Drumpf ™?

TV host John Oliver made waves recently when he launched a campaign on his HBO show Last Week Tonight to “Make Donald Drumpf Again,” a reference to the Republican presidential frontrunner’s less-than-sonorous historic family name. As part of that 21-minute skit, which has been watched an astounding 21 million times on YouTube in just a few days, the host claimed to have filed for trademark protection for the term DRUMPF. Did he? Can he?

Yes, and maybe. The application for the mark, now available on the USPTO website as Serial No. 86921166, shows that he did file an intent-to-use federal service mark application for DRUMPF in connection with, “Provision of a website featuring multimedia content.” Or, strictly speaking, a New York-based Delaware company called Drumpf Industries, LLC (dutifully formed a few weeks ago) filed it. So, yes, Oliver is on file. Were he serious about registering, however, the application faces a few challenges, any one of which might be raised by a trademark examiner (or even Mr. Trump himself, should it ultimately be approved by the Trademark Office).

First, Section 2(a) of the Trademark Act forbids another from registering a mark which “falsely suggest[s] a connection with persons, living or dead.” This raises the interesting question of whether DRUMPF falsely connects with Trump. Before the show aired, the answer would almost certainly be, no. Back then, no one had heard the term let alone associated it with the candidate. Now, however, each one of the more than 21 million viewers of the YouTube clip and the show, and all the members of the greater public that learned of the name through other media outlets, associate DRUMPF with Trump. Indeed, that was the very design of the thing. The more important question, though, is whether it is a “false” connection. I would argue no, it is not. It is a connection created by a comedian expressing himself. The public connects the term with Mr. Oliver’s tirade as much (if not more) than Trump. In that regard, it is a perfectly accurate connection made by a comedian making fun of a political candidate. No one, in short, thinks (falsely) that Trump himself is connected to the filing. He is just (truly) connected to Oliver’s joke.

Second, Section 2(c) of the Trademark Act prevents registration of “a name . . . identifying a particular living individual except by his written consent.” Assuming that Trump did not and will not consent, the question in this case becomes whether it identifies him. Again, before the show aired, almost unequivocally, no. But Oliver’s goal is to use it as a form of identification for Trump. So, do we credit that goal and count it as a form of identification, or do we look at whether Trump himself uses it self-referentially? The Trademark Office examination manual explains, “Section 2(c) applies not only to full names, but also . . . nicknames, if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed.” Is, then, this “nickname” publicly connected to Trump, or is he so well known that it would be assumed? We’ll have to see how the USPTO responds, but again I would argue no, it is publicly connected to a comedian’s ironic depiction of Trump, not to the particular living individual himself. And while Trump might be famous, the name DRUMPF is essentially a parody and few would assume that he identifies with it.

Third, Section 2(e)(4) of the Trademark Act bars registration of any mark which “is primarily merely a surname” (i.e., a last name). These objections are notoriously hard to overcome and generally at the discretion of an examiner. Is DRUMPF likely to be perceived as a last name by the “purchasing public” (which, in this case, would be users of the claimed website)? Unfortunately for Oliver, the answer here might be, yes. The difference between this analysis and the above is that we now don’t care whether it is associated with Trump, but just whether it is thought of as a last name in general. And, again thanks to Oliver’s own popularity and messaging, anyone who cares enough to visit the DRUMPF site would almost by necessity perceive DRUMPF to be a last name. (Incidentally, one could write an entire law review article on the separate, interesting issues relating to the donaldjdrumpf.com URL and cybersquatting , but that will have to wait for another time).

Finally, under Section 1(b) of the Trademark Act, any applicant swears under oath that they have a good faith “bona fide intention” to use the applied-for mark in commerce in connection with the services listed in the application. Here, that is provision of a multimedia website. While usually not an issue at the outset with intent-to-use applications, Oliver (or, really Drumpf Industries) would eventually have to show bona fide use of the mark as claimed through a screen-shot or the like. The problem right now is that the site is hardly “multimedia”—it is a static page where you can buy a hat or link to a Google Chrome extension that converts the name Trump into Drumpf. Oliver could certainly (if he really cared enough) place some multimedia content on the site before filing his screen-shot, but technically he would need to have had the intent to do so at the time of filing the application. So, to truly avoid this sort of challenge, he will need to demonstrate through some evidence that as of a few weeks ago, Drumpf Industries (whatever that is) intended to build a true multimedia site.

So, will Oliver’s (I mean, Drumpf Industries’) mark ultimately make it through examination? It seems the Trademark Office (which will certainly be following this one closely) could make life pretty hard on the application if it wanted to. But, of course, would anyone even care at that point?

Peter J. Karol

Creeping Doctrines / Shifting Fees

Too often the catch-all term “intellectual property”— useful in describing practitioner specialty areas, law school courses, and text books, among other things— serves a subtly insidious function. It suggests that those discrete bodies of law which it encompasses—roughly, copyright, trademark, patent, and trade secret law—have fundamental commonality. Not only, it implies, do those legal areas overlap, but more critically that those overlaps somehow count for more than any divergences.

