Nankwest, Inc. v. Matal  (Fed. Cir. 2017) 860 F.3d. 1352., concluding that “Given the Supreme Court’s construction of ‘expenses,’ the guidance dictionary and treatises provide on the term, and the context in which Congress applied it, we conclude the term ‘expenses’ includes the USPTO’s attorney’s fees under § 145.” Id. at 1358.  Two months later the entire Federal Circuit vacated the panel’s decision and set the matter for en banc review. So stay tuned on the final word from the Federal Circuit.

EVEN WHEN YOU WIN, YOU LOSE

In August of this year, in Booking.com B.V. v. Matal (E.D. Virginia 2017) 2017 WL 3425167 a trademark applicant appealed the USPTO’s refusal to register four trademark applications. The Court granted summary judgement for the applicant for two of the four marks and remanded consideration as to the other two marks back to the USPTO. Despite “losing” the appeal, the USPTO filed a motion for expenses, including its attorney’s fees.  In October, the court granted the USPTO’s attorney’s fees, 2017 WL 4853755. The Court noted that the issue was subject to en banc review by the Federal Circuit, but held that it was bound by Fourth Circuit precedent that “compels the Court to find that [the USPTO’s] attorneys’ fees are recoverable under §1071(b)(3).”

Ultimately it appears the Supreme Court will need to determine whether the statutory term “expenses” includes the USPTO’s attorneys’ fees. Until then, to quote the Grateful Dead, trademark and patent applicants “can’t win for losing.”

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[Acapulco] Gold* Rush for California Cannabis Trademarks January 1, 2018

Aug 16, 2017

[Note: A previous version of this article ran on Wendel Rosen’s cannabis industry blog at www.calcannabislawblog.com on June 8, 2017.]

 

Trademark signs floating in multi-colored leaves
Image is a derivative of “Trippy Multi Pot Leaves” by Weedpad.com/Weedpad_Papers

In June 2017, the California Assembly passed California AB 64, an omnibus bill regarding medical and recreational marijuana, and the bill is currently working its way through the California Senate committee process.

Federal cannabis trademark registration appears unlikely for the foreseeable future. The California cannabis industry and intellectual property lawyers are anticipating a trademark filing frenzy on January 1, 2018, when the California Secretary of State is scheduled to begin accepting trademark applications for cannabis goods and services.

California Currently Follows Federal Lead on Cannabis Trademarks

Under current law, the California Secretary of State will only register marks that are “substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946 (15 U.S.C. §1051 et seq.) as amended.  To that end, the construction given the federal act should be examined as non-binding authority for interpreting and construing this chapter.” Cal. Bus. & Prof. Code §14272.

The United States Patent and Trademark Office (“USPTO”) will only register trademarks relating to commerce “which may lawfully be regulated by Congress.” 15 U.S.C. §1127, and specifically the USPTO requires that “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.”  Trademark Manual of Examining Procedure §907.

AB 64 Untethers California from the USPTO Limitations

The Legislative Analyst’s Digest for AB 64 identifies the conflict between California and Federal law relating to marijuana’s legality, and clarifies AB 64’s intended effect on marijuana trademarks:

(6) Existing law, the Model State Trademark Law, provides for the registration of trademarks and service marks with the Secretary of State and requires the classification of goods and services for those purposes to conform to the classifications adopted by the United States Patent and Trademark Office.

This bill, for purposes of marks for which a certificate of registration is issued on or after January 1, 2018, would, notwithstanding those provisions, authorize the use of specified classifications for marks related to cannabis, including medicinal cannabis goods and services that are lawfully in commerce under state law in the State of California.  (Emphasis added).

Specifically, Section 2(a) of AB 64 adds Section 14235.5 to the Business and Professions Code, which will establish two new cannabis trademark and service mark classifications:

Classification “500 for goods that are cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products;” and

Classification “501 for services related to cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products.”

Countdown to January 1, 2018

In plain English, on January 1, 2018, cannabis businesses will finally be able to register trademarks and service marks for cannabis goods and services, including trademarks for specific cannabis strains, assuming the proposed marks satisfy the other registration requirements (i.e. distinctiveness, lack of likelihood of confusion with existing registered marks, etc.)

