In the wake of the Supreme Court’s Matal v. Tam decision, which struck the disparagement clause from Section 2(a) of the U.S. Trademark Act on First Amendment grounds, applicants filed to register trademarks that previously would have been refused under the provision.

Section 2(a)’s scandalous/immoral bar is on the verge of a similar fate – the Court of Appeals for the Federal Circuit (CAFC) held the prohibition to be an unconstitutional restriction on free speech. See In re Brunetti, Case No. 2015-1109 (Fed. Cir. Dec. 15, 2017). The U.S. Patent & Trademark Office (USPTO) has not announced whether it will seek judicial review of the Brunetti decision or begin approving scandalous marks for publication.

On June 19, 2017, the day the Supreme Court issued its opinion in Tam, an entity brashly named “Snowflake Enterprises, LLC” filed an application to register the term NIGGA for various clothing items. Five days later, it filed to register this swastika symbol: for “Fabrics that may or may not have printed patterns and designs thereon for use in textile applications, namely, the manufacture of apparel, upholstery, signage, flags, banners and wallpaper.” Two more trademark applications for NIGGA followed, covering (1) beer and various non-alcoholic beverages and (2) wine, vodka and other spirits and alcoholic beverages.

As of the writing of this post, the USPTO had not examined any of the Snowflake Enterprises applications. The applications were all filed over 7 months ago and should have been reviewed by now. Applications at the USPTO typically take 3-5 months from filing to examination. Current USPTO guidelines dictate that applications containing scandalous matter be reviewed and placed in suspension pending a final determination in Brunetti.

The word NIGGA has previously been found to be both disparaging and scandalous or immoral. Back in 2006, Damon Wayans’ trademark application for the word was refused on both grounds. A trademark application for the Nazi party’s logo would be considered scandalous matter. Once the USPTO finally takes action on the Snowflake filings, even if the scandalous bar is ultimately struck down, there may be another hurdle to approval. Symbols or words that convey a commonly used message and lack any additional distinctive matter can be refused on the ground that they fail to function as trademarks. See TMEP §1202.

The general rule is the USPTO will not approve a mark for registration unless it functions as a trademark. See 15 U.S.C. §§1051, 1052, 1053, 1127. A “trademark,” by definition, must distinguish goods or services from others … otherwise, it isn’t functioning as a trademark. As shown in the above extract, Section 2 of the U.S. Trademark Act presupposes the existence of a mark that “may be distinguished from the goods of others …” See also In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) (“Registration presupposes the existence of a trademark to be registered.”). “The Trademark Act is not an act to register mere words, but rather to register trademarks. Before there can be registration, there must be a trademark …” In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976).

I have previously written about failure to function refusals in the context of trending rallying cries and popular catchphrases. As I put it then: “Trademarks are source identifiers. They point to a single source for certain goods and/or services. Common and popular rallying cries fail to function as trademarks because the public does not identify them with a single source. Instead, the public views them as conveying an informational message about the cause or issue being addressed.”

The same principle applies to universal symbols. The Trademark Manual of Examining Procedure (TMEP) offers the following examples:

• the recycling symbol  which “typically designates materials that are recyclable or recycled, but may also indicate that goods or services involve recycling or are otherwise environmentally friendly” and
• the prohibition symbol  “which usually appears superimposed over another image or wording, is a visual representation of “no,” “not,” or “prohibited.”” See TMEP §1202.17.

In a case involving three trademark applications for this rendering of the peace symbol:, the Trademark Trial and Appeal Board (TTAB) cited the TMEP to explain how it analyzes universal symbols as trademarks:

The determination as to whether a universal symbol in a mark functions as a source indicator involves considering the significance of the symbol, the nature of the symbol’s use in the relevant marketplace, and the impression created when the mark is used in connection with the identified goods or services…Weighing these considerations in view of the available facts and evidence may lead the examining attorney to the conclusion that the mark does not serve as a source indicator, but instead fails to function because it (1) imparts information about the goods or services, (2) conveys an informational message (though not necessarily about the goods or services themselves), or (3) serves only as ornamentation on the goods or services.

See In re Craigslist, Inc., (TTAB May 31, 2013), citing TMEP §1202.17(c)(i).

