Is that a Situation in your pants, or are you just happy to see me

It looks like Jersey Shore is beginning to spawn “sound alike” products, as this article on TMZ.com mentions (I never, ever thought I’d be citing to TMZ in my life)

Two applications were filed with the U.S. Patent and Trademark Office in the hopes of sealing the deal on the phrase for use on clothing — however, neither one of the applicants is Mike “The Situation” Sorrentino himself.

The quasi-law site The Smoking Gun fills in the details.  Looks like one application was filed by the brother of the “real” Situtation, Michael Sorrentino, and another by an unrelated Jersey individual.

The interloper’s application, no. 77/891,064, is a 1(b) intent-to-use application, meaning that the mark has not yet been used in commerce.  It establishes a priority date as of the date of filing (if, of course, the application is approved).  It was filed on December 11, 2009.

Sorrentino’s brother’s application, no. 77/901,546, is for “The Situation” (stylized).  It’s a 1(a) application, meaning that the company has already begun to use the mark in commerce.   The first use date is December 21, 2009. That means, all things being equal, the interloper has nationwide priority.  (But expect a pretty good fight.  The porn company has an attorney; it looks like the interloper filed pro se.)

Users at CafePress creating an “I [heart] The Situation” thong should be wary, or, if they’ve been around for a while, should oppose both applications!

Mike "The Situation"

Yeah, but will the undies give me a six-pack that I'll feel compelled to show all the ladies?

Also surprising is that there do not appear to be any other applications or registrations for “THE SITUATION,” and there is only one other registration in International Class 25 (the clothing goods class) that significantly features “situtation” in the registration– FEEL GOOD SITUATIONS, Reg. No.  3,723,714, for “short sleeved or long sleeved t-shirts,” owned by an individual in Humble, Texas.  Interestingly, the registration was issued December 9 of this year.  Is “situation” the dominant portion of that mark, such that confusion would be likely with “The Situation”?  Stay tuned.

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I’m Ba-aack.

After my more than yearlong hiatus, I’m back to the blog.  I’ve taken a job as a staff attorney for a justice of a state appellate court in Texas.  Thus, my blogging is restricted by (a) the Code of Judicial Ethics, and (b) the fact that I actually have a paying job.  Even though my day job would not likely to be confused with one regularly dealing with IP issues, my love of these topics hasn’t waned.  So the topics on which I can blog are limited, and my time is limited, but don’t delete me from your rss feed reader list yet.  I hope to bring short thoughts at least bi-weekly.

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Blogging Hiatus

I have recently received a job with the judiciary in Texas.  Until I discuss the possibility of continuing to blog on selected topics with my supervisor, I’m afraid that I’ll be on a hiatus.

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The Bus (the NFL trademark bus, that is) rides again…

With the Pittsburgh Steelers’ sixth Super Bowl (err, I mean “Big Game“) victory, local fans are quick to make merchandise celebrating.  And the NFL is quick to demand that those fans cease and desist from manufacture of that merchandise under copyright and trademark law.  While I can completely understand the NFL’s enforcement efforts for blatant knock-offs, the latest victim was this T-shirt, which did not feature the words “Pittsburgh,” “Steelers,” the Steelers logo, and only sort of approximated the Steelers’ color scheme.  Yet, the manufacturer made one fatal mistake:  He included an image of the Lombardi trophy.

The logo that caught the ever-watchful eye of the NFL
The logo that caught the ever-watchful eye of the NFL

The NFL sent Dan Rugh, owner of CommonWealth Press on the South Side and the Web site where the shirts were sold, a cease-and-desist order Wednesday stating use of the Lombardi Trophy design violates an NFL registered trademark and copyrighted design.

The NFL also objected to the use of a new trademark, SIXBURGH, even though the NFL has not used the mark, and it includes only the “mashing” of “Pittsburgh” and “six.”

“We have also learned that your company is producing and offering for sale SIX BURGH shirts using the colors of the Pittsburgh Steelers Club,” the NFL’s letter stated. “These elements, particularly in combination, clearly misappropriate the goodwill enjoyed by the Pittsburgh Steelers Club, which now has won six NFL Championships.”

The NFL objects to the use of the team colors or any other indication or likeness of the Pittsburgh Steelers, including the designation Sixburgh, “as that’s likely to confuse consumers who might mistakenly believe that the shirts were authorized by the Steelers or the NFL,” NFL spokesman Dan Masonson said.