Given that California is the most populous state, that the California cannabis market is projected to reach $6.5 billion by 2020, and that it is currently impossible to obtain a nationwide trademark for cannabis products, the California Secretary of State should anticipate receiving a tsunami of cannabis related trademark applications on January 2, 2018 (January 1 is an official State holiday).

Unlike the USPTO, which does not require an applicant to have used a mark in order to file an application (though proof of use is eventually needed for registration), California requires proof of actual use in commerce to file and register a trademark.  Cal. Bus. & Prof. Code 14202(h).  While existing cannabis trademarks already used in California may  already have common law trademark protection, registration with the Secretary of State would confer statewide rights and additional remedies.  Therefore, smart cannabusinesses should begin finding and using marks that will ultimately qualify for well in advance of the January registration date.

 

* A Californian cannabusiness would have zero chance of obtaining Acapulco Gold trademark because it would be geographically misleading and because the strain’s name is already widely used.

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Trademark Newsflash: Supreme Court Strikes Down Disparagement Clause

Jun 19, 2017
The Slants group photo
© 2016 THE SLANTS

Since 1946, when the Lanham Act was enacted, the United States Patent and Trademark Office (USPTO) has denied registration of any trademark that “[c]onsists of … matter which may disparage [any] persons living or dead….” Today, the Supreme Court struck down this “disparagement clause,” finding that it violated the First Amendment.

Oregon Rock Band Blazes New Law

For seventy years, the USPTO relied on the disparagement clause to reject trademarks that were racially or ethnically offensive, but The Slants, a rock band from Portland, Oregon changed the law. The Slants’ lead singer, Simon Tam, sought to trademark the band’s name, seeking to reclaim the term by their “deliberate disarmament of toxic language and symbols.” (See The Slants’ Press Release on Tam Decision.)

The USPTO refused to register “The Slants,” citing the disparagement clause. Tam appealed to the Federal Circuit, which held that Section 2(a) was unconstitutional restraint of free speech under the First Amendment.

The USPTO Strikes Out

The Supreme Court granted certiorari, and today, Justice Alito issued the Court’s opinion holding that the disparagement clause “violates the Free Speech Clause of the First Amendment.”

The Court rejected three USPTO arguments: “(1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new ‘government-program’ doctrine.”

Because “[t]he Federal Government does not dream up these marks, and it does not edit marks submitted for registration” “it is far-fetched to suggest that the content of a registered mark is government speech.”

Next the Court rejected the USPTO’s argument regarding the “constitutionality of governmental programs that subsidize speech expressing a particular viewpoint.” The Court distinguished those cases because they “involved cash subsidies or their equivalent.”

The Court rejected the USPTO’s position that the trademark registration program “creates a limited public forum for private speech” because even in such cases “viewpoint discrimination is forbidden.”

Finally, the Court found that the disparagement clause fails even the relaxed First Amendment scrutiny applied to commercial speech. Citing the government interests of “encouraging racial tolerance” and “protecting the orderly flow of commerce,” the Court found that disparagement clause was not narrowly drawn and was therefore unconstitutional.

But What About the Washington Redskins?

The USPTO had deregistered the Washington Redskins’ trademark based on the disparagement clause. The team had appealed the USPTO’s decision, and the appeal is pending in the 4th Circuit.  Today’s Tam decision will knock the legs out from the USPTO’s decision and should pave the way for the team to reclaim its trademark.

What About Section 2(a)’S Other Prohibitions?

Section 2(a) also precludes registration of any trademark that “consists or comprises immoral, deceptive or scandalous matter….” Presumably, the Court’s Tam decision will also preclude the USPTO from denying registration to marks that are immoral or scandalous. However, one would assume the prohibition on deceptive marks would survive, since it is consistent with other provisions in the Lanham Act precluding “deceptively misdescriptive” marks and marks that are “likely …to deceive.”

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[Acapulco] Gold* Rush for California Cannabis Trademarks Countdown to January 2018

Jun 08, 2017

[This post originally ran on our sister blog the California Cannabis Law Blog on June 8, 2017.]

