Trademark and Patent Prosecution, Trial and Appeal Procedure and Judicial System in U.S.A

Judicial System in U.S.A

The U.S. Constitution is the supreme law of the land in the United States however each State also has its own Constitution. Under this Federal System the matters and affairs have been specified as Federal or State affairs. And to deal with these two types of affairs there is a two Court and/or Judicial Systems in United States:

1. Federal Court System
2. State Court System

1. Federal Court System:

1. Supreme Court is the highest court of law in U.S.A established under Article III Section 1 of the Constitution  of the United States.
2. Pursuant of Article III Congress has used this power to establish the 13 U.S. Courts of Appeals, the 94 U.S. District Courts, the U.S. Court of Claims, and the U.S. Court of International Trade. U.S. Bankruptcy Courts handle bankruptcy cases. Magistrate Judges handle some District Court matters.
3. The decisions of a U.S. District Court, the U.S. Court of Claims, and/or the U.S. Court of International Trade are appealed to a U.S. Court of Appeals.
4. The U.S. Supreme Court can review a decision of the U.S. Court of Appeals, but the Supreme Court usually is under no obligation to do so. The U.S. Supreme Court is the final arbiter of federal constitutional questions

Federal Court System deals with the following matters:

1. Cases that deal with the constitutionality of a law;
2. Cases involving the laws and treaties of the U.S.;
3. Cases involving ambassadors and public ministers;
4. Disputes between two or more states;
5. Admiralty law;
6. Bankruptcy; and
7. Habeas corpus issues.

Federal Courts in the United States:

i. Supreme Court

The Supreme Court is the highest court in the United States. Article III of the U.S. Constitution created the Supreme Court and authorized Congress to pass laws establishing a system of lower courts. In the federal court system’s present form, 94 district level trial courts and 13 courts of appeals sit below the Supreme Court.

ii. Courts of Appeals

There are 13 appellate courts that sit below the U.S. Supreme Court, and they are called the U.S. Courts of Appeals. The 94 federal judicial districts are organized into 12 regional circuits, each of which has a court of appeals.  The appellate court’s task is to determine whether or not the law was applied correctly in the trial court. Appeals courts consist of three judges and do not use a jury.

A court of appeals hears challenges to district court decisions from courts located within its circuit, as well as appeals from decisions of federal administrative agencies.

In addition, the Court of Appeals for the Federal Circuit has nationwide jurisdiction to hear appeals in specialized cases, such as those involving patent laws, and cases decided by the U.S. Court of International Trade and the U.S. Court of Federal Claims.

iii. Bankruptcy Appellate Panels

Bankruptcy Appellate Panels (BAPs) are 3-judge panels authorized to hear appeals of bankruptcy court decisions. These panels are a unit of the federal courts of appeals, and must be established by that circuit.

Five circuits have established panels: First Circuit, Sixth Circuit, Eighth Circuit, Ninth Circuit, and Tenth Circuit.

iv. District Courts

The U.S.A  94 district or trial courts are called U.S. District Courts. District courts resolve disputes by determining the facts and applying legal principles to decide who is right.

Trial courts include the district judge who tries the case and a jury that decides the case. Magistrate judges assist district judges in preparing cases for trial. They may also conduct trials in misdemeanor cases.

There is at least one district court in each state, and the District of Columbia. Each district includes a U.S. bankruptcy court as a unit of the district court. Four territories of the United States have U.S. district courts that hear federal cases, including bankruptcy cases: Puerto Rico, the Virgin Islands, Guam, and the Northern Mariana Islands.

