Business STFU NEWS: The SLANTS Case And Adult Trademarks

[Relentless]

*** Please Read This Carefully ***
This thread is different than others on GFY because GFY has asked me to Moderate this series of "STFU News" threads. The hope is that these threads will allow lurkers, frequent posters and some of the people who have been posting less to all engage in an intelligent discussion here on GFY about an interesting business relevant topic without being trolled. To accomplish that goal, GFY has asked me to be the moderator of STFU News threads, and that includes deleting or editing posts that are: off topic, trolling, or otherwise aimed at derailing the discussion. Please note, I will *only* be moderating the STFU News threads. I hope you will speak your mind in an intelligent, professional and constructive manner. If this proves to be a useful way of doing things, we will keep it going.
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Topic #3: The SLANTS Case And Adult Trademarks:
Recent court decisions and Trademark regulatory actions in matters like The SLANTS case and the Washington Redskins name rights litigation are making trademarks of 'derogatory terms' much more shaky than they were a few years ago. Are you concerned about having your own trademarks invalidated because they are on the edge of good taste? Do you think the courts will change these rulings on appeal? Are these decisions affecting your domain name buys or brand name choices?



For Anyone Who Is Unaware of the Backstory:
One of the more important legal rulings that will arise this year is coming from an intellectual property case that too many adult insiders have been completely unaware of until now. The case involves an all-Asian dance rock band founded by front man Simon Tam, and their attempt to trademark their band name “THE SLANTS.”

The controversy stems from a September 2013 opinion by the Trademark Trial and Appeal Board (TTAB) affirming the U.S. Patent and Trademark Office’s (PTO) refusal to grant The Slants trademark registration due to §2(a), which prevents registration of marks “[c]onsist[ing] of or compris[ing] … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The TTAB panel, consisting of Chief Administrative Trademark Judge Gerard Rogers, noted that The Slants trademark was denied because it is “a highly disparaging reference to people of Asian descent” and continues to be disparaging to “a substantial composite of the referenced group.” On the other hand, Tam and his band insist they adopted the band name to “reclaim” it and celebrate Asian identity, and according to Tam the issue is that “minorities should have the right to label themselves.”

The case has gotten a large amount of mainstream press coverage from Reuters and other business periodicals because of the wide reaching implications of having ‘obscenity police’ controlling whether a term can become protected intellectual property or not. The implications for the NFL’s Washington Redskins and a slew of significant adult industry brand names are obvious. It’s certainly plausible to be concerned about a small group of faceless bureaucrats with the power to invalidate trademarks worth millions of dollars on the grounds that they find them to be distasteful.

For that reason, the First Amendment Lawyers Association (FALA) filed an Amicus Curiae brief on behalf of The Slants. FALA is a legal consortium that does not require members to be part of the adult industry, but does include many prominent attorneys and corporate backers from within the adult online community. The Amicus Curiae (friend of the court) brief, drafted by noted attorney Marc Randazza of FALA expressed several important points for the court to consider and concluded that: “The court and the PTO cannot suppress trademarks without also suppressing the ideas they provide. Trademarks provide information to potential consumers, ranging from commercial information about their goods and services to information pertaining to company values, beliefs, and ideas. Therefore, the government cannot use Section 2(a)’s restriction on “immoral . . . or scandalous matter; or matter which may disparage,” to suppress the protected speech encompassed by trademarks without adequate justification.”

The three-judge panel of the Federal Circuit disagreed with that assertion and decided there was evidence the term ‘The Slants” is offensive to people of Asian descent. It went on to decree that there was no free speech violation since a refusal to federally register a trademark does not prevent the applicant from using the term, only from owning the term with a governmentally enforced trademark protecting it.

Currently, the burden of proving that a trademark is disparaging rests with the PTO, and §2(a) rejections are “relatively uncommon.” The Federal Circuit applies a two-part test to determine if a mark is disparaging: (1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods and services; and (2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.”

* The full story will be covered extensively in an upcoming AVN Feature Article about this topic, but it also seems like a great STFU News item to discuss here with the adult business community.

