The Slants Trademark, The Lanham Act, and What it Means

“One man’s vulgarity is another mans lyric” quoth the 1971 U.S. Supreme Court free-speech case.

That 1971 free speech ruling is what came to mind when the U.S. Supreme Court delivered their ruling in Matal v. Tam. This Supreme Court battle was an appeal to reverse the USPTO’s decision to deny the trademark application for the mark “The Slants”. Registration for the Slants trademark was refused by the USPTO for violating the Lanham Act’s disparagement clause. The Supreme Court ruled that ultimately the government may not refuse to register potentially offensive names.

According to Justice Samuel A. Alito Jr., “We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The Supreme Court unanimously declared that the Lanham Act’s disparagement clause was unconstitutional. The clause prohibited the registration of any mark that may “disparage  … or bring … into contemp[t] or disrepute” any person, institution, belief, or national symbol.

Now that the clause has been ruled unconstitutional, there are a lot of questions surrounding what it could mean for future and current trademark applications. In fact, prior to the ruling, a number of trademark applications were suspended by the USPTO pending resolution for this case.

What this ruling could mean

There are several ways this ruling could impact the IP world.

  1. The Redskins will probably be able to get their trademark registrations back.
  2. We might see an up-tick in applications to register rude and crude marks.
  3. The restrictions that have been placed on marijuana related trademarks may be called into question, but seem unlikely to change. Refusal still seems lawful for those marks, since marijuana is still illegal under federal law.

Here’s the bottom line: The Supreme Court is firm on the belief that the government should not decide what is moral, immoral or offensive when it comes to private speech. Restricting trademarks on the basis of government opinion would violate the First Amendment to the U.S. Constitution.

Facebook Files for Drones

Earlier this week, Facebook filed a trademark application with the U.S. Patent and Trademark Office to use the mark FACEBOOK in connection with Unmanned Aerial Vehicles (UAVs).

Drones.

So is Facebook looking to keep up with Amazon in the potential use of drones to deliver physical products?  Or are they working on data-collecting flying machines, as part of Zuck and Company’s ongoing data collection (and leveraging) mission.

The application itself offers a number of clues.  First, it is filed on an Intent to Use basis, meaning that the company is not yet selling any drone-y goods or services under the FACEBOOK mark.

It is filed in trademark International Class 12, which is for physical goods instead or services.  And it identifies the goods to be sold as the vehicles themselves.  All of this together means that the plans are for Facebook to sell drones products branded with its name.

Here is the content of the application, pretty short and sweet:

__________________________________

 

 

Trademark/Service Mark Application, Principal Register

TEAS Plus Application

Serial Number: 86311282
Filing Date: 06/16/2014

 

To the Commissioner for Trademarks:

MARK: FACEBOOK (Standard Characters, see mark)
The literal element of the mark consists of FACEBOOK.
The mark consists of standard characters, without claim to any particular font, style, size, or color.

The applicant, Facebook, Inc., a corporation of Delaware, having an address of 
      1601 Willow Road
      Menlo Park, California 94025
      United States


requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following: 

For specific filing basis information for each item, you must view the display within the Input Table. 
       International Class 012:  Unmanned aerial vehicles (UAVs)
Intent to Use: The applicant has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)). 


The applicant claims ownership of U.S. Registration Number(s) 3041791, 3122052, 3881770, and others.


The applicant’s current Attorney Information: 
      Aaron M. Fennimore and John W. Crittenden and Janet L. Cullum, Anne H. Peck, Peter J. Willsey, Brendan J. Hughes, Vincent J. Badolato, Todd S. Bontemps, Morgan A. Champion, Susan Piascik Christoff, Ariana Gallisá Hiscott, Katie Krajeck, Chantal Hwang, Timothy Hance, Thomas Hadid, Rebecca Givner-Ford, Katie Krajeck, Heather Dunn Navarro, John P. Oleksiuk, Kathlyn Querubin, Kathryn Duvall, and Karen K. Won of Cooley LLP
      1299 Pennsylvania Avenue, NW, Suite 700
      Washington, District of Columbia 20004
      United States
The attorney docket/reference number is 309101-20000.

The applicant’s current Correspondence Information:
      Aaron M. Fennimore
      Cooley LLP
      1299 Pennsylvania Avenue, NW, Suite 700
      Washington, District of Columbia 20004
      650-843-5000(phone)
      650-849-7400(fax)
      trademarks@cooley.com;peckah@cooley.com; afennimore@cooley.com (authorized)


A fee payment in the amount of $275 has been submitted with the application, representing payment for 1 class(es). 

Declaration

The signatory believes that: if the applicant is filing the application under 15 U.S.C. Section 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant’s related company or licensee is using the mark in commerce on or in connection with the goods/services in the application, and such use by the applicant’s related company or licensee inures to the benefit of the applicant; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed an application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the goods/services in the application. The signatory believes that to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.


Signature: /kathleenejohnston/   Date Signed: 06/16/2014
Signatory’s Name: Kathleen Johnston
Signatory’s Position: Associate General Counsel



RAM Sale Number: 86311282
RAM Accounting Date: 06/17/2014

Serial Number: 86311282
Internet Transmission Date: Mon Jun 16 19:55:01 EDT 2014
TEAS Stamp: USPTO/FTK-173.227.174.10-201406161955018
13591-86311282-5009762d227d390ea38fb5378
88375423a0edb67eeac8a4a644cc6cf19ee12872
-DA-6384-20140616173525295452


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