There are also two special trial courts. The Court of International Trade addresses cases involving international trade and customs laws. The U.S. Court of Federal Claims deals with most claims for money damages against the U.S. government.

v. Bankruptcy Courts

Federal courts have exclusive jurisdiction over bankruptcy cases involving personal, business, or farm bankruptcy. This means a bankruptcy case cannot be filed in state court. Through the bankruptcy process, individuals or businesses that can no longer pay their creditors may either seek a court-supervised liquidation of their assets, or they may reorganize their financial affairs and work out a plan to pay their debts.

vi. Article I Courts

Congress created several Article I, or legislative courts, that do not have full judicial power. Judicial power is the authority to be the final decider in all questions of Constitutional law, all questions of federal law and to hear claims at the core of habeas corpus issues. Article I Courts are:

• U.S. Court of Appeals for Veterans Claims
• U.S. Court of Appeals for the Armed Forces
• U.S. Tax Court

2. State Court System:

The Constitution and laws of each state establish the state courts. The highest court in each State is often known as a Supreme Court. Some states also have an intermediate Court of Appeals. Below these appeals courts are the state trial courts. Some are referred to as Circuit or District Courts.

Basic courts in each State are the trial court. The decisions of trial courts are appealed to the Intermediate Court of Appeals. The appeal against the Intermediate Court of Appeals lies with the highest state court or the supreme court of the State to hear the case.

Only certain cases are eligible for review by the U.S. Supreme Court.

 State Court System deals with the following matters:

1. Most criminal cases, probate (involving wills and estates)
2. Most contract cases, tort cases (personal injuries),
3. Family law (marriages, divorces, adoptions), etc.
4. State courts are the final arbiters of state laws and constitutions.
5. However their interpretation of federal law or the U.S. Constitution may be appealed to the U.S. Supreme Court. The Supreme Court may choose to hear or not to hear such cases.

 Depending on the dispute or crime, some cases end up in the federal courts and some end up in state  courts.

Trademark Prosecution, Trial and Appeal Procedure in U.S.A

1. U.S.A trademark law is Trademark Act of 1946 known as the Lanham Act enacted by Congress on July 5, 1946 codified at 15 U.S.C. §1051 et seq gives the procedure of trademark prosecution, trial and appeal in U.S.A.
2. Trademark is applied with the federal trademark registration office called United States Patent and Trademark Office USPTO. This is a federal office to decide the grant or refusal of the Trademark in U.S.A
3. Trademark Trial and Appeal Board (TTAB) is the next federal authority on trademark matters in U.S.A after USPTO. Any appeal against the decision of the trademark examiner USPTO is filed with Trademark Trial and Appeal Board (TTAB). In addition to appeals against the USPTO decisions TTAB also deals with the Trademark Oppositions.
4. Appeal against the decision of the Trademark Trial and Appeal Board (TTAB) lies with the United States Court of Appeals for the Federal Circuit or the petitioner/appellant has the option to commence de novo action in the District Court. If he choose de novo proceedings then The District Court decision is appealed in the United States Courts of Appeals or Circuit Courts.
5. Appeal against the United States Court of Appeals for the Federal Circuit lies with Supreme Court of the United States.

Patent Prosecution, Trial and Appeal Procedure in U.S.A

1. The Patent application is filed with United States Patent and Trademark Office (USPTO).
2. Any appeal against the decision of the Patent Examiner United States Patent and Trademark Office (USPTO) can be filed with  the Patent Trial and Appeal Board (PTAB). After enactment of Leahy–Smith America Invents Act (AIA) 2012 the Patent Trial and Appeal Board (PTAB) was established on on September 16, 2012 as administrative law authority of the United States Patent and Trademark Office (USPTO) to decide patentability.
3. Appeal against the decisions of the PTAB is filed to the United States Court of Appeals for the Federal Circuit (CAFC) under 35 U.S.C. § 141(a).
4. The decisions of the the United States Court of Appeals for the Federal Circuit are appealed with Supreme Court of the United States which is the ultimate authority to decide patentability.
5. A decision of the Supreme Court can be reversed by the United States Congress by changing the law.

Although we made all efforts for being accurate in this blog however it is highly recommended that readers may themselves check the accuracy of information. 