In In re Craigslist, the TTAB affirmed an Examining Attorney’s refusal of registration for:on the ground that it would be recognized by consumers as a universal symbol of peace and not one that could be appropriated by a single registrant. Importantly, the Board noted that if the mark had contained additional distinctive matter the outcome likely would have been different. However, the mere addition of a color to an otherwise standard peace symbol did not convert what was an unregistable mark into a source indicator. The TTAB held: “Universal symbols that convey an informational message fail to function as source indicators because their significance is based on their underlying message rather than serving as source identifiers.”

Peace demands a higher footing than hate but when it comes to symbols for federal trademark registration they deserve equal treatment.

The issues raised by Snowflake’s application for a swastika symbol are analogous to Craigslist’s peace symbol filings despite the fact that they convey contrary messages. The marks in each application are standard renderings of generally understood symbols that appear on their own without any distinctive matter.

The critical inquiry in determining whether a designation functions as a trademark is how it would be perceived by the relevant public. D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710 (TTAB 2016); In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010). A USPTO Examining Attorney should have no trouble creating an evidentiary record to support a failure to function refusal on the ground that U.S. consumers would perceive Snowflake’s swastika mark as a universal symbol of hate rather than identify it with Snowflake. Recent events, such as the widely publicized rallies in Charlottesville, where white supremacists displayed the swastika symbol in support of racial supremacy, demonstrate that U.S. consumers would associate a swastika with hate, racism and political extremism.

Any argument that the swastika does not always carry a negative connotation or that the applicant is not a racist will fail. The applicant’s intent is irrelevant. What matters is how U.S. consumers would perceive the symbol. The website Symbols.com explains the history of the swastika, noting its origin as a religious symbol in India and how it turned from a sign of good luck into a symbol of evil:

In modern times, following a brief surge of popularity as a good luck symbol in Western culture, a swastika was adopted as a symbol of the Nazi Party of Germany in 1920, who used the swastika as a symbol of the Aryan race. After Adolf Hitler came to power in 1933, a right-facing 45° rotated swastika was incorporated into the Nazi party flag, which was made the state flag of Germany during Nazism. Hence, the swastika has become strongly associated with Nazism and related concepts such as antisemitism, hate, violence, death, and murder in many countries, and is now largely stigmatized there due to the changed connotations of the symbol. Notably, it has been outlawed in Germany and other countries if used as a symbol of Nazism in certain instances. Many modern political extremists and Neo-Nazi groups such as the Russian National Unity use stylized swastikas or similar symbols.

Countless articles online describe how the swastika acquired its current prevailing meaning in Western culture:

• “Learn the History of the Swastika”
• “How the world loved the swastika – until Hitler stole it”
• “How Nazis twisted the swastika, a symbol of the Buddha, into an emblem of hate”
• “The Man Who Brought the Swastika to Germany, and How the Nazis Stole It”

It also should not matter that the Snowflake applications were filed based on an “intent to use.” TMEP §1202.17(c)(ii)(A) states that a USPTO Examining Attorney may issue a failure-to-function refusal for applications based on intent to use “if information in the application record or other available evidence is dispositive of the failure of the relevant matter to function as a mark.” Certain words and symbols, like those in the Snowflake applications, are so widely used that the context of their actual use won’t change consumer perception. Nothing suggests that Snowflake intends to use the swastika in a context other than as a reference to Nazism. The swastika rendering in the application is tilted in a manner that aligns it with Nazism rather than Buddhism. There is no doubt the USPTO can and should refuse Snowflake’s application for a swastika symbol on the ground that it fails to function as a trademark because it is a universal symbol of hate.

What is less clear is how the USPTO will handle Snowflake’s NIGGA applications.

Arguably, the reasoning for refusal of the swastika symbol on the basis that it imparts a universal message of hate and racism also applies to the word NIGGA. The same could be true of any trademark application that consists solely of common vulgar or derogatory wording with no distinguishable element. As the TTAB often states in failure to function cases, the more ubiquitous a term is in everyday speech the less likely the public will identify it with a single source and the less likely the term will be recognized by purchasers as a trademark. See In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1460 (TTAB 1998); In re Manco, 24 USPQ2d 1938, 1942 (TTAB 1992); see also Reed v. Amoco Oil Co., 611 F. Supp. 9, 225 USPQ 876, 877 (M.D. Tenn. 1984); TMEP §1202.04.

