Posts Tagged: "first amendment"

Christopher Gordon, under the pseudonym “Randall,” released the Honey Badger movie in 2011 and the 3:20-long video has been viewed more than 89 million times. Gordon filed trademark applications to cover the use of the video’s well-known phrase Honey Badger Don’t Care in various classes including audio books, greeting cards, mugs and clothing. In 2012, Gordon hired a licensing agent who contacted American Greetings, the parent company of co-defendant Papyrus-Recycled Greetings, to discuss a potential licensing deal but those parties never agreed to a deal. Beginning in June 2012, the defendants released a series of seven greeting cards, including birthday, Halloween and election cards, which made use of the trademarked phrase Honey Badger Don’t Care and another well-known phrase from the video, Honey Badger Don’t Give A S—.

In re Brunetti, the Federal Circuit reversed a Patent Trial and Appeal Board (“Board”) decision affirming a refusal to register the mark “FUCT” because it comprised immoral or scandalous matter under 15 U.S.C. § 1052(a) (“Section 2(a)”). While the Board properly relied on substantial evidence to support its conclusion, the bar against registering immoral or scandalous marks was held to be an unconstitutional restriction on free speech.

As it related to the Google incident, it was first reported that a memo authored by a Google employee, titled “Google’s Ideological Echo Chamber”, was being circulated among Google employees. Later that day, the memo was obtained by the media and made public. The memo’s author was identified in the press as a senior employee named James Damore. In the memo, Damore criticized the efforts of tech companies, Google included, to employ programs and hiring practices concentrating on diversity. Specifically, Damore was critical of tech company initiatives which had the goal of recruiting and employing female engineers.

The USPTO issued Examination Guide 01-17 on Monday, June 26, 2017, entitled “Examination Guidance for Section 2(a)’s Disparagement Provision after Matal v. Tam and Examination for Compliance with Section 2(a)’s Scandalousness Provision While Constitutionality Remains in Question.” This Guide explains how trademark applications with arguably disparaging or scandalous content will be examined in the aftermath of the Supreme Court’s decision in Matal… The Supreme Court’s ruling in Matal cleared the way for a slew of new and possibly offensive trademark applications of a kind that have been consistently denied since 1946. Whether this protection will be extended to a wider category of potentially incendiary marks hinges on the Federal Court’s pending review of Brunetti.

US Inventor had planned on staging an event at which the organization would stage a peaceful protest of the Patent Trial and Appeal Board (PTAB). However, a decision by the U.S. Patent and Trademark Office to not approve the event is leaving protesters in jeopardy and may result in patent owners being put in jail. In an appeal letter dated August 10th sent to the USPTO, US Inventor argues that the USPTO’s denial of US Inventor’s use permit application is not permissible under the First Amendment to the U.S. Constitution.

The Supreme Court ruled that the anti-disparagement clause in the Lanham Act violates the Free Speech Clause in the First Amendment. Matal v. Tam. As a result, the United States Patent and Trademark Office may no longer deny registration of a federal trademark application on the ground of disparagement. Several states, including Massachusetts and New Hampshire, have anti-disparagement trademark provisions that will no longer be enforceable either… The statute does not define ‘scandalous’, but like the restriction against disparaging marks, the courts and the PTO focus on whether a mark is offensive.

After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam (formerly Lee v. Tam), the U.S. Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Justice Samuel A. Alito Jr. wrote unanimously for the eight justices in holding that Section 2(a)’s prohibition on disparaging registrations violates “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

Lauren Emerson, Baker Botts, LLP: “Today’s decision, while not surprising, is momentous, as any decision striking a longstanding legislative provision based on freedom of speech would be.  From a trademark practitioner’s perspective, Matal v. Tam is also remarkable in that it is the second decision in just over two years in which the Supreme Court specifically has taken note of the importance and value of trademark registration.   The decision has drawn additional attention as it undoubtedly marks the end of Pro-Football, Inc. (“PFI”)’s longstanding battle over its REDSKINS marks, as 2(a) will no longer bar registration of those marks either.   I have little doubt that in the weeks and months to come, we will see many new filings that will be more challenging to celebrate than Simon Tam’s hard-won victory.”

