Baird, who is a graduate of both Iowa’s College of Law and College of Pharmacy, is the current Chair of the Trademark & Brand Management Group at Winthrop & Weinstine in Minneapolis. He first realized his passion for trademarks while at Iowa, writing for the Journal of Corporation Law. Though he initially planned to become a patent lawyer, he soon discovered a rarely litigated facet of intellectual property law that caught his interest.
“At the time I started writing my journal article, fewer than 20 decisions had ever interpreted the ‘scandalous and immoral’ part of the Lanham (Trademark) Act,” said Baird. That particular section of the Lanham Act allowed the United States Patent and Trademark Office to refuse to register a trademark deemed scandalous, immoral, or disparaging.
“You’re not going to get bored writing about scandalous and immoral trademarks,” noted Baird.
When he moved to Minneapolis in 1991, Baird saw the issue of offensive trademarks arise on the national stage of professional sports. Between the Atlanta Braves (and their fans’ “Tomahawk Chop” displays) coming to town for the World Series and the Washington Redskins visiting the Vikings just a couple months later, there was no shortage of talking points in a city with a high density of Native American citizens.
“I was at Dorsey & Whitney [LLP] at the time, and they were starting to build a Native American-law practice group,” said Baird. “They were looking at a case against the Washington Redskins and sent me to [Washington,] D.C. with [Native American rights advocate] Suzan Harjo to talk with the press.”
Baird worked with the firm through its initial victory in Pro-Football, Inc. v. Harjo in 1998, developing his expertise in legal arguments involving the “scandalous and immoral” claims under the Lanham Act.
“The beauty of this kind of cause of action is that the First Amendment wasn’t implicated,” said Baird, alluding to the free-speech counterargument frequently used by trademark owners who have been accused of having scandalous or immoral trademarks. “A mere denial of a trademark registration didn’t involve the First Amendment.”
This June, however, the U.S. Supreme Court altered the Lanham Act landscape. The Court ruled in Matal v. Tam that the disparagement clause violated the First Amendment, adding that trademarks are private rather than government speech.
Baird described the reasoning behind the decision as a “conflation of the certificate of registration and the underlying trademark.” The only form of speech the government banned when it refused to register a scandalous or immoral trademark was the use the “‘circle-R’ symbol next to that trademark,” not the underlying meaning of the trademark itself.
“All trademarks have meaning, and it’s probably fair to say that the meaning behind the trademark is determined in some degree by the trademark owner,” he said. “But its meaning is also determined by society.”
Baird explained that the Tam decision leaves open the issue of the government impliedly endorsing trademarks that society may deem offensive. In other words, when the United States approves the registration application for an offensive trademark, it’s putting its seal of approval—the “circle-R” symbol—on that trademark, and some may see that as the U.S. government endorsing the trademark’s offensive interpretation.
In light of the Tam decision, Baird anticipates a proliferation of First Amendment arguments in Lanham Act cases.
“It used to be that claiming you were allowed to copy the title of your competitor’s book as an exercise of free speech was a losing argument, but now we live in a different time,” said Baird.
Though the owner of a famous trademark may still attack a copy artist by claiming the copier tarnished her mark, Baird argues it is “odd” to claim that tarnishment is significantly different from disparagement.
As for where the Supreme Court will go next, Baird predicts the Justices “will knock out the ‘scandalous’ prong as well.”
The next intellectual property speaker at Iowa Law will be Corynne McSherry, Legal Director of Electronic Frontier Foundation and leading lawyer in entertainment and intellectual property. She will present on the Digital Millenium Copyright Act on September 28 at 12:30 p.m. in BLB room 235.