In rejecting a trademark application for the phrase “ONCE A MARINE, ALWAYS A MARINE,” the TTAB explained:

Because consumers would be accustomed to seeing this phrase displayed on clothing items from many different sources, they could not view the slogan as a trademark indicating source of the clothing only in applicant. It is clear that clothing imprinted with this slogan will be purchased by consumers for the message it conveys. Applicant is not entitled to appropriate the slogan to itself and thereby attempt to prevent competitors from using it to promote the sale of their own goods. It has been noted that “as a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights” in common phrases or slogans. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229-31 (TTAB 2010) citing McCarthy on Trademarks and Unfair Competition § 7:23 (4th ed. 2010). Emphasis added.

TMEP §1202.04(b) further notes:

Messages that merely convey ordinary, familiar concepts or sentiments that are used by a variety of sources in the marketplace are considered commonplace and will be understood as conveying the ordinary concept or sentiment normally associated with them, rather than serving any source-indicating function … Messages that are used by a variety of sources to convey social, political, religious, or similar sentiments or ideas are likely to be perceived as an expression of support for, or affiliation or affinity with, the ideas embodied in the message rather than as a mark that indicates a single source of the goods or services. Furthermore, goods that feature such messages are typically purchased because of the expressive sentiment conveyed by the message and not because they serve as a means for the consumer to identify and distinguish the applicant’s goods or services from those of others.

                                 

The USPTO recently rejected applications for the following marks on these grounds:

• COVFEFE — “commonly used to refer to a term written by the President of the United States in a tweet”
• RESIST — “the public would not perceive the slogan as source-identifying word, name, symbol or device that identifies applicant as the source of the goods but rather as an expression of support for anti-violence advocates and civil rights groups”
• GRAB THEM BY THE PUSSY — “commonly used to refer to Donald Trump and conveys the message taking what one wants”
• NEVERTHELESS, SHE PERSISTED — “not only a rallying cry but rather a common phrase used on merchandise associated with protest events rather than as a source indicator in applicant alone”
• SO CALLED PRESIDENT — “commonly used to express a political opinion about the current President and his policies”
• NOT MY PRESIDENT — “conveys the message of being against the presidency of Donald Trump”
• IT’S MUELLER TIME — “commonly used message that conveys that special counsel Robert Mueller will bring to justice those who assisted with Russian efforts to meddle in the 2016 presidential election”

In an opinion piece in The Washington Post, a law professor posits:
That’s not necessarily true. I don’t think any of the phrases referenced in the above quote, and others in the article, function as trademarks. They are merely descriptive phrases that consumers will interpret as conveying an informational message and do not indicate a source of goods or services. Any filings for these phrases should be rejected on that basis.

Nevertheless, there are at least some preliminary indications that USPTO Examining Attorneys will not reject disparaging/scandalous words or phrases on failure to function grounds. In early January 2018, the USPTO approved a trademark application for the word KIKE, a slur for a Jewish person, for clothing and music services.

After the Tam ruling, Erik Brunetti, whose successful appeal at the CAFC over refusal of the term FUCT may open the door to registration of scandalous marks, also filed to register the standard dirty word FUCK for clothing. The slight difference between the terms FUCT and FUCK perhaps demonstrates the thin line between a word that could be deemed distinctive — and thus registrable — and one that is so widely used it may not serve as a source indicator. It also demonstrates how not having a disparaging/scandalous prohibition leads to less creative and less distinguishable branding choices. Here is an example of a mark that does appear to have a distinctive element due to the double entendre based on its use:

The irony of the outcome in Tam is that while it struck down a bar to registration on free speech grounds its impact may have a chilling effect on free speech. Once federal trademark registrants own exclusive rights over common offensive terms they can enforce those rights by trying to stop third parties from using the same or confusingly similar wording. Whether the merits are on their side or not is beside the point. Unrepresented individuals and businesses, and even established online service providers, often overreact to overreaching trademark claims because they don’t know how to weigh a federal trademark filing or don’t have the resources to hire an attorney who can.

Plus, a registration covering a widely used word can block any later filings comprised of that word or act as a deterrent against future uses for related goods or services. This is how trademark registration is supposed to work … assuming there’s a distinguishing mark in the first place.

In Tam, Justice Samuel Alito wrote:

Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.” United States v. Schwimmer, 279 U. S. 644, 655 (1929) (Holmes, J., dissenting).

There is no hate speech exception to the First Amendment but hateful words and symbols still have to function as trademarks to be eligible for registration. The free speech victories in Tam and Brunetti do not stand for the proposition that all disparaging or scandalous expressions get a free pass to registration.

 

Follow @proofofuse © Roberto Ledesma