 The Writer is Managing Partner Intellectual Property Logium

SCOTUS Affirmed the refusal to register disparaging trademarks by USPTO as unlawful and violative of First Amendment

SCOTUS Affirmed the refusal to register disparaging trademarks by USPTO as unlawful and violative of First Amendment . Held that relevant provision under Section 2(a) of the Lanham Act is unconstitutional and violates the Free Speech Clause of the First Amendment.

Supreme Court of the United States in its judgement in Joseph Matal, Interim Director, United States Patent and Trademark Office, Petitioner V. Simon Shiao Tam 582 U. S. 2017 No. 15-1293 dated June 19, 2017 affirmed the decision of the Federal Circuit that the disparagement clause violates the Free Speech Clause of the First Amendment.

Background:

“THE SLANTS” was applied as Trademark by Tam, Simon Shiao for “Entertainment in the nature of live performances by a musical band” seeking registration in International Class 41 on November 14, 2011 with a claim that mark is in use since November 15, 2006.

United States Patent and Trademark Office refused to register the Trademark on January 06, 2012 as not registrable under Trademark Act Section 2(a)

The Trademark Examiner observed in refusal as: “The likely meaning of “THE SLANTS” to be a negative term regarding the shape of the eyes of certain persons of Asian descent. ..This refers to “persons of Asian descent” in a disparaging manner because it is an inherently offensive term that has a long history of being used to deride and mock a physical feature of those individuals. … “Slant Eyes, Almond Eyes, What’s in those Chinese Eyes?”. The term “slants” and the full equivalent “slant-eyes” has long been a derogatory term directed towards those of Asian descent.  The etymology of the term suggests that its use became prevalent during the various wars of the 20th century, starting with World War II and increasing in use in the Vietnam war as a term to deride and mock the citizens of the countries at war with the United States and those of Asian descent in general.”

This refusal was made final by USPTO - United States Patent and Trademark Office and the applicant filed appeal on December 10, 2012.

Before the Board applicant based his case mainly on the grounds that “1) the proposed mark is not inherently disparaging and there are no additional elements to make it so, and 2) there is nothing about the services that make it disparaging 3) First Amendment rights of the applicant”

The appeal was decided by USTTAB - United States Trademark Trial and Appellate Board on September 26, 2013 and USPTO refusal to register under section 2(a) was affirmed by the Board.

It was held by the Board: "The dictionary definitions, reference works and all other evidence unanimously categorize the word “slant,” when meaning a person of Asian descent, as disparaging. Moreover, the record includes evidence of individuals and groups in the Asian community objecting to use of the term in the context of applicant’s band.

On the First Amendment rights of the applicant the Board observed as: “We emphasize that this decision only pertains to applicant’s right to register the term and “it is clear that the PTO’s refusal to register [applicant’s] mark does not affect [his] right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, [applicant’s] First  Amendment rights would not be abridged by the refusal to register [his] mark.”

The applicant appealed before the United States Court of Appeals for the Federal Circuit arguing that the Board erred in finding the mark disparaging and that § 2(a) is unconstitutional. The United States Court of Appeals for the Federal Circuit vide order dated December 22, 2015 In Re Simon Shiao Tam Appeal No.  2014-1203 set aside the refusal and allowed the mark for the registration. The Court of Appeal for the Federal Circuit heard the case en banc and held the provision of the Lanham Act relating to refusal of registration of disparaging trademarks as violative of the First Amendment.

On April 20, 2016 United States Patent and Trademark Office  filed appeal before Supreme Court of the United States and on June 19, 2017 SCOTUS decided In Re Matal, Interim Director, United States Patent and Trademark Office V. Tam and affirmed the United States Court of Appeals for the Federal Circuit judgment.

The most relevant and important excerpts from the judgement In Re Matal, Interim Director, United States Patent and Trademark Office V. Tam are as below:

“We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.

