Discriminatory discretion: PTO procedures and viewpoint discrimination under section 2(a) of the Lanham Act.

AuthorKustina, Emily M.
PositionPatent and Trademark Office

INTRODUCTION I. LANHAM ACT SECTION 2(A) AND RELATED PTO PROCEDURES FOR SCANDALOUS AND DISPARAGING TRADEMARKS A. The History of Section 2(a) B. The Trademark Examination Process C. PTO Procedures Under Section 2(a): Determining Whether Marks Are Scandalous or Disparaging 1. Purported Examination Procedures of the PTO 2. Actual Examination Procedures of the PTO a. Evidence Relied upon by Examiners b. Reliance upon Precedent c. Evidentiary Standards i. Scandalousness ii. Disparagement II. AN ANALYSIS OF SECTION 2(A) DENIALS: WHAT IS ACTUALLY DEEMED SCANDALOUS OR DISPARAGING? A. Methodology B. Data and Analysis 1. Marks Denied Under Section 2(a) 2. Evidence Relied upon in Scandalousness and Disparagement Determinations 3. Anomalies III. EFFECTS OF TRADEMARK DENIAL OR CANCELLATION A. Statutory Benefits of Registration B. Burdens on the Trademark Owner IV. VIEWPOINT DISCRIMINATION AND THE FIRST AMENDMENT A. Content- and Viewpoint-Based Restrictions B. Official Discretion and the First Amendment C. Commercial Speech and Viewpoint Discrimination D. Section 2(a) as a Restriction on Viewpoint V. HOW DISCRETION IN THE PTO LEADS TO VIEWPOINT DISCRIMINATION A. Applying the Test for Improper Discretion B. Considering the Applicant's Intent in Section 2(a) Analyses C. Considering the Context of the Mark in Section 2(a) Analyses D. Case Studies: Viewpoint Discrimination in the Redskins and Slants Cases 1. Cancellation of the Washington Redskins Trademarks 2. Denying Registration to the Slants Trademark VI. CHANGES TO THE SECTION 2(A) REGIME: LIMITING VIEWPOINT DISCRIMINATION CONCLUSION APPENDIX: EMPIRICAL DATA INTRODUCTION

The current standards for denying and cancelling trademarks under section 2(a) of the Lanham Act are insufficiently clear to prevent trademark examiners and administrative judges from employing viewpoint-based discrimination against owners of marks that are perceived to be immoral, scandalous, or disparaging. Since trademark protection is a grant of speech rights to mark owners, the U.S. Patent and Trademark Office's (PTO) discretionary decisions to deny or cancel the registration of marks that represent particular viewpoints under section 2(a) are at odds with the First Amendment protections afforded to both commercial and expressive speech. This Comment proposes that to protect the First Amendment rights of mark owners, the PTO should employ a policy that all allegedly immoral, scandalous, or disparaging marks are presumptively valid and can be denied registration or cancelled only upon a showing that the proposed marks are within the specific categories of speech deemed to be outside the realm of First Amendment protection. Stricter standards for denying and cancelling trademarks under section 2(a) will allow the commercial marketplace and the marketplace of ideas to determine the fate of these so-called "undesirable" trademarks.

Part I introduces Lanham Act section 2(a), the statute authorizing the denial of registration for trademarks that are immoral, scandalous, or disparaging. I discuss the PTO's procedures for granting and denying trademarks, and compare the PTO's purported procedures with how the office actually makes decisions. I then argue that this process is infused with discretionary decisionmaking that allows examiners to incorporate their own opinions on the propriety of marks into the section 2(a) analysis. In Part II, I analyze the PTO's rates of granting and denying registration to allegedly scandalous and disparaging trademarks under section 2(a) and the evidence used to support such decisions. In Part III, I assess the effects of trademark denial and cancellation on mark owners. In Part IV, I discuss the First Amendment doctrine of viewpoint discrimination, its interaction with the doctrines of commercial speech and administrative discretion, and how it applies to trademark registration and the PTO. I conclude that section 2(a) is a restriction on viewpoint in violation of the First Amendment. In Part V, I analyze how the discretionary procedures in the PTO lead to viewpoint discrimination. Finally, in Part VI, I propose changes to the section 2(a) regime to limit discrimination on the basis of viewpoint. I argue that the PTO should adopt the presumption that potentially scandalous and disparaging trademarks are valid absent section 2(a) challenges from third parties in opposition or cancellation proceedings. I also propose that section 2(a) denials should be limited to traditionally unprotected categories of speech, allowing the marketplaces of commerce and ideas to limit the propagation of trademarks that are seen as scandalous or disparaging.

