Page 43 - AVN August 2017

TECH NEWS
Bob applied for a mark that, according to the court,
“comprises a photograph of a nude man and woman
kissing and embracing in a manner appearing to
expose the male genitalia.” In describing the goods
and services associated with the mark, the opinion of
the Court of Customs and Patent Appeals explained:
“According to the applications for registration,
it is used for ‘Newsletter Devoted to Social and
Interpersonal Relationship Topics’ and ‘Social Club
Services.’ The evidence shows that the newsletter
has to do with discussions of sexual topics such
as bisexuality, homosexuality, masturbation, and
fornication; that the services include sponsoring and
arranging parties for ‘swinging,’ which appears to be a
form of group sex.”
You can see that the majestic federal court was
something less than comfortable with the subject
matter!
In any event, the court went on to invoke section
1052(a) to deny the registration in a 3-2 decision that
remained good law for decades, see In Re Mavety Media
the unanimous Court—and this is a political angle on
the case.
Which justice is assigned to write an opinion is
decided by Chief Justice John Roberts (whose title,
by the way, is Chief Justice of the United States,
rather than Chief Justice of the Supreme Court, often
unknown to the media). If the chief justice does not
vote with the majority, then the most senior associate
justice assigns the opinion.
Why is that important? Justice Kennedy wrote
one of his signature wonderful First Amendment
opinions, concurring in the judgment. Justice
Alito’s opinion was much less generous to the
First Amendment, although it did get the job done.
Chief Justice Roberts, as you probably know if you
have read the article this far, was a George W. Bush
appointee, as was Justice Alito. This circumstance
punctuates the importance of the Chief Justice; and
this one will be in place for decades to come.
Justice Alito’s opinion reviews, albeit from a
somewhat different perspective, the trademark
Two things can get in the way of the orderly
proceeding of the application process. Thing One
happens when the examining attorney and the
applicant have irreconcilable differences. Thing
Two happens when, during the publication period,
someone opposes the mark, such as someone
claiming that the applied-for mark is too much like
the one owned by the opposer.
If either of these things transpires, it is resolved
by the Trademark Trial and Appeal Board (the
“TTAB”). While the TTAB resolves other categories
of disputes, in the two categories above it acts as sort
of an appellate court, reviewing the decision of the
examining attorney.
The loser in the TTAB can appeal to the United
States Court of Appeals for the Federal Circuit
(formerly the United States Court of Customs
and Patent Appeals), a specialty appellate court of
dignity equal to the other courts of appeals (i.e., one
tier below the Supreme Court) and operating on a
nationwide basis. Any appeal involving a patent, for
example, goes to that court, as do a variety of other
cases, including TTAB appeals.
“READING JUSTICE KENNEDY’S
Enter Section 1052(a)
Section 1052(a) in relevant part reads materially as
it did when first enacted as part of the 1946 Lanham
Act:
EVALUATION OF THE FIRST
AMENDMENT IN THIS CASE MAKES
“No trademark by which the goods of the applicant
may be distinguished from the goods of others shall
ONE CRINGE TO THINK OF THE
be refused registration on the principal register on
account of its nature unless it—
SPECTER OF HIS RETIREMENT, AND BEING REPLACED BY THE LIKES OF
“(a) Consists of or comprises immoral, deceptive,
or scandalous matter...”
However, the ban on scandalous and immoral
trademark registrations first surfaced in the Trade-
JUSTICE GORSUCH, WHO SEEMS TO BE JOINING RANKS WITH JUSTICES
Mark Act of 1905, which required otherwise
appropriate marks to be approved “unless such
THOMAS AND ALITO.”
mark— (a) Consists of or comprises immoral or
scandalous matter.” America was a considerably
different place in Victorian 1905 than it is today!
A mark could be rejected if the PTO could establish
that it was “shocking to the sense of truth, decency,
or propriety; disgraceful; offensive; disreputable; ...
giving offense to the conscience or moral feelings; ...