Trademark signs floating in multi-colored leaves
Image is a derivative of “Trippy Multi Pot Leaves” by Weedpad.com/Weedpad_Papers

Last week the California Assembly passed Assembly Bill 64 (AB 64), an omnibus bill regarding medical and recreational marijuana, sending it to the State Senate for review.

Federal cannabis trademark registration appears unlikely under the current administration. The California cannabis industry and intellectual property lawyers are anticipating a trademark filing frenzy on January 1, 2018, when the California Secretary of State is scheduled to begin accepting trademark applications for cannabis goods and services.

Current Status: California Follows Federal Lead — No Cannabis Trademarks

Currently, the California Secretary of State will only register marks that are “substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946 (15 U.S.C. §1051 et seq.) as amended. To that end, the construction given the federal act should be examined as non-binding authority for interpreting and construing this chapter.” Cal. Bus. & Prof. Code §14272.

The United States Patent and Trademark Office (USPTO) will only register trademarks relating to commerce “which may lawfully be regulated by Congress.” 15 U.S.C. §1127, and specifically the USPTO, requires that “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.” Trademark Manual of Examining Procedure §907.

AB 64 Untethers California from the USPTO Limitations

The Legislative Analyst’s Digest for AB 64 identifies the conflict between California and Federal law relating to marijuana’s legality and clarifies AB 64’s intended effect on marijuana trademarks:

(6) Existing law, the Model State Trademark Law, provides for the registration of trademarks and service marks with the Secretary of State and requires the classification of goods and services for those purposes to conform to the classifications adopted by the United States Patent and Trademark Office.

This bill, for purposes of marks for which a certificate of registration is issued on or after January 1, 2018, would, notwithstanding those provisions, authorize the use of specified classifications for marks related to medical cannabis and nonmedical cannabis goods and services that are lawfully in commerce under state law in the State of California. (Emphasis added).

Specifically, Section 2(a) of AB 64 adds Section 14235.5 to the Business and Professions Code, which will establish two new cannabis trademark and service mark classifications:

Classification “500 for goods that are medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products;” and

Classification “501 for services related to medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products.”

Countdown to January 1, 2018

In plain English, on January 1, 2018, cannabis businesses will finally be able to register trademarks and service marks for cannabis goods and services, including trademarks for specific cannabis strains, assuming the proposed marks satisfy the other registration requirements (i.e., distinctiveness, lack of likelihood of confusion with existing registered marks, etc.).

Given that California is the most populous state, that the California cannabis market is projected to reach $6.5 billion by 2020, and that it is currently impossible to obtain a nationwide trademark for cannabis products, the California Secretary of State may be overwhelmed with cannabis related trademark applications on January 2, 2018 (January 1 is an official  State holiday).

Unlike the USPTO, which does not require an applicant’s prior use of a mark to file an application (though proof of use is eventually needed for registration), California requires proof of actual use in commerce to file and register a trademark. Cal. Bus. & Prof. Code 14202(h). While existing cannabis trademarks already used in California may currently have common law trademark protection, registration with the Secretary of State will confer statewide rights and additional remedies.

Smart cannabusinesses should begin finding and using marks that will ultimately qualify for trademark registration well in advance of the January registration date.

 

* A Californian cannabusiness would have zero chance of obtaining Acapulco Gold trademark because it would be geographically misleading and because the strain is already widely used.

 

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Hear Hard Candy Roar – Sues Over CoverGirl Katy Perry Makeup Line

Nov 30, 2016

Hard Candy, LLC (“Hard Candy”) sued The Procter & Gamble Company (“P&G”), parent company to CoverGirl in the federal district court of Florida for 1) federal trademark infringement, 2) federal unfair competition, 3) common law trademark infringement, and 4) common law unfair competition over the alleged infringing design of Katy Perry’s makeup line with CoverGirl. Hard Candy alleges that P&G copied Hard Candy’s registered design marks in a confusingly similar manner.

 

Although Hard Candy did not specifically state what aspect of the Katy Perry CoverGirl makeup line infringes upon its design marks, it appears that Hard Candy is claiming that the logos/marks (capitalized words in black before and after a black heart shape) are similar in their overall design. See examples below.

