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Posted on May 21, 2014.
It’s been an interesting and controversial month for the relationship between trademark law and the First Amendment rights of freedom of speech and freedom of the press.
In mid-May, a federal appellate court upheld a refusal by the U.S. Patent and Trademark Office (the “USPTO”) to register the trademark STOP THE ISLAMISATION OF AMERICA for providing information about preventing and understanding terrorism. The court upheld the USPTO’s finding that a substantial portion of the Muslim community would consider this trademark disparaging.
That’s doubly interesting because the USPTO is considering whether to cancel various REDSKINS trademark registrations owned by that NFL team. Some legal pundits think the Islam-related decision may portend that the REDSKINS trademark registrations will be canceled and that the federal appellate court would affirm such result.
In a different case decided in late April, a federal trial court in Virginia issued a decision finding that a non-profit foundation and its founder (a black man) had committed trademark infringement and dilution when it ran articles criticizing the NAACP as the “National Association for the Abortion of Colored People.” (It’s really the “National Association for the Advancement of Colored People.”)
In its articles, the non-profit accused the NAACP of a cozy relationship with Planned Parenthood (an abortion-rights group) and of condoning a large number of abortions of black babies. The non-profit tried to use these articles to fundraise for its anti-abortion efforts in the black community.
You can justify each of these decisions based upon the technicalities of trademark law.
In the case concerning Islam, federal statutory law prohibits registration of a trademark if a substantial proportion of people belonging to an institution or holding a set of beliefs would find that trademark disparaging.
The applicants for the registration denied such disparagement, but also argued that the First Amendment entitled them to registration despite the statute. The USPTO rejected this First Amendment argument, citing prior federal court cases that also had rejected it. The applicants didn’t even raise the First Amendment issue with the appellate court, perhaps because those precedents are well established.
The USPTO noted trademark registration only strengthens the rights of a trademark owner. Denying someone trademark registration does not stop that applicant from using the applied-for name to brand its products and services, such as using it in advocacy.
And the owner of an unregistered trademark can still sue in some situations to stop others from using a confusingly similar trademark for the same or similar services, although it will have a tougher case to prove because of not having a trademark registration.
In the case concerning the NAACP, it convinced the judge that people were likely to be confused as to whether the real name of the NAACP is the “National Association for the Abortion of Colored People.”
The judge believed testimony of an NAACP official that some of its supporters were confused by the altered moniker. The judge also believed the NAACP’s expert who testified that, in a survey he conducted, about five to ten percent of respondents thought the altered moniker might be the real name of the NAACP.
In addition to contesting the confusion allegation, the nonprofit argued that its critical recasting of the NAACP’s name was speech protected by the First Amendment.
The judge rejected this argument. He held that a likelihood of confusion washes away First Amendment concerns and that the non-profit could still make its pro-life argument without using the altered moniker.
UCLA law professor and blogger Eugene Volokh gently criticized the outcome of the Islam case. He argued that the realm of federal trademark registration really is a “limited public forum” where the First Amendment applies. He contended it is unconstitutional viewpoint discrimination to register trademarks that laud religions but not ones that disparage religions. There are many registered trademarks praising Christianity, Judaism, and Islam.
As for the trademark case concerning abortion, trademarks are a form of speech and so are criticisms of organizations that use them. Trademark case law, in this instance and others, tilts in favor of avoiding any minor consumer confusion that might arise from a criticism or parody of a trademark even in cases where the vast majority of the public would “get” the criticism or parody and not be confused.
Neither of these courts have the final say on what the fundamental relationship should be between the First Amendment and trademark law. They each had to follow legal precedents. Perhaps a higher power, such as Congress or the Supreme Court, should take a big-picture look at this relationship.
Written on May 21, 2014
by John B. Farmer
© 2014 Leading-Edge Law Group, PLC. All rights reserved.
P.S. As of this writing, you can still view the NAACP article that was the subject of the suit on a third-party website here. You can judge for yourself whether the article creates a likelihood of confusion with the NAACP mark.