The Lanham Act contains provisions that bar certain trademarks from the principal register. For example, a trademark cannot be registered if it is “merely descriptive or deceptively misdescriptive” of goods, §1052(e)(1), or if it is so similar to an already registered trademark or trade name that it is “likely . . . to cause confusion, or to cause mistake, or to deceive,” §1052(d). At issue in this case is one such provision, which we will call “the disparagement clause.” This provision prohibits the registration of a trademark “which may disparage . . . persons,  institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” §1052(a).2 This clause appeared in the original Lanham Act and has remained the same to this day.

The Government contends (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.

A The First Amendment prohibits Congress and other government entities and actors from “abridging the freedom of speech”; the First Amendment does not say that Congress and other government entities must abridge their own ability to speak freely. And our cases recognize that “the Free Speech Clause . . . does not regulate government speech.”

The Government’s own speech . . . is exempt from First Amendment scrutiny... The First Amendment forbids the government to regulate speech in ways that favor some viewpoints or ideas at the expense of others …..but imposing a requirement of viewpoint-neutrality on government speech would be paralyzing. When a government entity embarks on a course of action, it necessarily takes a particular viewpoint and rejects others. The Free Speech Clause does not re- quire government to maintain viewpoint neutrality when its officers and employees speak about that venture.

Here is a simple example. During the Second World War, the Federal Government produced and distributed millions of posters to promote the war effort. There were posters urging enlistment, the purchase of war bonds, and the conservation of scarce resources.  These posters expressed a viewpoint, but the First Amendment did not demand that the Government balance the message of these posters by producing and distributing posters encouraging Americans to refrain from engaging in these activities.

At issue here is the content of trademarks that are registered by the PTO, an arm of the Federal Government. The Federal Government does not dream up these marks, and it does not edit marks submitted for registration.Except as required by the statute involved here…an examiner may not reject a mark based on the viewpoint that it appears to express. Thus, unless that section is thought to apply, an examiner does not inquire whether any viewpoint conveyed by a mark is consistent with Government policy or whether any such viewpoint is consistent with that expressed by other marks already on the principal register. Instead, if the mark meets the Lanham Act’s viewpoint-neutral requirements, registration is mandatory.  (requiring that“[n]o trademark . . . shall be refused registration on the principal register on account of its nature unless” it falls within an enumerated statutory exception). And if an examiner finds that a mark is eligible for placement on the principal register, that decision is not reviewed by any higher official unless the registration is challenged. See §§1062(a), 1071; 37 CFR §41.31(a) (2016). Moreover, once a mark is registered, the PTO is not authorized to remove it from the register unless a party moves for cancellation, the registration expires, or the Federal Trade Commission initiates proceedings based on certain grounds.

In light of all this, it is far-fetched to suggest that the content of a registered mark is government speech…..For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to “make.believe” (Sony),10 “Think different” (Apple),11 “Just do it” (Nike),12 or “Have it your way” (Burger King)? Was the Government warning about a coming disaster when it registered the mark “End Time Ministries” ..The PTO has made it clear that registration does not constitute approval of a mark. …None of our government speech cases even remotely supports the idea that registered trademarks are government speech....Trademarks share none of these characteristics. Trademarks have not traditionally been used to convey a Government message. ...In sum, the federal registration of trademarks is vastly different from the beef ads in Johanns, the monuments in Summum, and even the specialty license plates in Walker. Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine.For if the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.

Perhaps the most worrisome implication of the Government’s argument concerns the system of copyright registration. If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?

The Government attempts to distinguish copyright on the ground that it is “‘the engine of free expression….but as this case illustrates, trademarks often have an expressive content. Companies spend huge amounts to create and publicize trademarks that convey a message. It is true that the necessary brevity of trademarks limits what they can say. But powerful messages can sometimes be conveyed in just a few words.