  1. LANHAM ACT SECTION 2(A) AND RELATED PTO PROCEDURES FOR SCANDALOUS AND DISPARAGING TRADEMARKS

    This Comment focuses on the PTO's application of Lanham Act section 2(a) to deny or cancel trademark registrations at both the initial examination stage and in proceedings before the Trademark Trial and Appeals Board (TTAB). Section 2(a) proscribes registration of trademarks that "[c]onsist[] of or comprise[] 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...." (1) The PTO has tended to group denials under section 2(a) into two broad categories: marks that are immoral or scandalous, and marks that are disparaging to persons or groups. (2) However, determining which marks fall into these categories is largely subjective because of a lack of defined legislative intent and the PTO's failure to specifically articulate standards for applying these bars to registration in administrative and judicial proceedings. The vagueness of the statutory language leads the PTO to use subjective standards and creates First Amendment problems. In effect, the TTAB can selectively deny registration to marks under section 2(a) on the basis of the viewpoints the marks express.

    1. The History of Section 2(a)

      Congress enacted the Lanham Act in 1946 "with the dual objectives of protecting the consuming public from deception and protecting the mark holder from misappropriation." (3) The Act's legislative history also indicates an intent to reduce arbitrariness and simplify the procedures for granting trademarks at the federal level. (4) The opening language of section 2 reflects these goals: "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...." (5) By presuming that all trademarks are registerable unless they fall under one of the bars to registration listed in section 2, the Lanham Act simplifies the application and registration process and protects the rights of the mark owner by allowing him to register his mark as quickly as possible in order to reap the benefits of federal trademark registration and enforce the mark against potential infringers.

      Section 2(a) does not accomplish the objectives described above. Prohibiting trademarks on the basis of their scandalous or disparaging content does not prevent consumer deception so long as the marks identify their source, and does not prevent misappropriation because the mark owner gets no protection if the content of the mark is barred under section 2(a). Furthermore, section 2(a) inquiries are inherently arbitrary because they rely on examiners to parse public sentiment towards allegedly disparaging and scandalous words, a wholly subjective inquiry. (6)

      So what, then, justifies a statutory prohibition on the registration of scandalous and disparaging marks? The legislative history provides no clues as to Congress's intent. (7) Based on the statutory text and court decisions, however, scholars generally agree on four justifications for the section 2(a) bars to registration:

      The federal government (1) "should not create the appearance that it favors or approves the use of scandalous, immoral and disparaging trademarks"; (2) "should not squander its precious time and resources" on such marks; (3) "should promote the public health, welfare, and morals by discouraging the[ir] use" ...; and (4) "should protect the sensitivities of those in public who might be offended" by [such marks]. (8) These justifications are purportedly served through the trademark examination process under section 2(a); however, they also open the door to justifying discrimination against marks on the basis of viewpoint.

    2. The Trademark Examination Process

      The PTO controls the process for federal registration of trademarks. (9) Under the Lanham Act, a mark owner must complete a five-stage PTO application process to register a mark: "(1) application, (2) examination, (3) publication in the PTO's Official Gazette, (4) opposition, and (5) registration." (10) The application must include the name and address of the applicant, a representation of the mark (either words or an image), a listing of the goods or services for which the mark will be used, and the appropriate filing fee. (11)

      After the mark owner submits an application, it is initially reviewed by a PTO examining attorney. (12) "If the examining attorney identifies a substantive problem with the application, she will typically issue an 'Office Action' rejecting the application and explaining the basis for the rejection. The applicant is given six months to respond." (13) If the applicant does not respond, the mark is deemed "abandoned" and will not proceed to publication. (14) However, if the applicant responds to the Office Action, the examining attorney will reexamine the application in light of any evidence or arguments provided by the applicant. (15) 16 After reexamination, the examining attorney will issue a final rejection if she determines that the mark does not satisfy the requirements of the Lanham Act. (16) The applicant can appeal that rejection within six months to the TTAB, an...

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