Earlier this morning the United States Supreme Court delivered a much-anticipated decision in Matal v. Tam, the trademark case that asks whether a disparaging trademark can be federally registered. The Court explained that the disparagement clause violates the free speech clause of the First Amendment of the U.S. Constitution.

The Supreme Court heard oral argument on the cloudy Wednesday morning of January 18, 2017. Although the Justices posed tough questions and intricate hypotheticals to both sides, the tone of each Justice’s questions and their individual jurisprudences indicate an even 4-4 split, with Justices Breyer, Ginsberg, Kagan, and Sotomayor favoring the USPTO, and Justices Alito, Kennedy, Thomas, and Chief Justice Roberts favoring Tam. Of course, oral argument is often shaky, at best, when predicting the outcome of a case, especially one with such potential for a drastic overhaul of a body of law… Although no one can know for certain the outcome of Lee v. Tam, one consequence that appears very likely is that, if the Court does rule in favor Tam, it would strike the entirety of Section 2(a), not just the portion prohibiting disparaging marks that forms the central issue of the case. John C. Connell, counsel for Tam, went so far as to call that result “inevitable” in response to Justice Ginsberg’s question on the topic.

There is often a tension between the needs of law enforcement and the companies that collect and store the electronic data of individuals. Law enforcement may seek this data from the companies through subpoenas, search warrants, and other court orders as part of its investigation and request that the companies did not disclose their interaction with authorities to maintain the confidentiality of the investigation. In contrast, companies may wish, or be obligated under the terms of their agreements or privacy policies, to disclose to their customers that they have produced the customers’ electronic data to law enforcement pursuant to legal process. To prevent the companies from doing so, federal law enforcement typically obtains a non-disclosure order pursuant to 18 U.S.C. § 2705(b) from a federal magistrate court. These orders have generally not had a definite expiration date. However, companies have recently begun to challenge the limits and scope of such orders. The recent case of Microsoft Corp. v. United States Dep’t of Justice, No. C16-0538 JLR, represents the most serious challenge to date.

The Supreme Court has scheduled oral argument in Lee v. Tam for January 18… The genesis of the case is a Portland, Oregon all-Asian-American band called The Slants, founded by petitioner Simon Shiao Tam. An application for trademark was made and the USPTO said “NO” on the basis that “The Slants” is a highly disparaging term and therefore must be denied registration under Section 2(a) of the Lanham Act… The cultural and societal value of the free flow of speech trumps government regulation. The Supreme Court should uphold the Constitution and confirm the importance of robust political debate, cultural discourse, and the right to use ANY words as part of a personal identity.

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), but the outcome of this case will affect the other types of marks excluded by Section 2(a), such as marks that may be viewed as immoral or scandalous. Indeed, in a footnote in its en banc decision the Federal Circuit “recognized…that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks….”

The U.S. Supreme Court agreed yesterday to review a Federal Circuit ruling that held unconstitutional a law prohibiting registration of trademarks that “may disparage” people or groups. In a case involving an Asian-American dance band’s bid to register its name THE SLANTS as a trademark, the court will consider whether the bar on registering disparaging marks in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the First Amendment guarantee of free speech. In the meantime, the Court is expected to rule soon on the Washington Redskins’ cert petition in Pro-Football, Inc. v. Blackhorse, No. 15-1874, challenging a decision of the Eastern District of Virginia upholding the PTO’s cancellation of the REDSKINS trademarks under that same provision.

The USPTO, through its Trademark Trial and Appeal Board (TTAB), denied a standard character mark for “The Slants” to be used with live music performance entertainment on the basis that the term is a highly disparaging reference to people of Asian-American descent. The writ of certiorari was issued for this case after the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) issued a decision last December in In re Tam, an appeal filed by Simon Tam to overturn the TTAB decision. In that case, the Federal Circuit voted 9-to-3 to vacate the TTAB decision to deny the trademark to Tam because § 2(a) of the Lanham Act was unconstitutional “under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.” The majority opinion issued by Federal Circuit noted that the First Amendment protects even hurtful speech and that the federal government has offered no legitimate interests justifying § 2(a) of the Lanham Act.