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“thus, for example, if an applied-for mark would be refused registration as scandalous under sec 2, it would also be denied protection under 43(a) for the same rationale.”.
Are you confident about this? I’ve always thought not – that the rationale for refusing to register scandalous marks was concern about govt imprimatur; the other exclusions, on the other hand, go to concerns that are generalizable – ie, whether something is serving as a source identifier and whether protection will inhibit competition or interfere w patent or copyright, etc. I generally agree that sec 2 is co-extensive w subj mat under 43 except for that one provision – but part of the reason is that the other limits come from a blend of common law rules having to do w tm’s basic goals.
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Hmm, fair point. I still think that, for example, if the PTO struck Redskins from the register, no federal court would protect the wordmark under 43(a), perhaps via its general power under Section 37, and in the tradition of public morals. But on reflection, I think you’re right that the casebook states this too definitely. The government imprimatur thing is a fair objection, but I wonder if 43(a) would be perceived to operate similarly. I will convert this issue in the book into more of an open question.
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It’s a really interesting issue, but I think I disagree. If someone started selling Redskins T-shirts that were not a parody or commentary, i suspect that a court would find them infringing and/or counterfeit. I thought that the general consensus after the Redskins opinion was that the team had lost its registration, but probably not its common law rights. But what do I know? I guess the important thing is just to soften the language and make clear that the issue has never been addressed so remains an open question.
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Supporting Barton’s view – the last sentence of the excerpt from the Cocksuckers case:
“To reiterate, the outcome of our decision is that Fox will remain free to use her mark in commerce. She will be unable, however, to call upon the resources of the federal government in order to enforce that mark.”
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