This has a real effect on the development of the law. Courts are quick to presume that a rule applicable to one area of intellectual property ought to apply to all. The burden, it seems, is on one challenging such an extension to show why a given area of law, say trademark law, is distinct enough from another, such as patent law, so that a rule for one should not apply to another. The courts, for instance, over the past decade worked to extend a rule from a 2006 patent case that denies prevailing patent infringement plaintiffs entitlement to injunctive relief (eBay Inc v. MercExchange) to copyright and trademark law. We are now seeing that process inexorably repeat itself with respect to statutory fee-shifting.

To be sure, there is a clear, natural and forceful argument as to why the fee-shifting rules for patent law ought to be the same as those in trademark law. To start with, federal trademark law’s Lanham Act and the U.S. Patent Act contain identical statutory fee-shifting language. Namely, “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” When the Lanham Act was amended in the 1970s to add this provision, moreover, the Senate committee proposing the change made clear that it was intending to make trademark law more like patent law (which had operated under such language since the 1950s).

This apparently deliberate act of statutory duplication has led two appellate courts recently to conclude, with relative ease, that the two provisions should be interpreted in the same way. More specifically, both suggested (one in a holding last fall and one in dicta a little over two weeks ago) that the U.S. Supreme Court’s recent clarification of the meaning of the statutory language in the Patent Act in Octane Fitness, LLC v. INCO Health & Fitness, Inc., ought to apply with equal force to the Lanham Act. See, respectively, Fair Wind Sailing, Inc. v. Dempster and Slep-Tone Entertainment Corp. v. Karaoke Kandy Store, Inc. The Supreme Court itself appeared to telegraph the propriety of such as result when it cited, in its Octane opinion, a trademark case and noted the “identical” nature of the two provisions.

The issue, though, is hardly as straightforward as these courts make it seem. There remain strong contrary arguments against conflating the two standards. Although it is of course a rule of statutory interpretation that similar language should be construed in a similar way, “pari passu,” that rule is usually coupled with the limitation that it applies to statutes enacted “for the same purpose.” The primary purposes of the Lanham Act are to make consumer purchasing decisions easier and safer by insuring the integrity of brand information in the marketplace and to protect brand good-will from misappropriation (i.e., to protect consumers and brands). The primary purpose of the Patent Act, by stark contrast, is to encourage the creation and disclosure of new inventions by granting exclusive rights for limited times to inventors (i.e., to incentivize innovative activity). As a direct consequence of these differing purposes, for well over a century the U.S. Supreme Court has held that the foundational Patent and Copyright Clause of the U.S. Constitution, Article I, Section 8, Clause 8, does not apply to trademark law.

Second, Octane was decided in an atmosphere steeped in the purported problem of patent trolls—those much-maligned entities alleged to assert frivolous patent claims without actually making or selling patented products, while often engaging in litigation misconduct. In rejecting the stingy objective baselessness and frivolity standards previously used by the Federal Circuit for awarding attorney’s fees, the Octane decision opened the door to more opportunities for prevailing defendants to receive attorney’s fees. This should, in the words of Octane, deter a patent plaintiff from bringing a borderline case that “stands out from others with respect to the substantive strength of a party’s litigating position” or litigating them in an “unreasonable manner.” Octane itself, for instance, was a case where a prevailing defendant claimed a right to attorney’s fees against a losing patent-owning plaintiff that had asserted a weak patent infringement claim.

Trademark law, though, has had nothing close to the “troll” problems faced by patent or even copyright law because it contains built-in checks against trolling. A trademark infringement plaintiff must actually use its trademark to have rights in it, and must show a likelihood of confusion in a real marketplace to prevail on its claim.

Consistent with this view, the (remarkably terse) legislative history of the fee-shifting amendments to the Lanham Act makes clear that they were designed firstly to aid prevailing plaintiffs seeking attorney’s fees against counterfeiting defendants. In fact, the Senate Report contains a definition of “exceptional cases” that defines the term using language only relevant to losing defendants (“i.e., in infringement cases where the acts of infringement can be characterized as ‘malicious,’ ‘fraudulent,’ ‘deliberate,’ or ‘willful.’”). Although the statutory language clearly applies to prevailing parties of either stripe, this legislative emphasis on preventing counterfeiting by trademark defendants at a minimum counsels against knee-jerk extensions of a rule designed to reign in patent plaintiffs.

All of this is not meant to suggest that there aren’t good reasons for applying the Octane standard to trademark cases. Some might even suggest that general civil litigation in the U.S. would benefit from giving district courts more discretion to award attorney’s fees to all prevailing parties. But it does counsel against an all-to-easy rush to superimpose patent or copyright law rules onto trademark law. All three may be forms of “intellectual property,” but hopefully courts considering the issue (such as the United States District Court for the Northern District of Ohio as it picks up the Slep-Tone case on remand) will not make the mistake of presuming that what is good law for one must be so for the others.

Peter Karol