Trademarks are private, not government, speech.....We have said time and again that “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Street v.New York, 394 U. S. 576, 592 (1969). See also Texas v. Johnson, 491 U. S. 397, 414 (1989) (“If there is a bedrock principle underlying the First Amendment, it is that thegovernment may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable”); Hustler Magazine, Inc. v. Falwell, 485 U. S. 46, 55–56 (1988); Coates v. Cincinnati, 402 U. S. 611, 615 (1971); Bachellar v. Maryland, 397 U. S. 564, 567 (1970); Tinker v. Des Moines Independent Community School Dist., 393 U. S. 503, 509–514 (1969); Cox v. Louisiana, 379 U.S. 536, 551 (1965); Edwards v. South Carolina, 372 U. S. 229, 237–238 (1963); Terminiello v. Chicago, 337 U. S. 1, 4–5 (1949); Cantwell v. Connecticut, 310 U. S. 296, 311 (1940); Schneider v. State (Town of Irvington), 308 U. S. 147, 161 (1939); De Jonge v. Oregon, 299 U. S. 353, 365 (1937).

For this reason, the disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted.

We must confront a dispute between the parties on the question whether trademarks are commercial speech and are thus subject to the relaxed scrutiny outlined in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N. Y., 447 U. S. 557 (1980). The Government and amici supporting its position argue that all

A simple answer to this argument is that the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.

The clause is far too broad in other ways as well. The clause protects every person as well as every institution. Is it conceivable that commerce would be disrupted by a trademark saying: “James Buchanan was a disastrous president” or “Slavery is an evil institution”?

There is also a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense. The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility,” free speech would be endangered.

For these reasons, we hold that the disparagement clause violates the Free Speech Clause of the First Amendment. The judgment of the Federal Circuit is affirmed."

Writer is Managing Partner Intellectual Property Logium

False Online Review by the Client against the Lawyer is Libel

IP Logium Blog

District Court of Appeal of The State Of Florida Fourth District, on January 6,  while deciding the appeal No. 4d14-3231, titled  Copia Blake And Peter Birzon, Appellants, V. Ann-Marie Giustibelli, P.A.,  And Ann-Marie Giustibelli, Individually,  Appellees , affirmed and upheld, with a remarkable opinion, the award of punitive damages of $350,000 awarded by the trial court, the Circuit Court for the Seventeenth Judicial Circuit, to the Appellee Ann-Marie Giustibelli

Facts:

Attorney Giustibelli represented her client Copia Blake against her husband Peter Birzon in a dissolution of marriage proceeding . This Attorney Client relationship between Giustibelli and her client Blake was broken  after some time and after this breakdown  the Client Blake and oddly, Birzon (her husband) as well, took to the internet to post defamatory reviews of Giustibelli.

On this act of her client Blake  the Attorney Giustibelli brought a suit, pleading a count for libel. She also brought counts for breach of contract and for attorney’s fees, alleging that Blake still owed her money related to the divorce representation.

As mentioned in this judgment Blake’s and Birzon’s posted internet reviews contained the following statements:

This lawyer represented me in my divorce. She was combative and explosive and took my divorce to a level of anger which caused major suffering of my minor children. She insisted I was an emotionally abused wife who couldn’t make rational decisions which caused my case to drag on in the system for a year and a half so her FEES would continue to multiply!! She misrepresented her fees with regards to the contract I initially signed. The contract she submitted to the courts for her fees were 4 times her original quote and pages of the original had been exchanged to support her claims, only the signature page was the same. Shame on me that I did not have an original copy, but like an idiot . . . I trusted my lawyer. Don’t mistake sincerity for honesty because I assure you, that in this attorney’s case, they are NOT the same thing. She absolutely perpetuates the horrible image of attorneys who are only out for the money and themselves. Although I know this isn’t the case and there are some very good honest lawyers out there, Mrs. Giustibelli is simply not one of the “good ones[.]” Horrible horrible experience. Use anyone else, it would have to be a better result.

