The USPTO Would Prefer Not to Follow the First Amendment

The USPTO is, apparently, a big Melville crowd.

In December, U.S. Court of Appeals for the Federal Circuit decided In re Tam, 2015 U.S. App. LEXIS 22593 (Fed. Cir. Dec. 22, 2015). In it, the Federal Circuit made a sweeping pronouncement that the First Amendment applies to trademark registrations, and that a long-criticized prohibition on “disparaging” trademarks could no longer stand. The portion of the trademark act that fell was Section 2(a) of the Lanham Act, 15 U.S.C.S. § 1052(a).

Then, the Department of Justice conceded that § 2(a) was no longer enforceable in light of In re Tam.

We do not believe that given the breadth of the Court’s Tam decision and in view of the totality of the Court’s reasoning there, that there is any longer a reasonable basis in this Court's law for treating them differently… The reasoning of Tam requires the invalidation of § 2(a)'s prohibition against registering scandalous and immoral Trademarks as well."

One might think then, for a moment, that the USPTO would stop relying on an unconstitutional provision, no? Well, time for a literature lesson:

In Herman Melville’s classic, Bartleby the Scrivener, an attorney finds frustration with his scrivener, Bartleby. Any time Bartleby is directed to perform a task, he replies with the classic refrain: “I would prefer not to.”

The first of many such exchanges continued thus:

“Prefer not to,” echoed I, rising in high excitement, and crossing the room with a stride. “What do you mean? Are you moon-struck? I want you to help me compare this sheet here – take it,” and I thrust it towards him.
“I would prefer not to,” said he. Herman Melville, Bartleby, the Scrivener: A Story of Wall Street 10 (Dover 1990) (1853).

Initially infuriated, but beguiled by Bartleby’s charmingly passive insolence, the narrator tolerates Bartleby’s masterfully eccentric defiance, but eventually fires him. Once fired, Bartleby’s behavior becomes stranger, and he refuses to leave the premises of his employer, who finds Bartleby’s stubbornness to be an immoveable object. Bartleby’s defiance, as effective as it is, eventually leads to his undoing. Bartleby’s preference leads to his imprisonment and starvation, as he finally encounters both men and forces of nature who are unmoved by his antics.

We have, at least for the moment, a government agency that fancies itself in the role of Bartleby. The USPTO has already been instructed by the Federal Circuit that Section 2(a) (at least as far as the "disparaging" portion of it) is unconstitutional, and the case law that the USPTO has relied upon to justify its bullshit standard under the "scandalous" portion is specifically overruled.

Rumored to be the new USPTO policy director

Rumored to be the new USPTO policy director

Nevertheless, the USPTO has essentially decided "we would prefer not to" follow the Constitution.

The USPTO continues to examine applications for compliance with the scandalousness and disparagement provisions in Section 2(a) according to the existing guidance in the Trademark Manual of Examining Procedure § 1203. While the constitutionality of these provisions remains in question and subject to potential Supreme Court review, for any new applications the USPTO will issue only advisory refusals on the grounds that a mark consists of or comprises scandalous, immoral, or disparaging matter under Section 2(a). If a mark’s registrability under these provisions in Section 2(a) is the only issue, the examining attorney will identify the reasons for the advisory refusal and suspend action on the application in the first Office action. For all applications, including those initially examined before the Federal Circuit’s decision in Tam, if the examining attorney made other requirements or refusals in the first Office action, action on the application will be suspended when the application is in condition for final action on those other requirements or refusals. Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension. Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision. (source)

Please note, I received this document from an intellectual property lawyers' list serve, and I have not confirmed its authenticity. Nevertheless, the document properties say that the author is Christina J. Hieber, who does check out as an attorney with the USPTO's office of the solicitor. (source)

So, remember folks – the Court of Appeals for the Federal Circuit told the USPTO that it was violating the Constitution. Their position? "We don't care, we might appeal, and then again, we might not. But, until we are told that the courts really really mean it, the Constitution doesn't matter." And they think that the word "fuck" is "immoral" and "scandalous."

You know what is "immoral" and "scandalous?" A petty little bureaucrat, or group thereof, deciding that they are above the Constitution, because… well, dirty words and all.

