Two cases have greatly impacted how disparaging marks are evaluated under the Lanham Act. The first is Matal v. Tam where an Asian band called The Slants was allowed to trademark their band name despite the term being disparaging under the Lanham Act. The Court decided that this particular part of the Lanham Act that prohibited disparaging, immoral, or scandalous marks is unconstitutional under the First Amendment because it will not pass the strict scrutiny standard. This ruling inspired the second case in In re Brunetti the term FUCT was considered as an immoral or scandalous mark, but the court ruled the mark could be registered and that the terms immoral and scandalous are too broad. These cases have impacted greatly what can and can not be registered as a mark. Most companies have not rushed to register marks that would be disparaging, immoral, or scandalous because of the fear they will lose customers that may be offended. Companies that use these marks are those who sell products of a sexual nature, companies that would like to add shock value to the experience you get with them, or people who wish to reclaim terms that were once used negatively. Some examples of this are the band The Slants in the Tam case, Dirty Dicks Crab House, and French Connection UK or FCUK. Since the case, the USPTO has not seen many marks that would have previously been deemed disparaging, immoral, or scandalous.
In recent years Artificial Intelligence (AI), which reduces the role of the human being in the product suggestion and product purchasing process, has rapidly presented challenges to some of the historic concepts and principles of trademark law as we know it. AI now raises several questions related to trademark law, involving confusion, imperfect recollection, the average consumer, and secondary infringement.
The impact of AI systems in everyday life and the process of buying products and services, which in essence is the focus of trademark law, is increasing. It is predicted that by 2020, 85% of customer service interactions in retail will be powered or influenced by some form of AI technology. AI global revenue is predicted to skyrocket from $643.7 million in 2016 to $36.8 billion in 2025. Another report from advertising agency J Walter Thompson suggests that 70% of so-called millennials appreciate brands using AI technology to showcase their products, with a report from Statista suggesting that 38%percent of consumers receive better purchasing guidance with AI than without.
At its very foundation trademark law is all about humans and human interaction with brands and the purchasing process. Trademark law buzz words such as imperfect recollection, phonetic, conceptual and visual similarity, confusion and the average consumer all center around human beings and their interaction with brands. AI effectively reduces or, at its most extreme, completely removes the human being from the product suggestion and product purchasing process.
In today’s society AI is used in our everyday lives, whether we recognize it or not. Below are a few examples of current AI in retail:
Amazon’s Echo product is run by a voice recognition software program called Alexa and is essentially AI. Although at present a default setting prevents Alexa automatically ordering products, even with the default it makes product suggestions to consumers based on various parameter such as past purchasing decisions. This removes a crucial part of the product selection process frequently considered in trademark law. Alexa is the one analyzing the market; it has all the market and branding information, not the consumer. If a consumer asks Alexa for tea, what happens if Alexa suggests an infringing product and the consumer buys it?
AI is starting to appear in the form of virtual shopping assistants or personal stylists. One such example is Mona, a personal shopping app that learns customer preferences and then makes purchase suggestions based on the user’s style and price bracket. Mona learns from customer feedback to adapt and tailor the suggested items and the more you use it, the more it learns. It is entirely possible that in future Mona, or applications like Mona, will reach the stage where the customer can simply request a whole new wardrobe and Mona will select, order and deliver it.
As previously stated, there are several conflicts arising from artificial intelligence and trademark law. A common conflict that arises centers around the idea of the average consumer. In current law the average consumer is deemed to be reasonably well informed and reasonably circumspect and observant, but rarely has the chance to make direct comparisons between marks and must instead rely upon imperfect recollection of the relevant marks. Furthermore, the average consumer’s level of attention varies according to the category of goods or services in question. These are all inherent human “faults” built into trademark law.
We must address important questions such as: when AI is the consumer, do these parameters still apply? Would AI be likely to suffer from imperfect recollection? Does an AI’s level of attention vary according to the product? This is unlikely since AI does not have a memory like humans, and it is a computer program and is capable of perfect recollection. There is often a large amount of debate in UK trademark cases over who is the average consumer in the market under consideration. With AI, is it now the average consumer? Is there an average AI consumer with parameters of purchase varying in each household?