**********

No integrity. Will say one thing and do another. Her fees outweigh the truth. Altered her charges to 4 times the original quote with no explanation. Do not use her. Don’t mistake sincerity for honesty. In her case, they’re not at all the same. Will literally lie to your face if it means more money for her. Get someone else. . . . Anyone else would do a superior effort for you.

**********

I accepted an initial VERY fair offer from my ex. Mrs. Giustibelli convinced me to “crush” him and that I could have permanent etc. Spent over a year (and 4 times her original estimate) to arrive at the same place we started at. Caused unnecessary chaos and fear with my kids, convinced me that my ex cheated (which he didn’t), that he was hiding money (which he wasn’t), and was mad at ME when I realized her fee circus had gone on long enough and finally said “stop[.]” Altered her fee structures, actually replaced original documents with others to support her charges and generally gave the kind of poor service you only hear about. I’m not a disgruntled ex-wife. I’m just the foolish person who believes that a person’s word should be backed by integrity. Not even remotely true in this case. I’ve had 2 prior attorneys and never ever have I seen ego and monies be so blatantly out of control.

Both Blake and Birzon admitted to posting the reviews on various internet sites. The evidence showed that Blake had agreed to pay her attorney the amount reflected on the written retainer agreement—$300 an hour. Blake and Birzon both admitted at trial that Giustibelli had not charged Blake four times more than what was quoted in the agreement.

Circuit Court for the Seventeenth Judicial Circuit, Broward County heard and decided this Case No. 12-22244 (12).  After a non-jury trial, the trial court awarded the appellee, attorney Ann-Marie Giustibelli, damages in this libel and breach of contract case. The court entered judgment in favor of Giustibelli and awarded punitive damages of $350,000.

At this the Copia Blake and Peter Birzon filed an appeal before the District Court Of Appeal Of The State Of Florida Fourth District in which Copia Blake, Kansas City, MO, and Peter Birzon, Weston, represented  pro se and Ann-Marie Giustibelli, Plantation, for Appellees.

After briefs were filed  Birzon filed a notice that he and the Appellee had settled the matter and that he was withdrawing his appeal. Blake did not join in the notice. The court observed about this as:

“ We note that even if she had, we would not have dismissed the appeal.”

The appellate court was very well aware of and understand the importance of this issue in the legal profession. The court observed:

“ One issue Blake and Birzon raised involves the application of free speech protections to reviews of professional services posted on the internet. We affirm in all respects, but this issue merits discussion as it presents a scenario that will likely recur, and the public will benefit from an opinion on the matter.”

Few quotes from this judgment:

“Both Blake and Birzon admitted to posting the reviews on various internet sites. The evidence showed that Blake had agreed to pay her attorney the amount reflected on the written retainer agreement—$300 an hour. Blake and Birzon both admitted at trial that Giustibelli had not charged Blake four times more than what was quoted in the agreement. The court entered judgment in favor of Giustibelli and awarded punitive damages of $350,000.”

“On appeal, Blake and Birzon argue that their internet reviews constituted statements of opinion and thus were protected by the First Amendment and not actionable as defamation. We disagree. “[A]n action for libel will lie for a ‘false and unprivileged publication by letter, or otherwise, which exposes a person to distrust, hatred, contempt, ridicule or obloquy or which causes such person to be avoided, or which has a tendency to injure such person in [their] office, occupation, business or employment.”

“Here, all the reviews contained allegations that Giustibelli lied to Blake regarding the attorney’s fee. Two of the reviews contained the allegation that Giustibelli falsified a contract. These are factual allegations, and the evidence showed they were false”

Note:

Statutory laws of Florida is currently codified in 48 titles. Chapter 836 of Title XLVI deals with Defamation; Libel; Threatening Letters And Similar Offenses. This chapter defines Libel as:

“836.02 Must give name of the party written about.—

(1) No person shall print, write, publish, circulate or distribute within this state any newspaper, magazine, periodical, pamphlet, or other publication of any character, either written or printed, wherein the alleged immoral acts of any person are stated or pretended to be stated, or wherein it is intimated that any person has been guilty of any immorality, unless such written or printed publication shall in such article publish in full the true name of the person intended to be charged with the commission of such acts of immorality.”