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If you find the issue of morality and intellectual property rights of interest, I'd be delighted if you downloaded and read my law review article on the subject. See Marc J. Randazza Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights

Last 5 posts by Marc Randazza

Comments

  1. DRJlaw says

    Marc,

    The Federal Circuit's opinion is not a final judgment and, in case it's eluded you, there's no statutory time limit on the pendency of a trademark application. If they'd obtained a stay from the Federal Circuit effective for the same periods, would you be pitching this same fit? Does anything require that they issue even Tam's own trademark application prior to the last of those times?

    Your rhetoric is strikingly similar to that being thrown at Apple in the San Bernadino fight. How dare someone contemplate appealing a ruling (or a writ) instead of tendering immediate compliance. Windows for opposition, requests for rehearing, and the appeals process are all inconvenient barriers merely used to shirk the law instead of GETTING THINGS DONE.

    Well no, that not how this works. That's not how any of this works.

  2. says

    If they'd obtained a stay from the Federal Circuit effective for the same periods, would you be pitching this same fit?

    Nope. I would have no issue with it if they got a stay. That's how the law works. You follow the fucking court's order, unless you get a stay.

  3. Richard Smart says

    Dear DRJLaw,
    One suspects the point of Mr Randazza's analogy with Bartleby the Scrivener is that eventually the USPTO is just asking to get their noses rubbed in it by a superior court.

  4. says

    Dammit. After forcing myself to read through to the end of Moby Dick (honestly, the only worthwhile part was chapter 95), I have carefully avoided anything else by Melville. Turns out I have been doing myself a disservice. Welp, there's another book added to the wishlist!

  5. Daran says

    I recall a brief in the Rightshaven case making a similar point. The name of the lawyer who wrote it escapes me at the moment, was it Rand…, Randy-something? I'm not sure.

  6. AlphaCentauri says

    Things could get weird as more publications/broadcast media have editorial policies that they will not use the term "redskins." Some already will only refer to them as "Washington."

    There's a fan-led movement in Chicago to start using a much cooler-looking logo for the Blackhawks, and it might actually catch on, leading to loss of revenue for the actual licensed stuff. Could not an influential media organization coin their own nickname for the Washington Redskins that could end up getting widely adopted, so that the team ends up not owning the name that the majority of sports reporters use to refer to it? It would be awesome karma if they chose a name and even a logo caricature disparaging to Snyder.

  7. Dwight says

    >> Could not an influential media organization coin their own nickname for the Washington Redskins that could end up getting widely adopted, so that the team ends up not owning the name that the majority of sports reporters use to refer to it?

    The short-lived Minority Report TV series actually did this, choosing "Washington Red Clouds". They used the "2 feather"'d circle but with lightning strike from a cloud inside, the name comes from what I guess could be called a General of the Sioux.

    But that'll be under copyright now? With the show defunct the owner could "copyleft" the name and logo I suppose?

    P.S. Yeah, this USPTO behavior does strike me as some Kim Davis grade bullshit. Well close to it, as SCOTUS hasn't weighed in yet. Here's to hoping someone gets to ride the wire mesh bench for a night or two over this, too. :p

  8. Monti says

    Marc.

    Maybe you and the rest if the Popehat crew should start up a band called "Fuck The Cockgargling Fucking Piece of Shit Patent and Trademark Pussies" and go register it with them…

    Should be interesting.

  9. DanA says

    If Washington starts having a bad season they could just call them the RedShirts since they die every time they go on a mission.

  10. SPQR says

    So the USPTO is making more work for themselves out of petulance or because they can't get a straight answer as to whether or not the DOJ will appeal?

  11. Trent says

    They are doing full government. The manual says they can't approve a vulgar trademark. They court said they must, so they do what any good government employee would do when confronted with such a discrepancy. They suspend looking at it until they are told by their bosses. After all, if the court does get angry at the USPTO the people involved in this little suspension won't be punished, in fact they are more likely to be rewarded for being cautious.

  12. patent guy says

    The patent and trademark office has a difficult job, but makes things hard for itself with its long history of acting as if it were above the law. The APA is almost unheard of, the current Federal Circuit rules with maximal agency deference.