[or] calling out [for] condemnation.” In Re Riverbank
Canning Co., 95 F.2d 327 (C.C.P.A.1938). For an
intriguing and rather entertaining history of the
PTO’s historical struggle with immoral trademarks,
see A.G. LaLonde & S. Johnson, An Overview of the Law
of Scandalous Trademarks in the United States, American
Bar Association Section of Intellectual Property Law;
30th Annual Intellectual Property Law Conference
(A.B.A. 2015).
For years, nobody seriously challenged the
legitimacy of the PTO’s ability to deny registration of
immoral trademarks—until 1980.
Bob McGinley
Robert L. (“Bob”) McGinley may or may not be a
name familiar to you. Bob, a dear friend and former
client, for decades was the center-of-the-universe
for the “lifestyles” folks. Not so parenthetically, Bob
is just now putting the finishing touches on a book
about his lifestyle adventures, which is bound to be
a page-turner. Bob’s conventions in Las Vegas for
decades turned out thousands of devoted “swingers”
(some of whom were porn stars) and were very
impressive.
In any event, how that is relevant is the case of In
Re Robert L. McGinley, 660 F.2d 481 (C.C.P.A. 1981).
Grp., 33 F.3d 1367 (Fed. Cir. 1994); In Re Boulevard
Entm’t, Inc., 334 F.3d 1336 (Fed. Cir. 2003); In Re Fox,
702 F.3d 633 (Fed.Cir.2012), until The Slants came
before that (renamed) court, some 34 years later in In
Re Tam, 808 F.3d 1321 (Fed. Cir. 2015). Not dwelling
on that opinion (because it is the one that found its
way to the Supreme Court and is the subject of this
article), suffice it to say that it squarely abrogated the
In Re McGinley ruling.
The Slants and the Supreme Court
Unhappy about the Federal Circuit abrogating the
In Re McGinley decision, the trademark office took
the case to the Supreme Court, which generally
agrees to review most cases holding a federal statute
unconstitutional, as was the case here.
In a unanimous decision (8-0, Justice Gorsuch
not participating), the Court found that the PTO’s
denial of The Slants registration violated the First
Amendment. The Justice lineup is interesting.
Justice Thomas, in a concurring opinion, noted
his consistent position that commercial speech has
just as much First Amendment protection as any
other speech. “I continue to believe,” he reiterated,
“that when the government seeks to restrict truthful
speech in order to suppress the ideas it conveys, strict
scrutiny is appropriate, whether or not the speech in
question may be characterized as ‘commercial.’”
Aside from that, however, it is significant that
Justice Alito, who generally is comparatively hostile
to First Amendment interests, wrote the opinion for
principles articulated above and the issue of whether
the disparagement clause applies to racial or ethnic
groups. Finding that it does, the opinion addressed
the government’s claim that trademark registration
is government speech trying to benefit from the
Court’s horrible decision in Walker v. Texas Div., Sons
of Confederate Veterans, Inc., 135 S.Ct. 2239 (2015),
remarkably holding that personalized license plates
constituted government speech. Containing that bad
decision, Justice Alito surprisingly dismissed the
claim, finding that “it is far-fetched to suggest that the
content of a registered mark is government speech. ...
None of our government speech cases even remotely
supports the idea that registered trademarks are
government speech.”
Parenthetically, it seems equally far-fetched to find
that personalized license plates consist of government
speech, but the Court somehow found a distinction
in the Walker case. The real potential danger of the
Tam case was the possible extension of Walker, which
stood to be a disaster.
Justice Alito’s opinion goes on to reject the
government’s other two arguments, one that
the statute was justified by cases approving
“governmentally subsidized” speech, and the other
that the Court should create a new “government
program” exception to the First Amendment. The
“government program” proposal really didn’t stand
much of a chance because the current Court has been
loath to create new categories of unprotected speech
(Continued on page 101)
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