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A Free Speech Right to Trademark Protection? Lisa P. Ramsey Understanding Michael Jordan V

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A Free Speech Right to Trademark Protection? Lisa P. Ramsey Understanding Michael Jordan V A Free Speech Right to Trademark Protection? Lisa P. Ramsey Understanding Michael Jordan v. Qiaodan: Historical Anomaly or Systemic Failure to Protect Chinese Consumers? Laura Wen-yu Young 解读迈克尔·乔丹与乔丹体育股份有限公司案：历史的异常还是保护中国消 费者体系的崩溃？ 楊文玉著 Registrability of Nontraditional Trademarks in Brazil: Current Situation and Perspectives Pedro Vilhena Registrabilidade de Marcas Não Tradicionais no Brasil: Situação Atual e Perspectivas Pedro Vilhena Commentary: USPTO Snuffs Out Marijuana Dispensary Service Mark Application: Will All Others Go Up in Smoke, Too? J. Michael Keyes Commentary: Canada’s Official Marks Regime: Officially Time for a Change! Janice M. Bereskin and Christina Capone Settimi Commentary: United in Discord: Disregarding National Decisions in the EU Martin Viefhues Book Review: The Law and Practice of Trademark Transactions: A Global and Local Outlook. Edited by Irene Calboli & Jacques de Werra Pamela S. Chestek September–October, 2016 Vol. 106 No. 5 INTERNATIONAL TRADEMARK ASSOCIATION Powerful Network Powerful Brands 655 Third Avenue, New York, NY 10017-5646 Telephone: +1 (212) 642-1733 email: [email protected] Facsimile: +1 (212) 768-7796 OFFICERS OF THE ASSOCIATION RONALD VAN TUIJL .................................................................................................................. President JOSEPH FERRETTI ...........................................................................................................President Elect TISH L. BERARD .............................................................................................................. Vice President DAVID LOSSIGNOL ........................................................................................................... Vice President AYALA DEUTSCH ..................................................................................................................... Treasurer TIKI DARE ............................................................................................................................... Secretary MAURY TEPPER ........................................................................................................................ Counsel ETIENNE SANZ DE ACEDO ................................................................................... Chief Executive Officer The Trademark Reporter Committee EDITORIAL BOARD EDITOR-IN-CHIEF, CHAIR STAFF EDITOR-IN-CHIEF KATHLEEN E. MCCARTHY WILLARD KNOX Senior Editors NEIL WILKOF JESSICA ELLIOTT CARDON RUTH CORBIN GLENN MITCHELL ELISABETH KASZNAR FEKETE RAFFI V. ZEROUNIAN FABRIZIO MIAZZETTO PAMELA CHESTEK CHIKAKO MORI Staff Editor Staff Editor BEVERLY HARRIS JOEL L. BROMBERG Editors TSAN ABRAHAMSON GUY HEATH SAURABH NANDREKAR MARIA BARATTA ANNE HIARING HOCKING AMANDA NYE MARTIN J. BERAN JANET L. HOFFMAN JENIFER DEWOLF PAINE DANIEL R. BERESKIN GANG HU JEREMY B. PENNANT STEFANIA BERGIA DOMINIC HUI NEAL PLATT LANNING BRYER AHMAD HUSSEIN MICHIEL RIJSDIJK SHELDON BURSHTEIN BRUCE ISAACSON RACHEL RUDENSKY IRENE CALBOLI AGLIKA IVANOVA JEREMY SCHACHTER ROBERT CAMERON E. DEBORAH JAY MATTHEW R. SCHANTZ JANE F. COLLEN FENGTAO JIANG MARTIN SCHWIMMER THEODORE H. DAVIS JR. HE JING JENNIFER SICKLER ANNE DESMOUSSEAUX MARIA JOSE JIRON AARON SILVERSTEIN MEGHAN DILLON SIEGRUN D. KANE ALEX SIMONSON THOMAS F. DUNN SUSAN J. KERI GIULIO ENRICO SIRONI SCOT DUVALL MIKE KEYES DEBBIE SKLAR CLAUS M. ECKHARTT ROLAND KUNZE WENDI E. SLOANE SHEJA EHTESHAM JOI MICHELLE LAKES JERRE B. SWANN, JR. KAREN L. ELBURG SCOTT LEBSON SCOTT THOMPSON MATTHEW EZELL NELS LIPPERT CHINASA UWANNA NEMESIO FERNANDEZ-PACHECO MARCUS LUEPKE ANJALI VALSANGKAR SALVADOR FERRANDIS VINCENT MARTELL EDWARD E. VASSALLO ALFRED FRAWLEY J. THOMAS MCCARTHY MARTIN VIEFHUES ALEX GARENS NANCY A. MILLER CHARLES WEBSTER ALEXANDRA GEORGE GEORGE W. MOXON JORDAN WEINSTEIN DANIEL GLAZER JOHN M. MURPHY JOHN L. WELCH ANDREW J. GRAY IV PAUL MUSSELL JOSEPH WELCH LESLEY MCCALL GROSSBERG SADAF NAKHAEI BRYAN K. WHEELOCK ANN LAMPORT HAMMITTE JOSEPH YANG Advisory Board MILES J. ALEXANDER ROBERT M. KUNSTADT ROBERT L. RASKOPF WILLIAM M. BORCHARD THEODORE C. MAX PASQUALE A. RAZZANO CLIFFORD W. BROWNING JONATHAN MOSKIN SUSAN REISS LANNING G. BRYER VINCENT N. PALLADINO PIER LUIGI RONCAGLIA SANDRA EDELMAN JOHN B. PEGRAM HOWARD J. SHIRE ANTHONY L. FLETCHER ALLAN S. PILSON JERRE B. SWANN, SR. ARTHUR J. GREENBAUM STEVEN M. WEINBERG The views expressed in The Trademark Reporter are those of the individual authors and do not necessarily reflect those of INTA. The Trademark Reporter (ISSN 0041-056X) is published electronically six times a year by the International Trademark Association, 655 Third Avenue, New York, NY 10017-5646 USA. INTA, the INTA