[...]

In an interesting twist, the NFL could receive a cease-and-desist order of its own. The NFL Shop at http://www.nflshop.com has been selling “Six-Burgh” T-shirts.

SmartArt, LLC of Queenstown, Md., applied for the trademark to the term “SixBurgh” on Jan. 14 for T-shirts, sweatshirts, caps and jackets and the company didn’t license the term’s use to the NFL. SmartArt has been marketing SIXBURGH T-shirts featuring James Harrison’s signature.

“We’ve done well with it,” said Fred Fillah, SmartArt’s marketing director. “I did a lot of research on ‘SixBurgh.’ Prior to us trademarking it, there wasn’t anything. I couldn’t find it anywhere. I did due diligence. You’ve got to respect other people’s rights and what’s considered fair.”

Mr. Fillah said his attorney will be investigating whether the NFL has violated his trademark.

“To the extent the term SixBurgh is being used in a context that refers to the Pittsburgh Steelers, only the team or its authorized representative, in this case NFL Properties, may use it,” the NFL spokesman, Mr. Masonson said.

The NFL is great at arguing that it has rights to trademarks that it hadn”t used (or necessarily thought of).  It won a case when the L.A. Rams moved to St. Louis against a person who attempted to register “ST LOUIS RAMS” before the NFL and then hold the NFL hostage for trademark licensing rights. (I’ll look for the citation.)  The Court found that the early announcements of the team’s move and other uses gave the NFL priority.  But it would seem to me that this is a different situation, particuarly if the applicant for SIXBURGH did not attempt to hold the NFL hostage when it filed its application. After all, SIXBURGH can refer to nothing more than the city that houses the team that has won six NFL national championships, not necessarily the team that actually won the championships.  How ironic it would be if discovery showed that the NFL marketing guys “discovered” the SIXBURGH application and then “suddenly,” beliving the mark to be owned by the NFL through some sort of doctrine of implication, created merchandise with the mark.

If SmartArt has some money to spend and has the smarts to get an experienced trademark firm, this may be an interesting case.

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REALTOR trademark sucks?

Is REALTOR generic? At least one former agent thinks so.

Is REALTOR generic? At least one former agent thinks so.

Interesting videos and posts at this website, owned by a former member of the American Association of Realtors who is complaining about the organization’s oversight, and who has received warnings about the use of the trademark REALTOR.  She notes in her video that members of the association are not allowed to use the trademark in website URLs, and former or nonmembers are also not allowed to use the mark.  But, she notes, who doesn’t use the word “Realtor” to refer to any real estate agent, not just a member of the association? She also notes that she owns a treatise on local real state law that refers to agents as realtors.

Is REALTOR generic?  It’s certainly used as a noun rather than an adjective (“Ask for a REALTOR” not “John is a REALTOR real estate agent”).  The Association even says, in advertisements, to “Call a Realtor today!”

And I agree that, even though I recognize the difference between a real estate agent (generic) and a Realtor (a member of the Association), I bet very few people (outside the industry) do recognize that difference.  To me, it seems that this trademark is close to being generic.  The one saving grace is that there is still a fairly easy way to describe an agent who is not a member of the association: a real estate agent.  Still, though “realtor” is a simpler way to describe a person in that occupation, and I could imagine that a non-member could have a reasonable argument that he or she should have a right to use a word that all of the public uses in ordinary conversation.

My arguments, however, appear to be unavailing, at least before the Trademark Trial and Appeal Board, which, in 2004, determined that REALTOR was not generic.  Much of the decision seemed to turn on a shoddily-produced survey by the petitioners seeking to cancel the mark and a very quality survey done by recognized professionals on behalf of the Association.   (The Board indicated that, had the petitioner’s survey been performed properly, the result may be different.  The Board also indicated that it saw no evidence indicating that the Association misused the trademark.  Perhaps if they saw that YouTube video, they might be pursuaded otherwise?) There is also a potential separate argument that the Association obtained the REALTOR mark fraudulently, appropriating a common word that appeared in a Sinclair Lewis book.  The Board hinted that the originator of the word was a member of the early formation of the Association, but did not rule on the fraud issue.

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Ssh! We’re “reflecting.”