Another conflict centers around the concept of confusion or likelihood of confusion in trademark law as to whether trademarks are considered similar, is unlikely to apply to AI. If an AI program has a perfect recollection, it will not be confused as to the brand name of a product. Can AI associate trademarks? Does AI consider the reputation of trademarks? Does AI even consider brand names in purchasing decisions, which may solely be based on price, quality and speed of delivery and the like? If the AI program suggests a product that infringes a registered trademark or is a counterfeit, would the AI be deemed a secondary infringer?
AI will undoubtedly revolutionize trademark prosecution and enforcement over the next few years. Therefore, it is important to initiate both national and international discussion on the evolution of IP law and policy in an increasingly AI-driven world.
By: Alexis Harrison
My social justice presentation discussed the relationship between tourism; cultural appropriation and heritage-hijacking; American opportunism and the disparity between trademark protection in various areas of the world. ‘Bula’—pronounced ‘boolah’--is a greeting phrase heavily used in Fiji which translates to life or good health. The phrase is akin to theHawaiian greeting ‘Aloha’ and is often stated with enthusiasm. ‘Bula’ is also related to theceremony of kava drinking in Fiji. Kava is a mildly narcotic drink. Fijians say the kava drinking ceremony has deep cultural meaning and value to its people; thus, they are angered by commercial use of the phrase in US businesses. The kava drink has become a popular drink for Fiji tourists. Additionally, it is worth nothing that the Fiji trademark laws are largely outdated and the US system provides superiors protections for its citizens and innovators.
‘Bula’ has been registered in various marks submitted to the USPTO. However, the issue that incited outrage from Fiji officials was caused by the 2018 news story of a Florida bar andcafé chain’s registration of “BULA KAFE.” Critics point out that the purpose of using ‘Bula’ isso that the business may capitalize off of the goodwill and vibes associated with the island. SomeFiji officials has adamantly publicly opposed the registration arguing that the mark is a “blatantcase of heritage-hijacking.”
My presentation explored whether the nuanced differences between culture and heritagemake for a sound argument that “heritage-hijacking” is somewhat different and more seriousthan cultural appropriation. I theorized that the complexity of the necessary conversation surrounding cultural appropriation as a legal phenomenon to avoid, warranted more serioustreatment for the so called “heritage-hijacking” or at least an increased cultural sensitivity whenfiling for marks based on foreign customs. The negative connotations and general indifferencesurrounding “cultural appropriation” may be lessened by finding a “reasonable” standard which society can use to measure whether the wrongful exploitation of another group’s customsamounts to conduct that requires legal action.
Cultural appropriation is defined as “the act of adopting elements of an outside, often minority culture, including knowledge, practices, and symbols, without understanding orrespecting the original culture and context.” ‘Heritage’ is a broader term that sometimesencompasses aspects of culture but is known to be more consistent, permanent and synonymous with inherited customs and traditions. The emphasis on inherited information to facilitate priorgenerations’ legacy differs from the definition of culture focusing on current people in society ascreators. If we draw stronger distinctions between culture and heritage larger audience may more readily understand the significance of cultural explotation.
The quote which inspired my presentation was made by the Attorney General for Fiji:“We would never give permission for anyone - particularly someone outside of Fiji looking to profit - to effectively claim ownership of ‘bula’, a word so deeply-rooted in our national identitythat it has become synonymous with Fiji.” Therefore, cultural appropriation may be sufficient towarrant legal action--such as the cancellation or opposition of a mark--when the exploitedmaterials and customs are so “deeply-rooted in [a specific group’s national/cultural] identity that it has [becomes] synonymous with [the stated cultural or national group].” While this standard is theoretical rather than factual, the quote does provide a basis for understanding when culturalmay go too far to allow another to effectively profit from another group’s misfortunes.
By: Tiara Proctor
In recent trademark news, the Boy Scouts and Girl Scouts have been fighting over who has the right to use the term “Scouts”. The dispute stems from the Boys Scouts decision to begin allowing girls into the organization to fight back against declining enrollment numbers in light of the stigma that Boy Scouts are non-inclusive. In their efforts to be more inclusive the Boy Scouts have not only begun allowing girls to participate but they have even allowed gay scout leaders and transgender boys to participate in the organization. All of these decisions surrounding gender/sexuality inclusion have led to the most controversial decision and the crux of our discussion, the name change from Boy Scouts of America to Scouts BSA.
