So here’s a cute little trademark dispute. Those stalwart defenders of free speech, Citizens United, apparently are not so crazy about being on the receiving end of the First Amendment’s free speech guarantee. The group, which as you know won a huge victory last month in the Supreme Court in its First Amendment challenge against the FEC’s interpretation of the federal election rules, has now apparently threatened, on grounds of trademark infringement, a Wisconsin group who have issued an online petition (and facebook group) named “Citizens United against Citizens United” as a protest against the Court’s decision.
It’s unseemly, at best. And probably a loser, too. “Citizens United” is a term that will only get trademark protection if they can show that it has developed “secondary meaning” in the minds of the consuming public — that is, if members of the public recognize that it is being used as a “brand” to identify the source of goods and services, as opposed to being used in its “descriptive” sense (to simply indicate that there are citizens who are united against something). A quick Google search reveals, as one would expect, dozens and dozens of “citizens united” groups: Citizens United for Alternatives to the Death Penalty, Citizens United for Research in Epilepsy, Citizens United for Rehabilitation of Errants, Citizens United Resisting Euthanasia, . . . There is a “fair use” defense in trademark law that protects just these kinds of uses, where descriptive terms are being used in their descriptive sense; the right to sue for infringement of a registered mark is subject to the defense that . . .
“. . . the use of the name, term, or device charged to be an infringement is a use . . . of a term . . . which is descriptive of and used fairly and in good faith only to describe the goods or services of such party . . .”
Otherwise, one party could monopolize a very useful little portion of the English language for its own private use.
Chris Travers says:
I was once threatened with trademark infringement for writing after-market, third-party documentation for a piece of software. The guy said his trademark covered all documentation written about the software. IANAL, but I know enough trademark law to know that is a bogus argument (and worse still, the name of the software program was more generic than “Gel Cel”).
I wrote him back a polite letter thanking him for his concern and stating I would do an additional review to ensure all his trademarks were properly attributed, and that if he spotted any omissions to be free to contact me about those specific instances.
He went away in a huff and thus continued a contentious business relationship.....
Point being, there is no shortage of stupid trademark ideas out there. Chris Travers(Quote)
CDU says:
I propose the formation of Citizens United against Citizens United’s suit against Citizens United against Citizens United. CDU(Quote)
metro11 says:
shouldn’t the Wisconsin group be “citizens united against Citizens United”?
otherwise — isn’t Citizens United right? isn’t the use of their corporate name by another group confusing to the public? metro11(Quote)
Arthur Kirkland says:
If Citizens United moots the Supreme Court ruling (as applied to Citizens United) by wasting every penny it collects from the gullible on a doomed trademark battle, I will enjoy my popcorn. Arthur Kirkland(Quote)
Off Kilter says:
I agree with metro11 (though the first “citizens” could be capitalized since it begins a phrase–“Citizens united against Citizens United.”)
The various multiple uses of “Citizens United” that DP finds surely almost all pre-date the Supreme Court case which gave national attention not only to the decision but also the corporate entity Citizens United. Surely no one is claiming that this particular entity (CUACU) chose its name for any reason except to tie itself in with the CU decision controversy Off Kilter(Quote)
Mike McDougal says:
Where do I join? Mike McDougal(Quote)
Duffy Pratt says:
What is Citizens United’s market? Are people in that market likely to think that Citizens United is actually sponsoring some material or product that is being put out by Citizens United Against Citizens United? I think the answer to this one is almost certainly “No.” And thus there’s an additional reason why the claim will likely fail.
I agree with the post that the words “Citizens United” are a very weak mark, especially when associated with a political action group. And the weakness of the mark is almost certainly enough to defeat this claim. (It would be stronger, for example, if Citizens United was a rotor-rooter service.) Duffy Pratt(Quote)
egd says:
Citizens United has been in continuous use in commerce since its initial filing in 1994 (Ser. No. 74494737), and a section 15 affidavit has been filed. Therefore, the Citizens United trademark has become “incontestable,” and its validity as a trademark can only be contested on a few, very specific, grounds.
It’s possible that the use of “Citizens United against Citizens United” could constitute fair use, but I think that would be a hard sell in this case.
edit: it’s goods & services designation is “promoting public awareness of the need for the restoration of the people of the United States as the political sovereign over civil government and dissemination of information relating thereto.”
I don’t know if the “CU against CU” group would count as being in this market. egd(Quote)
Arthur Kirkland says:
Maybe the anti-Citizens United group could switch to Citizens United — Not Too Smart?