logo, INTERNATIONAL TRADEMARK ASSOCIATION, POWERFUL NETWORK POWERFUL BRANDS, THE TRADEMARK REPORTER, and inta.org are trademarks, service marks, and/or registered trademarks of the International Trademark Association in the United States and certain other jurisdictions. The Trademark Reporter® A FREE SPEECH RIGHT TO TRADEMARK PROTECTION? By Lisa P. Ramsey∗ I. INTRODUCTION Many governments refuse to register and protect as trademarks certain categories of words or symbols that are offensive to members of the public.1 For example, Section 2(a) of the Lanham Act—the federal trademark law in the United States—bans registration of trademarks which are immoral or scandalous, or which may disparage people, institutions, beliefs, or ∗ Professor of Law, University of San Diego School of Law. I received excellent comments on this paper from Larry Alexander, Barton Beebe, Emily Burns, Rochelle Dreyfuss, Christine Farley, Dev Gangjee, Daniel Gervais, Christophe Geiger, Llew Gibbons, Shubha Ghosh, Jonathan Griffiths, Leah Chan Grinvald, Michael Grynberg, Michael Handler, Paul Horton, Justin Hughes, Jon Jekel, Kayla Jimenez, Peter Karol, Michael Kelly, Anne Gilson LaLonde, Herbert Lazerow, Ed Lee, Mark Lemley, Yvette Liebesman, Jake Linford, Orly Lobel, Irina Manta, Kathleen McCarthy, Neil Netanel, Ken Port, Michael Ramsey, Bruce Richardson, Sandra Rierson, Dana Robinson, Teresa Scassa, Mila Sahoni, Pam Samuelson, Jens Schovsbo, Martin Senftleben, Ned Snow, Rebecca Tushnet, Saurabh Vishnubhakat, Eugene Volokh, David Welkowitz, Peter Yu, the editors of The Trademark Reporter, and the participants at the Sixteenth Annual Intellectual Property Scholars Conference at Stanford Law School, the Fifth Annual International Intellectual Property Scholars Roundtable at the University of Nevada Las Vegas School of Law, the Intellectual Property in All the New Places Symposium at Texas A&M School of Law, and faculty colloquium at the University of San Diego School of Law. I would also like to thank Luc Laforest, Bruce Richardson, and other members of the Marketplace Framework Policy Branch at Innovation, Science, and Economic Development Canada for their comments on my presentation of this topic as part of the Government of Canada’s Distinguished Speaker Series in March 2016. In addition, I am extremely grateful for the information about Japanese constitutional law provided by Professors Koji Higashikawa, Ronald Krotoszynski, David Law, Shigenori Matsui, and Jun Shimizu. I also appreciate the invaluable research and editorial assistance of Melissa Abernathy, Conor Dale, Kristina Darrough, Kathryn Evans, Michelle Knapp, Jane Larrington, Ruth Levor, Judith Lihosit, Anna Russell and Ryan Williams, and the University of San Diego’s generous financial support of my scholarship. 1. Committee on Development and Intellectual Property, Study on Misappropriation of Signs, CDIP/9/INF/5 (Mar. 14, 2012), http://www.wipo.int/edocs/mdocs/mdocs/en/cdip_9/cd ip_9_inf_5.pdf (discussing trademark laws of several countries, including laws that exclude from registration trademarks that are contrary to morality or public order); WIPO Secretariat, Grounds for Refusal of All Types of Marks, WIPO/STrad/INF/5, 16-18 (Aug. 30, 2010), http://www.wipo.int/sct/en/wipo-strad/ (stating that 74 countries responded that they deny registration to trademarks contrary to morality or public order). Specific examples of these laws are included infra Part II.B. Vol. 106 TMR 797 798 Vol. 106 TMR national symbols.2 In addition, Canada’s Trade-marks Act prohibits the adoption, use, and registration of any scandalous, obscene, or immoral word or device used as a mark in connection with a business.3 Such laws are used to deny trademark protection to subject matter ranging from profanity, obscene images, and drug references to expression that ridicules indigenous communities, racial groups, and religions. When a statute requires trademark offices to refuse to register such “offensive” trademarks, some commentators and courts claim the statute violates the right to freedom of expression. This free speech argument was raised by Pro-Football, Inc. in a trademark case currently pending in the Fourth Circuit Court of Appeals after a district court upheld the decision of the U.S. Patent and Trademark Office (“USPTO”) to cancel six registrations of marks containing the word REDSKINS used by Washington, D.C.’s football team on the ground the mark may disparage Native Americans.4 A similar argument was also made in the Federal Circuit Court of Appeals by the trademark applicant in In re Brunetti after the USPTO refused to register the term FUCT as a mark for clothing on the ground that the word is scandalous.5 The right to freedom of expression was also invoked by a trademark applicant in the case In re Tam after the USPTO rejected Simon Tam’s application to register THE SLANTS as a mark for entertainment services
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