The ProblemThe Federal Trademark Dilution Act of 1995, commonly called "FTDA."
Interesting aspects of the problem FTDA created are defined, here. Some is legal, but necessary to be accurately stated to seek a solution.
These are selected whole paragraphs of remarks made by Kathryn Barrett Park, Executive Vice President, International Trademark Association, taken from the transcript of the U.S. House of Representatives, Subcommittee on Courts, the Internet and Intellectual Property, February 14, 2002. Remarks in brackets are those remarks given elsewhere in the same testimony, but inserted by Save Your Name for use of understanding..
...The FTDA was designed by Congress to maintain the vitality of famous trademarks. The dilution statute is meant to quarantine the dilution "infection" before it takes hold, rather than require a plaintiff to wait until the "potency" or economic value of the famous mark has been "debilitated," thereby damaging forever the effectiveness and reputation of the mark. It was for this reason that Congress specified that injunctive relief would be the primary remedy in dilution cases. An injunction permits the owner of a famous mark to stop the erosion of the value of the mark, harm for which later monetary relief would be inadequate.
...The protection of marks from dilution differs from the protection accorded marks from trademark infringement. Dilution does not rely upon the standard test of infringement, that is the likihood of confusion, deception, or mistake. Rather, dilution comes into play when the unauthorized use of a famous mark reduces the public's perception that the mark signifies something unique, singular, or particular.
...Congress passed the FTDA with the goal of creating a uniform anti-dilution law. Prior to the enactment of the FTDA, the issue of trademark dilution was left to the state courts. The was no federal statute by which famous trademarks could be protected against blurring and tarnishment. (Blurring occurs when consumers "see the plantiff's mark used by other sources," so that the "unique and distinctive significance of the mark to identify and distinquesh one source may be diluted and weakened." Examples of blurring would include such fictional examples as BUICK aspirn tablets and KODAK pianos. Tarnishment arises when a famous trademark is linked to products of inferior quality, or is portrayed in an immoral or reprehensible context likely to evoke negative beliefs about the mark's owner. An example of the tarnishment might be GARBAGE PAIL KIDS cards, were the cards "derisively depict dolls with features similar to Cabbage Patch dolls in rude, violent and frequently noxious settings.")
...Now in effect for over six years (2001), the FTDA sets out criteria that a court may consider in determining whether a mark is famous. The FTDA further provides that "the owner of a famous mark shall be entitles...to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark."
A trademark "in simpliciter."
Simpliciter is Latin for "simply" or "naturally" (in contrast with secundum quid). Hence, what anything is when considered absolutely or without qualification. Secundum quid is Latin for "according to something" (in contrast with simpliciter). Bottom line? When a surname is a trade mark "in simpliciter", it means simply standing alone. No generic word preceding or following the surname is required to qualify as the mark. Illustration. It's not "Team Smith", or, Smith Tools". Just Smith!
Simply stated, trademarks utilizing a surname must be preceded by, or followed by, a generic word. Smith Tools? Great! If a Smith has an automobile dealership, the sales force might
be called, "Team Smith." But, FTDA has removed the necessity of a before and after aspect of a surname trademark. FTDA permits surname trademarks "in simpliciter", (standing alone...no before, or after words) if they are "famous." Said again, not Smith Tools, not Team Smith, just Smith. So, what does this mean in the practical sense?
One legal scholar, Ridgeway K. Foley, Jr., said that the present state would act as "a great cosmic ideological prophylactic, cutting off life from ideas, forms and actions which may be beneficial but which will never see the light of day. Once destroyed, ideas seldom can be resurrected as they are fleeting and fragile things." Great statement!
Save Your Name Crusade has no quarrel with a trademark owner protecting its mark. However, we believe it is a ruthless practice when a large well-financed multinational entity uses its "famous" status to absolutely squash persons from using their surname to achieve success.
Although government regulations are enacted to secure some sort of public benefit, the financial magnitude of the raminifications of certain trademark owners to co-opt surnames has fallen unfairly and disproportionately on the "other" persons of that surname global ancestry .Then, persons with foreclosed surnames are prevented from pursuing an occupation using their surname as an identifier because of the trademark restrictions of FTDA. Persons with the foreclosed surnames are prevented from integrating their surname into a trademark because of the trademark restrictions of the FTDA. Persons with the foreclosed surnames are prevented from
acquiring property through profit from commerce because of the trademark restriction of the FTDA.
Is a trademark property?
It is the opinion of the Save Your Name Crusade that FTDA most empowered large multinational companies, because it permits trademark owners to reconfigure the interpretation of their trademark ownership rights as one primarily of "property". Witness the testimony of Sherry L. Jetter, Vice President of Intellectual Property, Polo Ralph Lauren Corporation, on the value of the Polo trademark, given at the Oversight Hearing on FTDA, February 14, 2002, "It is without question the single most important piece of property owned by Polo Ralph Lauren." "Property" was underlined in the prepared testimony. A trademark author, Jonathan Mermin, described this view (Polo) as "the property-right-gross view of trademark ownership." Mermin goes on to say, "Such a formulation is in tension with the traditional justification for trademark protection in the United States, which is based not on the interests of the trademark owner, but on the interests of consumers in the marketplace."If the view is that a trademark is rightfully "property", one might say that the exclusive use of a surname is a "taking?" So, there is now, and shall forever be, unless corrected, a "property rights" chasm between the objectives of these "famous" trademark owners and those other persons of same surname global ancestry, therefore, reparation should be initiated to equalize the differences between the two groups. The Fifth Amendment to the U.S. Constitution says "nor shall private property be taken for public use without just compensation. For years this amendment concerning "takings" was rooted in hard assets like real estate and the like. Now, it appears that "takings" have come to include intellectual property such as trademarks. Suddenly, the intellectual pursuits of the entire global surname group that may translate themselves into hard assets are subject to the review and approval (tailoring) of the "famous" trademark owner. That is a disconnect between the trademark owner's right to a fair return on their business investment, and the basic human right of each person in the global surname family.