[pornguy]

Great post. I was reading some of that and how it could have a sweeping impact on a lot of people.

The other article stated that Porno Jesus was also denied.

Some times with some things we do we are our own worst enemy. But I happen to have a desk that is slanted and that's how I refer to it even to tell people to put it on the slant.

[Relentless]

Originally Posted by pornguy

Great post. I was reading some of that and how it could have a sweeping impact on a lot of people. The other article stated that Porno Jesus was also denied. Some times with some things we do we are our own worst enemy. But I happen to have a desk that is slanted and that's how I refer to it even to tell people to put it on the slant.

That cuts right to the point. The band name is The Slants, it's not "AllAsianPeopleMustBeTorturedAndKilled"

I would argue that ANY name should be trademark-able because the government is not the correct entity to decide if a brand is worthy of affection or not... consumers can decide the fate of any brand by choosing to buy it or reject it. However, even if one believes that the government should be rejecting derogatory brands, it's painfully obvious that one bureaucrat can find almost any name objectionable.... and what happens when someone starts filing complaints about "Hustler", "Playboy", "Shemale" or any number of other brands that have cost millions to build over an extended period of time?

[wasteland]

Beyond adult, I'm curious to see if this spills over to trademarking in the cannabis industry in the US. Although "Maui Waui" is perfectly legal in some states, it's not in others, or at the federal level. Wondering if trademarking the name of an illegal substance could get blocked.

Thoughts, Stewart?
Colin

[Relentless]

Originally Posted by wasteland

Beyond adult, I'm curious to see if this spills over to trademarking in the cannabis industry in the US. Although "Maui Waui" is perfectly legal in some states, it's not in others, or at the federal level. Wondering if trademarking the name of an illegal substance could get blocked.
Thoughts, Stewart?
Colin

The more direct instances would be weed brand names that could idiotically be deemed derogatory, like 'oriental express' or 'Indian summer'. It's very much not sector specific. In adult a trademark on anything from 'Whoriental' to 'Gangbang' would seem to be in serious jeopardy.

[JuicyBunny]

Originally Posted by Relentless

That cuts right to the point. The band name is The Slants, it's not "AllAsianPeopleMustBeTorturedAndKilled"

I would argue that ANY name should be trademark-able because the government is not the correct entity to decide if a brand is worthy of affection or not... consumers can decide the fate of any brand by choosing to buy it or reject it. However, even if one believes that the government should be rejecting derogatory brands, it's painfully obvious that one bureaucrat can find almost any name objectionable.... and what happens when someone starts filing complaints about "Hustler", "Playboy", "Shemale" or any number of other brands that have cost millions to build over an extended period of time?

Hustler is a brand, Playboy is a brand. Shemale is not a brand. It is an older and dying term used to designate a sexual orientation. It's like someone trying to trademark "bread."

Who else can designate name approvals for brands when you are asking the government to give stamp approval for them? I agree, government is not the choice or a good choice but what are the alternatives? A completely impartial, non-lobbyist controlled entity? Is there one anymore?

[JuicyBunny]

Something else to consider is that Trademarks in US only cover the US. If you want to Trademark a brand you have to go country by country. Chinese have been pissing a lot of people off because they have been going to countries all over now and Trademarking brands that did not trademark themselves there first. Have been doing it for years. I think Kawasaki was the first to get hit.

It would be a great benefit but what would be the cost of one stop global trademarking?

[Relentless]

Originally Posted by JuicyBunny

Hustler is a brand, Playboy is a brand. Shemale is not a brand. It is an older and dying term used to designate a sexual orientation. It's like someone trying to trademark "bread." Who else can designate name approvals for brands when you are asking the government to give stamp approval for them? I agree, government is not the choice or a good choice but what are the alternatives? A completely impartial, non-lobbyist controlled entity? Is there one anymore?

AsianShemales.com, SexyLadyboys.com, TrannyVsGranny.com, etc are all brands. Whether one is deserving of a trademark or not should be determined exactly the same way Rock.com, GreenApple.com or SeattleSeahawks.com is decided. There should be zero discussion of whether a term is derogatory or not...