Link:

The full judgement Copia Blake and Peter Birzon v.AnnMarie Giustibelli, P.A., and AnnMarie Giustibelli,individually may be found at the below link:

http://www.4dca.org/opinions/Jan.%202016/01-06-16/4D14-3231.op.pdf

The writer is the Managing Partner Intellectual property Logium.

www.iplogium.com

Bar on the Registration of a Disparaging Trademark under Lanham Act and the First Amendment

IP Logium Blog

Bar on the Registration of a Disparaging Trademark under Lanham Act and the First Amendment

Disparaging Mark

A disparaging mark is a mark which “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.”

Geller, 751 F.3d at 1358. To determine if a mark is disparaging under § 2(a), a trademark examiner of the PTO considers:

(1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and

(2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

 Disparaging Marks and United States Trademark Law

The Lanham Act (United States Trademark Law) was enacted in 1946 to provide a national system for registering and protecting trademarks used in interstate and foreign commerce. The Lanham Act makes registration very significant by conferring important legal rights and benefits on trademark owners who register their marks. 

Section 2(a) of the Lanham Act envisages few restrictions on the registration of certain kinds of trademarks. It bars the registration of scandalous, immoral, or disparaging marks. 15 U.S.C. § 1052(a).

The bar on registration of a trademark under Lanham Act extends to the Trademark 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 or disrepute.”

Section 2(a) contains proscriptions against trademarks based on expressive nature of the content, such as the ban on marks that may disparage persons or are scandalous or immoral.  A disparaging mark is a mark which “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.”

The relevant provision of the Lanham Act 1946 is as below:

§ 2 (15 U.S.C. § 1052) Trademarks registerable on the principal register; concurrent registration

“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, when 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.”

First Amendment United States Constitution

The supreme Law of the United States of America is the United States Constitution  which came into force in 1789. The US constitution has been amended twenty-seven times. The First Amendment was adopted on December 15, 1791. The First Amendment guarantees the freedom of religion, expression, assembly, and the right to petition. The freedom of expression is guaranteed by the First Amendment prohibits Congress from restricting the press or the rights of individuals to speak freely. 

Below is the text of the First Amendment:

“Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the government for a redress of grievances.”

Is § 2(a) Lanham Act 1946 Unconstitutional and Conflicting to the First Amendment?

Our opinion on the issue is as below:

“Disparagement provision of § 2(a) Lanham Act 1946 bar on registration of disparaging marks in 15 U.S.C. § 1052(a) is certainly violative of the First Amendment, therefore, the disparagement provision of § 2(a) is unconstitutional because it violates the First Amendment. The Government can legislate on "Intent of Speech/Expression" but "Speech/Expression" must be unfettered in view of First Amendment. First Amendment does not allow the Government to declare a kind of words or set of expressions as disparaging. The usage of certain words may be disparaging but Government is not allowed to stop its usage/speech and expression under the law according to First Amendment.”

Recent decision of the United States Court of Appeals for the Federal Circuit dated December 22, 2015 In Re Simon Shiao Tam Appeal Number:  2014-1203 declaring §2(a) Lanham Act Unconstitutional and against the First Amendment.

Prior to this decision the most important decision of the United States Court of Appeals for the Federal Circuit on this issue was In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981) wherein the court held that the refusal to register a mark under § 2(a) does not bar the applicant from using the mark, and therefore does not implicate the First Amendment.

The entirety of the McGinley analysis was: “With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.”

In subsequent cases, panels of United States Court of Appeals for the Federal Circuit relied on the holding in McGinley See In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012); In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003); In re Mavety Media Grp., 33 F.3d 1367, 1374 (Fed.Cir. 1994). For more than 30 years this interpretation of law prevailed in the United States.