The Lanham Act states, that a mark "which consists or comprises a name, portrait, or signature identifying a particular living person requires that the written consent of that individual must be filed with the Patent and Trademark Office for the registration to be valid." So, can a trademark based on a surname ever achieve legal constitutional "secondary meaning" to the extent that the use of the surname was foreclosed from further commercial use in non-competing areas by others holding the global surname? The legal response is that secondary meaning is automatically attached to a "famous" trademark by FTDA. Does it not also hold true for surnames which by themselves are famous? Many family surnames first appear multiple centuries ago. Estimates of size for family surname groups may be found on the Internet. Save Your Name Crusade has identified one surname group of 232,798 persons of their global surname. Would it not be fair to conclude that these surname groups were famous prior to the enactment of FTDA?
Here is more to think about! The action of the U.S. Trademark office to assign "secondary meaning" to certain surname trademarks, "in simpliciter", has created a Bill of Attainder prohibited by the U.S. Constitution. A Bill of Attainder has three elements; unilaterally (1) punishing (2) specific individuals, either by name, or in some equivalent manner. See Cummings v. Missouri (1867) -invalidating as a Bill of Attainder a provision of the Missouri constitution prohibiting any person to serve as an officeholder, lawyer, clergyman, teacher, or corporate officer unless he first took an oath that he had never been in the service of the Confederate States of America, or manifested his sympathy with those engaged in exciting or carrying on rebellion against the United States. Also, see U.S. v. Lovett -overruled provision of Urgent Deficiency Appropriation Act of 1943 prohibiting the payment of any salary or other compensation for any government service to three named individuals who had allegedly engaged in "subversive" activities. Last, see U.S. v. Brown - overruled the provision of the Labor-Management Reporting and Disclosure Act of 1959 prohibiting any member of the Communist Party to serve as an officer or employee of a labor union.
Surname trademarks "in simpliciter" have the three elements of a Bill of Attainder; (1) Unilaterally permitting secondary meaning without consideration of due process to the surname "class", (2) Punishment by deprivation of property, happiness, and liberty to pursue an occupation, (3) Of specified persons namely persons of the global surname group.
In United States v. Brown was the belief that no branch of government shall be empowered unilaterally to impose a serious penalty or disability on identified private individuals. In a very recent case, December 16, 2003, in the matter of Morgan v. Foretich, the judge declared a law passed by Congress, Elizabeth Morgan Act, was a "bill of attainder," violating the Constitution because it punished a person or small group.
There is an expression, "It may be legal, but is it lawful?" Lawful meaning, licit, or legitimate. When people approach an understanding that certain laws have begun to infringe upon their natural dignity, public pressure builds to where the laws are reversed or rectified. The scales of justice start to move! This web page is written from an area of the South where schools were segregated; where it was not "legal" for "blacks" to drink from the same water fountain as a "white" person; where it was not "legal" for "whites" and "blacks" to share places of public accommodation and transportation. Bear in mind, these prohibitions were in the written law. Attorneys for segregation-minded persons "artfully" used new and existing laws to promote segregation of the races. When Rosa Parks, a "black" person, came to the realization that these laws demeaned her, not "lawful", she refused to sit at the required back of a bus one day, was arrested, and the judicial balance process began. This event resulted in the complete elimination of laws of human segregation in the United States.
I will use a parallel situation involving the FTDA here because it is the one that may be used in our case about surnames used in trademarks "in simpliciter.".
Trademark owners of "in simpliciter" surname trademarks, some, not all, have artfully used trademark laws to the point of appropriating the global surname into a business asset, and "tailoring" the surname for other persons of the ancestral surname group to use is next to impossible. No longer does an owner of a famous trademark need to protect the mark as one considered to be in a trademark category, say, "tools" for Smith Tools. They now can assert their position, successfully I must add, that any global trademark which includes the surname is prohibited, to the point where they insist that use of the surname in capital letters, whether in text or titles is prohibited, even if the user is of the ancestral surname group. Their position is that their trademark has acquired a secondary meaning (famous), thus their foreclosure of all uses of the surname in commerce. This newest expansive power was given to the "famous" trademark owners, by the Federal Trademark Dilution Act 0f 1995 (FTDA). Relative to surnames, at the moment, "the law is on their side" without question, but is it lawful?.
It is not lawfu! Our central argument is that any surname mark "in simpliciter" is unconstitutional because the right to it belongs to others of the surname group. This group can give up limited amounts of that right to operate government, but they surrender nothing! The right of identity is one of the sacred rights enumerated in the Declaration of Independence. This right of identity is coupled with the "example rights" of "Life, Liberty, and the pursuit of Happiness" and produces capacity to papers and documents, tangible property, and all the other essences of a free human being. These rights are unalienable. "Not to be separated, given away, or taken away." Our surname is a natural right, the right to be identified. The government has no power to alienate us from our identity, that is, our full identity.
When a surname is used in conjunction with a generic word, followed by, or preceeded by, that is an acceptible practice because, then, it is a permitted, partial, conditional, or limited use of a surname. We give up the partial, conditional, and limited use, for the public good. This partial, conditional, and limited portion of the use of a surname is given to the Trademark Office to hold as a trustee, to assist the public to protect themselves from false, unreliable, and confusing trademarks.
To permit a surname "in simpliciter," or, standing alone as a word, to be a trademark would be a nullity, or void act. because it would mean the complete surrender of an "unalienable," or, sacred right, prohibited because it was endowed at birth by his creator.