The 'who else' question is very simple. There are consumers who can choose to buy any particular brand or not buy it. Brands that earn money continue, brands that fail to gain customers die off. Trademarks are all about commercial usage, and the consumer market is the best entity to decide which brands are worthy of success or failure.

[JuicyBunny]

Originally Posted by Relentless

AsianShemales.com, SexyLadyboys.com, TrannyVsGranny.com, etc are all brands. Whether one is deserving of a trademark or not should be determined exactly the same way Rock.com, GreenApple.com or SeattleSeahawks.com is decided. There should be zero discussion of whether a term is derogatory or not...

The 'who else' question is very simple. There are consumers who can choose to buy any particular brand or not buy it. Brands that earn money continue, brands that fail to gain customers die off. Trademarks are all about commercial usage, and the consumer market is the best entity to decide which brands are worthy of success or failure.

The above domains were not in your original post. Your response has nothing to do with my post. Consumers cannot grant trademarks. Consumers can appreciate brands.

I agree though about derogatory discussion. Unfortunately we have an "activist" gov/world in the US busy destroying whats left of Federalism.

[AmeliaG]

Adult terms in a brand name have almost always led to a rejection for trademark protection, so that wouldn't really be the outcome of a legal precedent here. The potential change would be the precedent set if the band wins.

[Relentless]

Originally Posted by AmeliaG

Adult terms in a brand name have almost always led to a rejection for trademark protection, so that wouldn't really be the outcome of a legal precedent here. The potential change would be the precedent set if the band wins.

Agreed, but with the backing of major brands like the Redskins, and the remarks of one of the judges that it's time to rexamine how things are being done, and the work being done by FALA that may soon be a reality.

@juicybunny

My reply does answer yours. You asked, other than the trademark beaurocrats, who would be in position to determine if a brand should be trademarkable. My answer is that the free market will cause brands to sink or swim... All the government should be looking at is whether the term is already marked, whether it is merely descriptive, etc.... There is no reason anyone needs to examine whether any brand is tasteful as part of an IP examination.

[AmeliaG]

Originally Posted by Relentless

Agreed, but with the backing of major brands like the Redskins, and the remarks of one of the judges that it's time to rexamine how things are being done, and the work being done by FALA that may soon be a reality.

@juicybunny

My reply does answer yours. You asked, other than the trademark beaurocrats, who would be in position to determine if a brand should be trademarkable. My answer is that the free market will cause brands to sink or swim... All the government should be looking at is whether the term is already marked, whether it is merely descriptive, etc.... There is no reason anyone needs to examine whether any brand is tasteful as part of an IP examination.

I agree with you strongly that the trademark office should have zero input on taste.

[Relentless]

Originally Posted by AmeliaG

I agree with you strongly that the trademark office should have zero input on taste.

Also keep in mind this case deals with invalidating existing trademarks as well. Much like what happened with the Redskins, nothing currently prevents a few asshats with petitions from filing a complaint against any adult company with a trademark and having the USPTO retroactively invalidate that mark. A very scary proposition for anyone who has invested in building a brand, even long after they suceed at getting their trademark granted.

[faxxaff]

These days most adult companies just register trademarks for the sole purpose of sending out DMCA notices. It makes things easier. Very few of them have something that could be considered a truly creative trademark other than a toon with 2 or 3 words dot com.

[Relentless]

Originally Posted by faxxaff

These days most adult companies just register trademarks for the sole purpose of sending out DMCA notices. It makes things easier. Very few of them have something that could be considered a truly creative trademark other than a toon with 2 or 3 words dot com.

I disagree...

I work directly with a number of companies that have large IP portfolios. Many 'adult' companies also have significant mainstream operations and brands far outside the porn perimeter.

When someone owns a brand they felt was worth protecting, pays to file a mark and goes through a multi month verification process, then invests time and money in building that approved brand ... It's a problem to have a clerk later revoke that brand's mark based on someone's subjective belief that others might become butthurt by hearing or seeing that brand name in use.