It would fit. Arthur Kirkland(Quote)
Stephen Lathrop says:
Seems to me the notion of fair use on trademarks is too restrictive. As now interpreted it can be used to hobble important public debate by forcing it into channels that seem beside the point.
Take the case of cigarettes and health. If you ask a smoker what he smokes, isn’t he more likely to reply “Camels” or “Salems” than “cigarettes?” Tobacco companies have invested a lot of money to elicit that response, but I don’t think that means they ought to be able to use the law to assure that critical debate about their products always winds up talking about something else.
People who want to talk about health effects have a right to get to the point. They ought to be able to put up a billboard with the Camel Logo on it, and text saying, with 100% accuracy, “Camels cause deadly cancer in people who smoke them.”
Every branding effort in commerce is an attempt to create a separate identity for a product in the public mind. Where legitimate public interests are at stake, there is no good reason I can see why public debate shouldn’t be able to engage those separate identities without restriction. That is obviously a different case than protecting the brand for commercial purposes, and there is not likely to be any ambiguity in distinguishing the cases.
That means, to me, that any attempt to restrict the use of “Citizens United” in any context of public debate about the Court decision ought to be ruled an impermissible restriction on freedom of speech. Stephen Lathrop(Quote)
Chris Travers says:
Interestingly, one such ground is that the trademark is “generic.” If “Gel Cel” is generic, there is no way that “Citizens United” is not.
Otherwise “Citizens United” could sue for trademark infringement any group expressing solidarity of the citizenry, such as the group in question as long as those two magic words were used. Furthermore, it doesn’t seem to me that any confusion would exist among consumers regarding “Citizens United against Citizens United.” No reasonable consumer could look at that and assume that the group is sponsored by or affiliated with “Citizens United.”
So I don’t see infringement. Chris Travers(Quote)
jsl says:
That’s why they can’t — the fair use trademark defense generally defends nominative uses, where you’re using the mark to talk about the markholder’s products. jsl(Quote)
egd says:
A generic term is one that is used by ordinary consumers to describe the good or service provided. Or put another way, a generic mark “merely identifies the genus of which the particular is a species.” Liquid Controls Corp. egd(Quote)
William Spieler says:
I had a piece published (89 J. PAT. & TRADEMARK OFF. SOC’Y 780 (2007)) arguing that there are different burdens of proof for fair use in descriptive — or “classic” — uses vs. nominative uses. Descriptive uses are uses of a dictionary word subject to a trademark for its dictionary meaning. Nominative uses are uses of a mark to identify a seller.
With descriptive fair use, confusion is nevertheless permitted so long as it complies with the fair use statute codified at 15 USC § 1115(b)(4). However, the alleged infringer has the burden of proof per the Supreme Court’s decision in KP Permanent Make-Up. In other words, descriptive fair use is the defendant’s burden to prove that they’re not really using the mark.
With nominative fair use, which is not codified, is really not a “fair use” as it is commonly understood, because it is not actually a defense. Rather, it is a conclusion that is reached when the plaintiff fails to carry its burden in showing that the use is confusing.
So, descriptive fair use is judicially presumed not to exist, whereas nominative fair use is judicially presumed to exist.
As applied to “CITIZENS UNITED AGAINST CITIZENS UNITED”, the first “CITIZENS UNITED” is a descriptive use, the second is a nominative use. So Citizens United has to prove that the petition’s “against Citizens United” would confuse the public as to the petition’s relationship with the organization Citizens United, and, having done so, the defendant has the burden to prove that “Citizens United against” is the use of dictionary English. William Spieler(Quote)
Stephen Lathrop says:
I think that’s what I conceded at the outset, although I’m not a lawyer and don’t have a background to understand lawyer’s distinctions.
What I would like to know, however, is whether you, or anyone else, can think of a principled reason, other than the sanctification of property above other values, why the creator of intellectual property which functions in a way that is actually deadly, should also be allowed to control the use of that property during debates about the hazards thus created. Stephen Lathrop(Quote)
jsl says:
I guess I fail to understand the relevance of the question — the whole point is that they are not, in fact, allowed to do so. The reason they’re not allowed to do so is because there is no principled reason to allow it, and many reasons not to. jsl(Quote)
Chris Travers says:
“Citizens United [Against X]” would seem to qualify, would it not? Chris Travers(Quote)
Chris Travers says:
egd: I actually think “Windows” (the software) is too generic to be defensible in the US (and in pre-trial rulings in Microsoft v. Lindows held about as much). Really that was a crazy case. I have never before seen a case which was settled by the plaintiff paying the defendant to accept a trademark license..... (Here, we’ll give you a trademark license and we will pay you too. Just let this case go away!) Chris Travers(Quote)
grog says:
This would appear to fail the (unofficial, I know) moron-in-a-hurry test.