According to the Houston Chronicle, the U.S. Court of Appeals for the Fifth Circuit this week heard oral argument on whether Texas’s school “moment of silence” law violates the Establishment Clause:

U.S. District Judge Barbara Lynn upheld the constitutionality of the law last year [....] The Crofts, of Carrollton, Texas, appealed Lynn’s ruling. On Tuesday, a three-judge panel from the 5th U.S. Circuit Court of Appeals in New Orleans heard arguments from lawyers on both sides of the case. [...]

In 2003, state lawmakers amended an existing law that already allowed schools to hold a moment of silence to specify that students can use the time to “reflect, pray, meditate, or engage in any other silent activity that is not likely to interfere with or distract another student.”

[...]

Texas Solicitor General James Ho, who handles appeals for Attorney General Greg Abbott, said lawmakers included the word “prayer” to avoid confusion.

Judge Fortunato Benavides said advocates on both sides of the issue tend to distort the implications of laws governing school prayer.

“I can see why the Legislature might think that it might be important to let people know what they can do and put it in the form of a statute,” he said.

[...]

Ho and Cook both cited prior rulings by the U.S. Supreme Court to support their positions. Cook said the justices struck down an Alabama law that mirrors Texas’ minute-of-silence statute.

“By amending (the law) to include the word ‘pray,’ the Legislature, whether intentionally or otherwise, has advanced religion,” he wrote in court papers.

Ho said Alabama lawmakers had enacted their law “for the express purpose of defying the U.S. Supreme Court,” whereas sponsors of the Texas law wrote theirs in a way that would pass constitutional muster.

These statutes have always amazed me.  For nearly 50 years, the Supreme Court has held that teacher or administrator-led (or teacher or administrator-endorsed) school prayer (or school prayer disguised as a moment of silence) is unconstitutional.  To me, a school leading a prayer (even a nondenominational-ish prayer) is one of the worst kinds of establishment. It’s a government official endorsing religion (and often one religion over another), compelling kids (who likely do not yet have well-developed ideas about God) to engage in a particular religious practice, usurp parental authority on one of the most critical choices in child rearing, and create unnecessary tensions between student and teacher, peer and peer, and even religion and religion.  Likewise, though, the Supreme Court has been very clear that kids don’t lose the rights to their own, particular faith at the schoolhouse door.  Kids are more than welcome to pray (pretty much whenever they want), out loud or silently, in groups or individually.

Nonetheless, legislatures continue to believe, apparently, that kids do not have enough opportunity to pray at school on their own, and so they enact statute after statute mandating “moments of silence.” Most of the ordinances challenged fail, often because the legislature (like the Texas legislature here) enumerates that kids can pray during the moment of silence.  The cases often turn on whether the legislature had the “purpose” of promoting religion (or one religion over another) when enacting the statute.

From a legal perspective, why is “purpose” paramount?  If the legislation is truly neutral (that is, kids can do whatever they want, so long as they do it quietly) who cares if the legislators “hope” that more students pray? Is it that the implication is you’re “supposed” to pray? Or that you should feel bad if you don’t pray? That seems to be more of a question of implementation (that is, whether the school says something like “now take this moment of silence for reflection, OR TO PRAY, or to sit quietly in preparation for the day…”) rather than enaction of the statute.

But from a practical perspective, why do legislators continue to pass statutes like this?  Kids who will want to pray will.  They’ll do it when they get to their seats, right before the big test (when even non-religious kids may say a word or two), before lunch, at a Fellowship of Christian Athletes meeting, at a student-run bible study… whenever they feel compelled to.  Students who don’t want to pray won’t, unless the government compells them (a clear violation of the Establishment Clause…. well, at least at the time of this writing.) I’ve never heard a high school student, much less an elementary student ever saying “man, if I just had more time to pray,” or “man, if I just had 45 seconds at the beginning of the day to ‘reflect,’ I’m sure my studies would be better.” And have these legislators ever been to a school and sat in a room where kids are supposed to be quiet?  Like a study hall, or a classroom where people are taking a test? Half the kids are just trying to break the silence one way or another.  Rather than starting the day well, my guess is that the “prayer kids” will just be harassed by the “non-prayer kids,” the “silence” will routinely be broken (by jokesters, by kids’ cell phones, or by other kids texting away), and everyone will just be more stressed.

Regardless of the constitutionality of this particular statute (which appears to be suspect to me, based upon the drafted language), I wish state legislatures had better things to do than to mandate when and where kids have to be quiet (or mandate who has to pray and when).

I look forward to all reasonable comments.

