trademark applications

March Madness always brings about trademark enforcement-related news.  What we generally don’t see is news about a participating school submitting trademark applications while the basketball tournament takes place.  But according to numerous articles last week, including this one in the Baltimore Sun, the University of Maryland Baltimore County hadn’t sought trademark registrations prior to securing the first upset of a #16 seed over a #1 seed two weeks ago.  After that historic victory, however, the University asked attorneys to file trademark applications for the phrases “16 over 1,” “UMBC Retrievers,” and “Retriever Nation”—which the Baltimore Sun poignantly characterized as capitalizing on the University’s “skyrocketing commercial cachet.”  Given the immediate increase in university bookstore apparel sales, the University’s quick response to that newfound cachet is more than timely.

Contrast UMBC’s recent trademark enforcement efforts with those of Iowa State University, which we’ve previously covered on this blog.  As a reminder, Iowa State University had refused to continue to license university trademarks to two of its students and their chapter of the National Organization for the Reform of Marijuana Laws because the organization was using the university’s mark on pro-marijuana t-shirts.  That dispute raised issues of the interplay between trademark licensing principles for public universities and students’ First Amendment rights, the latter of which the federal court found was trump.  Last week, in addition to the $150,000 emotional distress damages and $193,000 in legal bills already awarded, the judge approved another $598,208 in attorneys’ fees and costs, bringing the total cost to state taxpayers to almost $1 million.

These quite varying anecdotes serve as a reminder that it isn’t just public and private companies that think and care about trademark enforcement—universities do too, even if they’re late to the party.

In direct response to the U.S. Supreme Court’s decision striking down the constitutionality of section 2(a) of the Lanham Act, which as enacted barred the registration of disparaging trademarks, there is reason to believe that offensive trademark registration applications are on the rise.

According to Reuters, there were at least nine new applications filed with the U.S. Patent and Trademark Office (“PTO”) between the June 19, 2017 Supreme Court ruling and the end of July 2017.  Such marks include versions of the N-word, a swastika symbol, and other offensive terms/phrases.  For example, Snowflake Enterprises LLC has filed multiple trademark applications for offensive marks, examples of which can be found on the PTO’s website (a version of the N-word can be seen here and a swastika symbol can be seen here). Prior to the Supreme Court’s ruling, it’s likely that the PTO would have outright rejected such filings as they had with similar filings in the past.  But the PTO is now under new guidance—that trademark applicants are protected by the free speech rights guaranteed under the First Amendment to the United States Constitution.  According to Reuters, the PTO told its staff a few days after the June 19 Supreme Court ruling that they could no longer use section 2(a) of the Lanham Act to reject a trademark application for a disparaging trademark.

The full effect of the June 19, 2017 Supreme Court ruling remains to be seen, but the evidence to date suggests that applications for offensive trademarks will increase and that the PTO will be forced to approve them if the marks otherwise qualify for trademark registration.  However, if the applicant does not establish actual use of the offensive mark or does not use the offensive mark as a source identifier, the PTO can still reject the application.  Thus, with the exception of the once-applied disparaging trademark ban, the PTO will continue to apply the same standards to trademark applications as it has in the past.

Prior Above the Fold blog posts explaining the Supreme Court’s June 19, 2017 ruling in more detail can be found here and here.