  13. Dan says

    Judges need to be judicious and not absolutist. Otherwise they risk undermining themselves.

    Marc, you brought up the Supreme Court marriage case. That is an example where the court lost authority in the eyes of many. A vast majority of states had voted on constitutional amendments defining marriage as between a man and a woman, including as recently as 2012 by 60%-39% in the case of North Carolina. Most of the world retains the traditional definition. The traditional definition flows from the biological reality of childbearing. Reproduction was and still remains the defining characteristic of biological life.

    The court commands no army. It's authority stems from the public opinion that it is fair and balanced. The view that the people or natural law has no place in saying what marriage is, and that everyone who says what Obama said until 2012 is a hateful bigot unworthy of employment (as are presumably most people in the world and almost everyone who ever lived) is not a fair and balanced view.

    The USPTO is not trying to be arrogant or above the law. It is simply trying to be reasonable and cautious. What should it do if someone wants to get an expletive-laden Trademark for example? Wave it on through, no questions asked? Surely some balance is in order? This is speech that the government is literally putting its stamp on, after all.

    The polity in America is completely broken and I would argue that it is the absolutists (which in this instance includes yourself) who are to blame.

    I think of Tudor England and the English Reformation. The throne first executed large numbers of Protestants. Next, after Henry VIII became Protestant, Catholics were executed in large numbers. After Henry VIII's death, Mary I (bloody Mary), assumed the throne and resumed killing Protestants. Finally there was a long period of peace during the reign of Queen Elizabeth. Her strategy was that the hardened absolutists on either side of the divide were the problem (bye-bye Puritans!) but that those who could be abide by difference could stay.

    The American polity is broken and the way out lies in balanced settlements taking into account the reasonableness of two sides.

  14. says

    What should it do if someone wants to get an expletive-laden Trademark for example?

    Holy shit, I never thought of that before! WHAT WOULD HAPPEN? WHAT THE FUCK WOULD HAPPEN? THE FLOODGATES OF HADES WOULD OPEN AND WE WOULD HAVE ELEPHANTS RAPING CHILDREN WITH CACTUS TENTACLE COCKS!

    Nothing would fucking happen. It would proceed to the opposition period, where a citizen could oppose it, if they gave a shit. And, if the Supreme Court does happen to overrule the Federal Circuit, guess what? ANY citizen who gave a shit could file a cancellation proceeding.

  15. dthyf says

    This entire article and all of the comments and no one says:

    USPTO = United States Patent and Trademark Office.

  16. OrderoftheQuaff says

    1. This is a big F U to the Circuit.

    2. I would like to see the in re Tam reasoning applied to vanity license plates.

  17. Shelby says

    Longing for a judicial regime in which petty bureaucrats who defy judicial authority get actual prison time + fines. Not because the courts are always right, but because you gotta have skin in the game. (This implies judges and prosecutors face the same risks. Another bonus of the upcoming Clarkhat administration.)

  18. Trent says

    A vast majority of states had voted on constitutional amendments defining marriage as between a man and a woman, including as recently as 2012 by 60%-39% in the case of North Carolina.

    In the 60's a majority of certain states had voted on constitutional amendments and laws that made interracial marriages illegal, even if performed in other states. Even going to the effort of kicking down the doors of homes and arresting sleeping married couples because they weren't the same race. In one fell swoop the supreme court decided (much like the case your criticize) that constitutional protections like the 14th make such laws illegal.

    One of the most important balances of power in this country is for the courts to be able to invalidate laws that violate constitutional protections. That power to invalidate has abolished state gun ownership restrictions and has restricted the governments attempts to restrict speech. When a state passes laws or constitutional amendments that are in violation of constitutional protections they should be abolished. I think you will find most of the people that support the recent gay marriage ruling believe that such laws violate equal protection and as such the state has no right to say who can and can't execute a government created contract which infers numerous rights and benefits.

    Regardless of how many people in the state support such restrictions if it violates the constitution the law should be invalidated. You may not believe that in this case the laws do violate the constitution but neither did many of the people that supported the miscegenation laws that the supreme court invalided with Loving.

    I personally think the Onion headline that day was prophetic. There will be a movie someday where the supreme court justices that opposed marriage equality will be the villains of the movie.