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Court says colorful language not a bar to trademark registration

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

A couple of federal court decisions - one of them from the highest court in the land - may well be prompting some to wonder where the line is now when it comes to what can and cannot be federally registered as a trademark.

First, there was the decision last June when the U.S. Supreme Court ruled in favor of an Asian-American musician who had hit a roadblock from the U.S. Patent and Trademark Office when he sought to register the trademark of his group's name, The Slants. Then, last month, a three-judge panel at the Federal Circuit in Washington found in favor of a clothing retailer struggling to register the trademark his brand, Fuct.

In both cases, the majorities on the courts ruled that while the names could certainly be deemed offensive by some, the action by the USPTO, taken under the aegis of the 1946 Lanham Act, offended the principle of free speech found in the First Amendment of the Constitution. The courts declared unconstitutional the provisions of the law that the government used to reject the trademarks.

It must be noted that the rulings do not throw out the act completely. The Supreme Court decision only says government cannot bar the registration on grounds that a word might be considered disparaging of an identifiable group of persons, in this case Asian Americans.

In the second case, government hoped to avoid the whole question of First Amendment violation by arguing that the process of registration amounted to "government speech" and was therefore subject to restriction. But the Federal Circuit said that accepting that argument would mean that any information subject to registration, from land, to vehicles and even marriages could become subject to some form of censorship.

Do these decisions mean, as one headline says, the floodgates for immoral and scandalous trademarks are now open? Unlikely since offensive words generally make for terrible brands.  But there are exceptions, and there will be efforts to test the waters where there is commercial potential for off-color marks. Navigating those murky waters will be easier with help of skilled legal counsel.

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