Can’t register trademark with Statue of Liberty holding silenced gun because that would be ‘shocking, offensive and disparaging’?

July 10, 2014
AdvancedArmament

So argued a U.S. Patent & Trademark Officer examiner, in refusing to register the mark. Fortunately — though more than four years after the application was filed, and nearly two  years after the initial hearing on appeal — the decision was reversed. (This happened late last fall, but I just ran across the case in a recent Westlaw query, and hadn’t seen any reference to it before.)

Federal trademark law provides that people can’t register trademarks that contain “immoral, deceptive, or scandalous matter” or that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The examining attorney concluded that the mark was indeed “scandalous” and “disparag[ing].” To quote the Trademark Trial and Appeal Board,

Specifically, the examining attorney argues that the Statue of Liberty is “a universally recognized symbol of peace and welcome”; that “[l]ike guns, silencers are polarizing objects, illegal in many jurisdictions, and surrounded by a cloud of controversy that they are perceived as contributors to violence and crime”; and that the “greeting by the Statue of Liberty waving a pistol with an attached silencer changes the symbolic context of the Statue of Liberty from a welcoming beacon of light to a threatening symbol … result[ing] in the image rising to the level of scandalous and offensive matter that is shocking to the sense of decency and propriety.” Put succinctly, the examining attorney argues that the “combination of the Statue of Liberty plus a silencer in place of its torch, plus a banner displaying the word SILENCERS is shocking, offensive and disparaging” to a substantial composite of the population and should thus be refused registration….

In her supplemental appeal brief and in conjunction with her submission of the supplemental evidence, the examining attorney argues that there has been a “shift in public opinion after recent high-profile gun violence” and that “new stricter laws against guns reflect negative public perception” of firearms. In support, she points to online articles and other commentary as reflective of recent increased public support for stricter gun ownership laws. She also notes recent reactions to guns being used in advertisements and other media and asserts that “if contemporary attitudes reveal that people are offended by seeing a picture of a gun in an ad, a substantial composite of the public is likely to be shocked and offended upon seeing an image of a gun with a silencer in the arms of the country’s symbol of peace and welcome, i.e., the Statue of Liberty.” Finally, the examining attorney references certain materials with images depicting, in part, the Statue of Liberty holding a gun and relies on a few of the posted reactions to these images as showing that “public opinion again sides with the negative connotation of an image of a national symbol like the Statue of Liberty with a gun.”

No, said the Appeals Board (some paragraph breaks added):

We readily note that the issues involving the ownership of firearms and their use are frequently the subjects of debate amongst Americans and increasingly so in light of recent, high-profile shootings and Supreme Court decisions concerning the Second Amendment right to bear arms. Nevertheless, we are not convinced by the examining attorney’s evidence that any objections by some, or even perhaps many, to firearms in general necessarily equate to objections to silencers in particular; or unquestionably require us to conclude that applicant’s mark will rise to the level of “giving offense to the conscience or moral feelings” or be “shocking to the sense of decency or propriety” of a substantial composite of Americans.

The record is replete with evidence, and there is no real dispute, that the Statue of Liberty is perceived as a welcoming, national symbol of liberty and conjures many other positive feelings among Americans. The record also establishes that it is not uncommon for persons to adopt and/or register marks incorporating the Statue of Liberty holding an object, e.g., a cup of coffee or football, in place of the torch, thereby suggesting a connection with goods and/or services being offered for sale. Such marks utilize the Statue of Liberty because they are clearly intended to engender a sense of patriotism, Americana, or, perhaps of New York City, where the statue is located, for those who would use or purchase the associated goods or services. We acknowledge that most examples of such marks in the record involve fairly innocuous objects in place of the Statue’s torch and that a handgun with a silencer might not be viewed as innocuous by all. Moreover, the record does indeed show there is a negative image associated with silencers when discussed in connection with criminal activity. On the record before us, however, we cannot determine what fraction of those who associate silencers with criminal activity may nevertheless not view the mark as scandalous.

In this regard, we note that the mark does not depict the Statue of Liberty in a threatening pose or in any manner suggestive of criminal activity. Indeed, it may be viewed by many as suggestive of, and consistent with, the right to bear arms that is enshrined in the Constitution. The disclaimed wording MADE IN THE USA, appearing below the statue, would seem to reinforce such a view.

We disagree with the examining attorney’s suggestion that the mark is somehow more offensive than it would be if it only showed the Statue of Liberty holding a gun, because of the inclusion of the silencer and the banner design containing the term SILENCERS. See Brief, p. 9 (“the Statue of Liberty is not just holding a gun, but a gun with an attached silencer…. Furthermore, the statue is displayed enveloped by a banner that prominently reads in large letters SILENCERS.”). We do not believe that the record before us supports the examining attorney’s suggestion. Indeed, we note that the word SILENCERS and the depiction of the product may well be viewed as a descriptive or generic reference to the actual goods….

The evidence submitted by the examining attorney involving negative reactions to depictions of the Statue of Liberty with handguns or in connection with violent imagery does not dispel our doubt that applicant’s mark should be refused registration on the basis of scandalousness. The website and article excerpts [submitted by the examining attorney, and discussed in other parts of the opinion -EV] do not deal with the mark at hand and are few in number…. It is thus difficult, if not impossible, to fully understand the context of the reported negative reactions or whether such reactions would extend to the image in applicant’s mark….

The mixed record in this case leaves us with doubt about whether applicant’s mark gives “offense to the conscience or moral feelings” or is “shocking to the sense of decency or propriety” in the minds of a substantial composite of Americans. This leads us to the conclusion that it would be prudent, under the circumstances, to permit the mark to proceed to publication and, if a person, entity, or group “find[s] the mark to be scandalous …, an opposition proceeding can be brought and a more complete record can be established.”

I’m not wild about the statutory exclusion from registration of “immoral,” “scandalous,” or “disparag[ing]” trademarks; though such exclusion doesn’t stop people from using such trademarks, it does deny them some potentially valuable legal remedies when others use those trademarks. As I noted with regard to the Redskins case, I think that such exclusion from a broadly available benefit is unconstitutional when it is done in a viewpoint-based way (though I noted that courts have not agreed with me on this), and the examining attorney’s initial decision in this case helps illustrate how such judgments may well prove to be viewpoint-based. Nonetheless, I’m glad at least that the Appeals Board has reversed this decision, though I would have liked the reversal to be more conclusive, and leave open less room for future reconsideration.

UPDATE: Unfortunately, the front page template only shows one of the categories in which a post is placed, but I should note that this is the rare post that I’ve placed in both the Guns and Blasphemy categories.

Eugene Volokh teaches free speech law, religious freedom law, church-state relations law, a First Amendment Amicus Brief Clinic, and tort law, at UCLA School of Law, where he has also often taught copyright law, criminal law, and a seminar on firearms regulation policy.
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