Practitioners v Professors goes two rounds at INTA

The first resolution debated was: “That the bar on registrants of disparaging marks in 15 USC §1052(a) violates the First Amendment.”

Philip Hampton of Haynes and Boone argued in favor of the resolution, saying that the TTAB should not have cancelled trademarks of the Washington Redskins on the grounds of them being disparaging to Native Americans. He questioned what defines the term “disparaging”.

He noted that when he was responsible for the Trademarks Office at the USPTO in the 1990s someone tried to register a trademark for SLICK WILLY for a condom with a picture of President Bill Clinton on it. He gave another example from that time: “I got a visit from the Sons of Italy because they wanted anything close to Mafia to be taken off. But I had one for a restaurant where the lady’s name was Fia, so it was MA FIA. Is that disparaging? Is that parody?”

Christine Farley of the American University Washington College of Law argued that the term disparaging is not vague. She rejected arguments that the recent Redskins and Slants rulings were unconstitutional because they were made in the context of use. “The Redskins said the team only means to use it in the most honorific fashion,” she noted.

Hampton countered: “You got pretty deep into the First Amendment, but you’re a law professor and don’t have to get into practical things. What is disparaging? If we declare that part of the law unconstitutional, what about Uncle Ben or Aunt Jemima?”

He later added: “Maybe we need to go back and redefine terms for the statute but as written now it is broad. Do Catholics get to object to a team called the Saints? Do short people get to object to a team called the Giants?”

The second resolution debated was: “Dilution does not make a significant difference in trademark cases.”

Barton Beebe of the New York University School of Law argued this was true. He said dilution only proved decisive in two cases in the past seven years. One was Hershey v Art Van Furniture and the other was American Century Proprietary Holdings v American Century Casualty Company. In both cases in 2008 the court found no infringement but dilution.

Beebe said he has been pointing to these two cases for a number for years now. “This is still all we have in terms of rulings saying there is no confusion but likelihood of dilution since 2007,” he noted.

He gave four reasons why dilution does not make a significant difference. The first is that likelihood of confusion now does nearly all the work that likelihood of dilution was meant to do. The second is that courts are finally enforcing the heightened fame requirement. The third is that courts don’t know what dilution is. The last is that courts continue to be hostile to anti-dilution protection.

Scot Duvall of Middleton Reutlinger disagreed, arguing that dilution does matter. He was co-counsel in the Victoria’s Secret case at the Supreme Court. Victor and Cathy Moseley were sued by Victoria’s Secret after opening a store called Victor’s Little Secret, which sold some racy goods “that included some things made of leather and some things that were edible,” offered Duvall.

The District Court found no likelihood of confusion, but found likelihood of dilution on the issue of tarnishing. “Dilution mattered to the Moseleys,” said Duvall.

The Supreme Court reversed the ruling based on no evidence of actual dilution. But in the interim Congress enacted the Trademark Dilution Revision Act, which adopted likelihood of dilution and tarnishment.

“The reason it was a Pyrrhic victory was that they had to change the name of their business to Cathy’s Little Secret so all this was for naught and it is attributable to the law of dilution,” he said.

Barton countered that this is just one case: “Scot has a very sad exception to the rule but as a general rule anti-dilution is not significant.”

He added: “I have to put on the record and say that perhaps we should stop talking about dilution, and just talk about anti-blurring and anti-tarnishment protection.”

But not everyone agreed. A show of hands in the audience suggested they were against the resolution.