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Virginia state preachers free to preach… er, so long as they’re not Muslim

According to this report, the Virginia House of Delegates has approved a bill that removes a restriction previously requiring that chaplains for Virginia state police offer “ecumenical, non-denominational prayers” at official events.

Backers of the bill said it restored the chaplains’ right to religious freedom. But opponents said the bill violates the First Amendment by having the state advocate one specific religion.

[...]

Del. Charles W. Carrico, a retired State Police trooper, drafted the bill after State Police Superintendent W. Steven Flaherty issued a directive to chaplains to offer generic prayers at department-sponsored public events such as graduations from the trooper training academy.

“I do not want to interfere with anyone else’s religion. I am a Christian and I will profess that,” said Carrico, R-Grayson. “The Christian faith happened to be the one under attack when this came about.”

Flaherty issued the guidance in response to a 2008 federal appeals court ruling upholding a Fredericksburg City Council policy against opening council meetings with prayers that mention Jesus.

The directive does not apply to chaplains in private venues such as funerals or in counseling grieving troopers or their loved ones.

[House Majority Leader H. Morgan] Griffith called opponents’ use of the same constitutional free-worship guarantees to argue that the bill is an impermissible state intrusion into religion “Orwellian doublespeak.”

Del. Adam Ebbin, D-Alexandria, said the bill blurs the distinction “between state-endorsed religion vs. the exercise of free religion by individuals.”

Ebbin, who is Jewish, said that when he attends a Christian church, he expects to hear prayers in Christ’s name and accepts them.

“When I go to a public event in a public-sanctioned forum, I do not expect to be excluded,” Ebbin said.

The bill is not that surprising, and will probably never be enacted, as Virginia Gov. Tim Kaine will likely veto it, and even if he didn’t, it would likely be ruled unconstitutional anyway during the lawsuit that the ACLU has threatened.

First Amendment law professor Kathleen Bergin caught this article, and not so much for the law as the response by one dissenting, Democratic delegate:

Del. Lionel Spruill, who opposed the bill, made his disdain for Islam clear in a floor speech. In making a point about observing diverse religious traditions, he said Muslim relatives who visit his Christian church are asked to remove their traditional head coverings.
[...]

He said he has no problem with most clergy who offer the daily invocation at the start of each House session.

“From time to time we have certain people who come here, certain people who pray here, and depending on who it is, I’ll walk out that door, especially those in the Muslim faith I don’t care too much about,” he said.

Professor Bergin’s response:

Spurill’s vote against the bill wasn’t rooted in a concern about the crumbling wall that’s supposed to separate church from state, or protecting the state from the inevitable ACLU suit that would follow passage of the bill, but the mere prospect of including an Imam at an official police event.

[...]

I don’t understand why this part of the story hasn’t gotten more coverage (ok, so I do), but could we ever imagine an elected state official making such remarks about any other religion, and having it go virtually unnoticed in the national press?

Indeed, Delegate Spurill’s comments are awful, but they are a true example of exactly why the Establishment Clause exists to keep religion out of government.  (Interestingly, one could also use his comments as evidence for the other side–that if a chaplain comes to deliver a prayer that any particular state official or police officer disagrees with, he or she could just step out into the hallway.  Of course, it doesn’t often work that way.)

But this statute is also a poignant example of the “unseen” half of the Establishment Clause.  The Establishment Clause works not only to keep religion out of government, but also to keep government out of religion.  Because the Virginia state patrol has chaplains, it must pass regulations deciding to whom those chaplains may (or may not) pray at official functions, to avoid endorsing a religion and violating the First Amendment.  Yet, in doing so, the state “waters down” the practice of many of those chaplains’ faiths, at least in their official capacity.  This is why the original Lemon v. Kurtzman court was concerned about “excessive entanglement” with religion (although modern courts have shrugged off that concern). How can you have chaplains providing faith services to civil servants when the government commands what the scope of those services can be? Do the chaplains truly have a Free Exercise right to say “in the name of Jesus, Amen”? Is watered down prayers to the “Almighty Creator” better than no prayers at all? Are non-Christian police officers part of the “outgroup” when an “Endorsed” chaplain proselytizes? Or is it the chaplain’s “freedom of conscience” that is violated? And what about minority religious figures?  It seems that every time the government gets this involved in providing some sort of “religious tone”-especially before “official events,” this stuff happens.  There are no easy answers to these questions.  And it appears that Pres. Obama hasn’t learned this lesson, either.

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