Registering Offense: The Prohibition of Slurs as Trademarks

Since 1967, Pro-Football has registered six marks that include the term “redskins,” a derogatory racial epithet that refers to Native Americans. The use of disparaging marks dates back to the 19th century when brands commercialized racial stereotypes, such as Aunt Jemima. Today, offensive marks, including those that ridicule race, ethnicity, gender and religion are proliferating prompting the question of what role trademark law plays in protecting the interests of diverse communities. Section 2(a) of the Lanham Act prohibits the registration of marks that consist of matter that may disparage or bring into contempt or disrepute any person, institution, or belief. In this chapter, I review the policy goals and challenges in barring the registration of offensive marks and conclude that trademark law can play an important, albeit limited role in fostering diversity. U.S. trademark law only seeks to regulate the registration and not the use of offensive trademarks. Nevertheless, the symbolic gesture of the federal government cancelling the registration of a mark on the basis that it disparages people is significant and may affect the way society views the mark. Thus the government can perform important signaling for civility without abridging the freedom of speech.https://digitalcommons.wcl.american.edu/facsch_bk_contributions/1184/thumbnail.jp

Brand New World (Parallel Session 1.B. - Trademarks)

By American University Washington College of Law, Texas A&M University School of Law, and University of Utah S.J. Quinney College of Law

Public Policy Limitations on Trademark Subject Matter: A U.S. Perspective

This chapter provides an overview of the public policy limitations on trademark subject matter under U.S. law. This is an area of law that had been fairly stable until recently. The U.S. Supreme Court’s 2017 decision striking down the prohibition on registering disparaging marks and its 2019 decision striking down the prohibition on registering immoral and scandalous marks may prompt a larger reexamination of the policy justifications for denying trademark registration.https://digitalcommons.wcl.american.edu/facsch_bk_contributions/1179/thumbnail.jp

No Trademark, No Problem

Does the Lanham Act permit a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for its use of the same mark in the U.S.? A recent case from the Court of Appeals for the Fourth Circuit addressed this consequential question. In Belmora, LLC.v. Bayer Consumer Care A G, the Court of Appeals surprised the legal community and answered this question in the affirmative, reversing the district court\u27s decision to reject the trademark claim because it was unsupported by a federally protected U.S. trademark.The Belmora decision has received considerable attention. What has thus far escaped much notice by commentators is the treatment of this dispute below by the Trademark Trial and Appeal Board ( TTAB ). There, the TTAB reached a similar result as the Fourth Circuit. The TTAB ordered the cancellation of the U.S. registered mark for a misrepresentation of source, finding that a cancellation petition need not be supported by a protectable mark.This article will evaluate the TTAB\u27s receptivity to claims in cancellation proceedings by parties that have neither used nor registered their marks in the U.S. The TTAB has resolved some interesting cancellation proceedings, some of which have extended trademark protections to parties that do not have a mark protectable in the U.S. This article will consider how these types of cases have fared in the courts and in the TTAB, and why the TTAB has accepted certain legal claims that Article III courts have not. Finally, this article will consider the implications of the TTAB\u27s acceptance of these kinds of claims for jurisdiction in Article III courts

Registering Offense: The Prohibition of Slurs as Trademarks

Since 1967, Pro-Football has registered six marks that include the term “redskins,” a derogatory racial epithet that refers to Native Americans. The use of disparaging marks dates back to the 19th century when brands commercialized racial stereotypes, such as Aunt Jemima. Today, offensive marks, including those that ridicule race, ethnicity, gender and religion are proliferating prompting the question of what role trademark law plays in protecting the interests of diverse communities. Section 2(a) of the Lanham Act prohibits the registration of marks that consist of matter that may disparage or bring into contempt or disrepute any person, institution, or belief. In this chapter, I review the policy goals and challenges in barring the registration of offensive marks and conclude that trademark law can play an important, albeit limited role in fostering diversity. U.S. trademark law only seeks to regulate the registration and not the use of offensive trademarks. Nevertheless, the symbolic gesture of the federal government cancelling the registration of a mark on the basis that it disparages people is significant and may affect the way society views the mark. Thus the government can perform important signaling for civility without abridging the freedom of speech

Imagining the Law: Art

Law’s relations to art--to its creation, its production, and dissemination, its restriction as well as to commercial and contractual agreements about art works—are as multiform and complex as the category of art itself. Acknowledging that there is no discrete body of law that governs art, the author defines art law as “the survey of legal issues raised by art, artist, and the art world” and surveys four central themes: the law as art, the law of art, the law of creativity, and the collision of art and law. Any legal dispute about art usually evokes a plea for special legal rules or approaches, as in the case of Nussenzweig v. diCorcia, 878 N.E.2d 589 (2006). The author points the way toward a study of law in its relationship to creative, cultural practices, particularly to the notion of aesthetic judgment in the domains of art and law. Law typically works to promote and protect, rather than impede, artistic creation on the logic that art is a social good. Questions about art’s role in the creation of culture and the rights of the artist frequently enter the legal domain for their answers. In cases of illegal trade of art treasures, for example, the courts have had to decide whether art constitutes a specific cultural heritage, a broader human achievement, or simply a commodity. Controversies in intellectual property, though they focus on the individual artist, are similarly bound up with creative and economic interests that reveal fundamental inconsistencies between law’s stated mission to encourage the production of art as a common good and law’s so-called creativity threshold, which works to restrict innovation. The author sees in these inconsistencies a collision between art (radically transformative) and law (resistant to change) based on their fundamentally differently cultural functions, and argues that judges apply private ideas about aesthetics instead of openly acknowledging that their judgments are not neutral and nonsubjective.https://digitalcommons.wcl.american.edu/facsch_bk_contributions/1087/thumbnail.jp

Confusing the Similarity of Trademarks Law in Domain Name Disputes

This article anticipates doctrinal disorder in domain name disputes as a result of the new generic top-level domains (gTLDs). In the course of the intense and prolonged debate over the possibility of new gTLDs, no one seems to have focused on the conspicuous fact that domain name disputes incorporating new gTLDs will be markedly different from the first-generation domain name disputes under previous gTLDs. Now second-generation disputes will have the added feature of the domain name having a suffix that will likely be a generic word, geographic term, or trademark. This addition is significant. Rather than disputes over , we will have disputes over . Before these new gTLDs, Uniform Dispute Resolution Procedure (UDRP) panels have routinely ignored the gTLD portion of the domain concluding that the suffix is inconsequential to their determinations of confusing similarity. This approach has already changed. While this change may seem trivial especially in a non-precedential system, the consequence of this change may be profound for trademark owners’ rights on the internet and portend a fundamental shift in how trademarks will be called upon to pick winners and losers in this new land grab