The main claim raised by the Girl Scouts is that due to the name change and the recent acceptance of girls into the Boy Scouts organization, there is a likely hood of confusion between the organizations and the marks. While both marks use the term SCOUT, the distinguishing factor has been that neither organization could use the term SCOUT with the identifier of GIRL or BOY in front of it. Nevertheless, the Girls Scouts have a claim for actual confusion in the market. The complaint from the Girl Scouts to the Boys Scouts provides examples of how the Boy Scouts, rather Scouts BSA, have consistently used the word “girl” and “scout” together in advertising to make consumers aware that the organization is accepting girls. The biggest issue has come at the local level where local troops have had girls join the Scouts BSA believing that they were joining the Girl Scouts.
As the dispute continues between the Girl Scouts and Boy Scouts for control over the mark SCOUTS, the Girl Scouts have registered for a trademark to take ownership of the term. An approval of the trademark application would require the Boy Scouts, Scouts BSA, to get permission from Girls Scouts to use the term SCOUTS in its name. Although, it is highly unlikely that the Girl Scouts would authorize such use of the term SCOUTS and even more unlikely that the Girl Scouts will succeed in the registration of the mark SCOUTS. For more information and to continue following this dispute check out the complaint at the link below.
One of the many ramifications of social media has been the rise in various forms of online activism. We typically encounter this online activism in the form of a phrase or slogan used as a message to create awareness, share information and organize action around a particular cause or issue. In the past few years, the number of trademark applications for phrases created from political and social justice movements has drastically increased. #MeToo, Black Lives Matter, Justice for Trayvon, and September 11, are textbook examples of the kind of social and informational messages that many have tried to register as trademarks.
The purpose of a trademark is to serve as a source identifier for consumers, allowing them to identify and distinguish a particular source of goods and services. Thus, if a proposed trademark is merely an informational, social, or political message, it fails to function as a trademark. The USPTO has not been receptive to the branding of social justice movements. While it has not been explicitly stated, the USPTO may be reluctant to grant registrations of this sort for fear that disinterested parties may try to capitalize on every social justice movement in the future. Accordingly, many of the applications stemming from these movements are unsuccessful and abandoned post filing once they receive office actions from the USPTO.
A specific example of social movement branding can be found by analyzing the trademark applications stemming from the 2012 Trayvon Martin killing. At least nine trademark applications were filed surrounding the death of Trayvon Martin, yet only two were successful.
Trayvon Martin’s mother, Sybrina Fulton, filed two trademark applications, “I Am Trayvon” and “Justice for Trayvon”, immediately following the killing of her son. Both phrases were rallying cries created during the community protests demanding the arrest of his killer, George Zimmerman. Not only where these phrases used on signs, many protesters began selling apparel and other consumer goods with the same phrases. Fulton received mixed feedback based on her actions. Cynics suspected opportunism and proffered that the commodification depleted the message, while others felt that Fulton was well within her right to take pre-emptive measures to prevent others from profiting or exploiting Trayvon’s name.
Many outside parties, attempted to profit from Trayvon Martin’s name, submitting trademark applications such as, “#peacefortrayvon”, “Justice for Trayvon”, and “Justicefortrayvon.net”. Many of these applications were sent refusals under Trademark Act Section 2(d) and Section 2(a), respectively. The primary concern with allowing the branding of social justice movements, as seen here, is the consumer’s likelihood of confusion. A consumer would likely believe that products stemming from the aforementioned marks were associated with Martin’s family; however, that is not the case. Moreover, granting these marks would support a false connection between the products and Trayvon Martin.
Defensive registrations, such as Fulton’s pre-emptive action to prevent profiteering from outside parties, often backfire because they do not meet the trademark requirements. Although used as an effort in weeding out those using Martin’s name in bad faith, defensive registrations are often not practicable because they are not intended to be used in commerce. Martin’s family ran into this issue multiple times when the USPTO required an acceptable identification of services and sent an office action for title of a single work. As such, the two trademarks that were successful did not happen overnight.
Ultimately, the only two trademark applications stemming from the Trayvon Martin killing that have been successful are “I Am Trayvon” and “The Trayvon Martin Foundation”. It took over two years and multiple efforts to successfully register the mark “I Am Trayvon”. Similarly, it took over four years to successfully register the mark “The Trayvon Martin Foundation”. The length of time, among other factors, it took Martin’s family to successfully register marks stemming from his death speak to the reluctance of the USPTO to grant trademarks stemming from social justice and political movements. Due to the continued growth and pervasiveness of social media activism, I do not foresee the USPTO changing their stance in the near future.