Seriously — how is there any possible way someone would confuse the group as to be attempting to stop themselves?
Additionally, folks all over the net refer to the decision at “Citizens United”. It is pretty common usage, and I fail to see how the group could attempt to stop someone from referencing it in that fashion. grog(Quote)
Soronel Haetir says:
Except that Windows does in fact serve as a very strong mark for what someone is talking about. I’m not aware of anyone who would ask if you’re running Windows on a Mac, for instance. In that way it is far different from marks that have become generic, like coke or kleenex. Those two terms when used by ordinary consumers are just as likely to be applied to any product from the relevant market, the same is not true for any of the OS branding terms. People might not be sure exactly where the product ends and other programs take over, they might not be sure exactly what Windows does for them, but they are likely to at least know it’s there and that it does SOMETHING.
Now, Windows is of course generic in the sense that MS can’t go after someone for uses outside the computer industry, unlike some very strong mark holders where the owner’s interest against dilution covers all commercial activity. An easy example of that, it doesn’t matter what you are making you likely couldn’t label it as Mitsubishi XXX without running into problems. That just goes to demonstrating the issues with using regular words as your mark mentioned above. Soronel Haetir(Quote)
zuch says:
I was at a dinner with Judge Kosinsky a while back, when Sweet’N’Lo was trying to trademark the colour pink for sweetener packets. I asked him about this, and he defended this “trademark”. IIRC, I asked him then what happens when all the coulours run out....
Cheers, zuch(Quote)
zuch says:
Yes. Gives you the “BSOD” [“The blue screen of death”]. Macs had “windows” long before Micro$ux did.
Cheers, zuch(Quote)
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Trademark recursion? says:
Stephen Lathrop says:
The principled reason to allow it is that the law as now interpreted creates a severe infringement of freedom of speech at one of the points where free speech is most important—in defense of the public health, safety and interest.
As far as I can see, the only principle (other than legalisms) being defended on the other side is the privilege of an intellectual property owner to create a criticism-free zone around a product which may in fact be harmful or deadly. You say there are many reasons to defend that privilege. Could you mention one or two? Stephen Lathrop(Quote)
jsl says:
I think you misread me; I am not at all defending markholders. The thing that is not allowed is a markholder using trademark law as a sword against those criticizing the markholder’s goods or services.
Under the law, there is no criticism-free zone. Markholders generally are *not* allowed to bring suit against those using their mark in a critical fashion (there are issues in tarnishment here, but the TDRA has 1st Amendment issues anyway — generally speaking, under trademark infringement, no action lies for critical usage). There is essentially no reason to overturn that. There are many reasons to defend this.
The short version: you and I agree, and the state of the law generally agrees with us — mark holders can *try* to bring actions in this light, but they won’t succeed. jsl(Quote)
Tom in Houston says:
Also seems to qualify, on its face, as a parody, which is a judicially-accepted form of a first amendement defense. Tom in Houston(Quote)
dhlii says:
I use a non-microsoft OS with a GUI that has been called Windows long before Microsoft used the term — X windows. Beyond that Windows was not initially an OS, Even windows98 is actually MS-DOS with a gui on top. The term window as applied to the GUI of an OS dates atleast as far back as Xerox/PARC. Even Microsoft’s use is generic rather than specific, at best identifying a broad class of products many of which have little in common besides having windows in their name. dhlii(Quote)
egd says:
The problem is that there’s a difference between using a trademark for non-economic reasons versus using a trademark for economic reasons (see the ___sucks.com line of cases).
I can say “Coke sucks” as much as I want. But when I start marketing a product called “Coke sucks”, I start to run into trouble. egd(Quote)
Chris Travers says:
I think the problem is narrower than that. Is a web site a product? What about paypalsucks.com, given that they also provide help getting credit card merchant accounts (a competing service)? Chris Travers(Quote)
Mia Reyeb says:
All of this is moot because “Citizen United” is going to now stand for the supreme court decision that extended corporate personhood to campaign financing and any trademark they have or hope to have is now not going to happen. Too bad! Mia Reyeb(Quote)
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