 

katy-perry-lipstick

 

 

katy-perry

 

hard-candy

hard-candy-logo

 

Hard Candy cited the following three (3) registered design marks in support of its complaint against P&G:

hard-candy-1
Reg. No. 2,150,397; Class 3: Cosmetics
hard-candy-1
Reg. No. 2,666,793; Class 3: Fragrances
hard-candy
Reg. No. 4,818,389; Class 3: Cosmetics

 

In support of its argument that the Katy Perry CoverGirl makeup line is likely to cause confusion among consumers, Hard Candy alleges that they sell the same or similar products (cosmetics) and offer these products in the same channel of trade at similar price points to similar target customers. Hard Candy may also argue that the black heart shape design is the dominant feature of the marks and similar (if not identical) in both marks.

 

While these factors are strong ammunition against Katy Perry/CoverGirl, it may be difficult for Hard Candy to argue that the overall commercial impressions are similar. For instance, the font and words before and after the black heart shape design look and sound different.  As a self-proclaimed make-up lover, I personally would not be confused by the design marks, especially if the CoverGirl logo is used in connection with the Katy Perry name and the black heart shape design. Both Katy Perry and CoverGirl have established their own brand for years and also have successfully campaigned together to promote this makeup line, which further differentiates themselves from other makeup lines. Nonetheless, it will be interesting as to how each paints the other.

 

 

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Don’t Be a Dope: Protecting Your Marijuana Intellectual Property Despite Federal Prohibitions

Nov 29, 2016

Marijuana is still listed as a Schedule 1 Controlled Substance by the U.S. Drug Enforcement Agency,  but a number of states have legalized it, even for recreational use. What’s a cannabis related entrepreneur to do to protect his or her intellectual property?

marijuana

IPWatchDog just published How Can You Protect Cannabis-based Intellectual Property Under Federal Prohibition, addressing many of the obstacles and opportunities in the marijuana IP arena, including my input on common law trademark rights.

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USPTO Asks Supreme Court to Uphold Its Right to Deny “Offensive” Trademarks

Nov 15, 2016

I previously wrote about a Supreme Court case pitting the United States Patent and Trademark Office (“USPTO”) and Section 2(a) of the Lanham Act against the First Amendment, the Federal Circuit, the Slants and, lurking in the wings, the Washington Redskins.

swearing

The USPTO filed its 92 page opening brief this week, repeating many of the same arguments rejected by the Federal Circuit.

 

Argument 1: Trademark Registration is a Privilege, Not a Right

The USPTO argues that “Section 1052(a) does not prohibit any speech but simply defines the criteria for participation in the government’s voluntary trademark program.” Citing the government’s right not to fund certain types of art or to disallow certain symbols on license plates, the USPTO argues “[t]he First Amendment does not require the federal government to assist those, who wish to sell products or services using racial slurs, religious insults or other disparaging marks.”

Argument 2: Banning Disparaging Marks Does Not Restrict Speech

The USPTO describes the history of the Lanham Act and the common-law rights a trademark owner holds even if he or she lacks federal trademark registration. The USPTO argues that “Section 1052(a) limits the marks that may be federally registered, but it does not restrict the mark holder’s ability to use its mark or to engage in any other speech.”

Argument 3: Section 1052(a)’s Ban On Disparaging Marks is Consistent with Other Constitutional Restrictions

Citing the government’s right not to participate where “government assistance will closely associate the government with offensive terminology,” the USPTO analogized to artists who have been denied federal arts funding, or proponents of specialty state license plates including the confederate flag.  “Registration of THE SLANTS would cause the mark to be published on the Principal Register; would cause a certificate  for the mark to be issued ‘in the name of the United States’ (which may be transmitted to foreign countries); and would entitle respondent to use the ® symbol to convey to the public that the mark has official status.”

Where Did the Washington Redskins Go?

The Washington Redskins asked the Supreme Court to join The Slants in opposing the USPTO, but the Supreme Court refused. The team’s case before the Fourth Circuit is stayed pending the outcome of the USPTO-The Slants decision.

 

What’s Next

The Slants will be filing their brief, along with a likely flood of amicus curiae briefs on either side, and then the matter will be heard by eight justices, unless a ninth supreme court justice is confirmed before oral argument.

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