However this judgment In Re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981) and other precedents have been overruled by the United States Court of Appeals for the Federal Circuit vide order dated December 22, 2015 In Re Simon Shiao Tam Appeal No.  2014-1203. The most important abstracts and portions of this most remarkable judgment of the Court of Appeal for the Federal Circuit dated December 22, 2015 In Re Simon Shiao Tam, which has been decided  after sua sponte ordered rehearing en banc, are as below:

Opinion for the court was filed by Circuit Judge Moore, in which Chief Judge Prost and Circuit Judges Newman, O’Malley, Wallach, Taranto, Chen, Hughes, and Stoll joined.

Opinion concurring in part and dissenting in part filed by Circuit Judge Dyk, in which Circuit Judges Louries and Reyna join with respect to parts I, II, III, and IV.

On November 14, 2011 Mr. Tam filed application to register the mark THE SLANTS for “Entertainment in the nature of live performances by a musical band” The examiner refused to register mark, finding it likely disparaging to “persons of Asian descent” under § 2(a).

The Board affirmed the examiner’s refusal to register the mark. At this the Applicant Mr. Tam appealed, arguing that the Board erred in finding the mark disparaging and that § 2(a) is unconstitutional. On appeal The United States Court of Appeals for the Federal Circuit affirmed the Board determination that the mark is disparaging however the Panel sua sponte ordered rehearing en banc on the issue of that § 2(a) is unconstitutional and asked the parties to file briefs on the issue: Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?

After completion of its hearing the decision of the court held § 2(a)  Lanham Act as unconstitutional. The most relevant and important parts of the decision are quoted as below:

“Federal trademark registration brings with it valuable substantive and procedural rights unavailable in the absence of registration. These benefits are denied to anyone whose trademark expresses a message that the government finds disparages any group, Mr. Tam included. The loss of these rights, standing alone, is enough for us to conclude that § 2(a) has a chilling effect on speech. Denial of federal trademark registration on the basis of the government’s disapproval of the message conveyed by certain trademarks violates the guarantees of the First Amendment.”

“The government admits that any message-based regulation of copyrights would be subject to the First Amendment. We agree, and extend the government’s reasoning to § 2(a)’s message-based regulation of trademarks. These registration programs are prototypical examples of regulatory regimes. The government may not place unconstitutional conditions on trademark registration. We reject the government’s argument that it is free to restrict constitutional rights within the confines of its trademark registration program.”

“We conclude that the government has not presented us with a substantial government interest justifying the § 2(a) bar on disparaging marks. All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive. This is not a legitimate interest. With no substantial government interests, the disparagement provision of § 2(a) cannot satisfy the Central Hudson test. We hold the disparagement provision of § 2(a) unconstitutional under the First Amendment”

“CONCLUSION: Although we find the disparagement provision of § 2(a) unconstitutional, nothing we say should be viewed as an endorsement of the mark at issue. We recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities. Even Mr. Tam, who seeks to reappropriate the term “slants,” may offend members of his community with his use of the mark. See Br. of Amici Curiae Nat’l Asian Pacific Am. Bar Ass’n 3, 5. But much the same can be (and has been) said of many decisions upholding First Amendment protection of speech that is hurtful or worse. Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech “inflict[s] great pain,” our Constitution protects it “to ensure that we do not stifle public debate.” Snyder, 562 U.S. at 461. The First Amendment protects Mr. Tam’s speech, and the speech of other trademark applicants.”

“We hold that the disparagement provision of § 2(a) is unconstitutional because it violates the First Amendment. We vacate the Board’s holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.”

This judgment has changed the scenario of Disparaging Marks in United States and the next important question is how the Future of such marks shall be decided by the Supreme Court.

The writer is Managing Partner Intellectual Property Logium

www.iplogium.com