On this week’s episode of ‘The People v. O.J. Simpson: American Crime Story,’ one scene in particular stuck with me. Lawyer Robert Shapiro (played by John Travolta) is craftily assembling Simpson’s “Dream Team” of defense attorneys. Shapiro recruits lawyer Alan Dershowitz (played by Evan Handler) and in a meeting, Dershowitz proclaims: “Right now, he’s [O.J] sort of like this handsome, gifted Greek god laid low. It’s a tragedy, but he’s still a Greek god. The longer he sits in that cell, the longer the public sees him in a jumpsuit and cuffs, the more mortal he becomes. That’s the clock we’re fighting.”
O.J. Simpson’s longtime friend Robert Kardashian (played by David Schwimmer) interjects: “Excuse me, he’s never going to stop being The Juice.” Contrary to Kardashian’s belief, however, O.J. Simpson is no longer “The Juice”—at least by PTO standards.
O.J. Simpson, born Orenthal James Simpson, was often called “Juice” because of his record-setting speed as an American collegiate football player along with the obvious—his initials stand for orange juice.[1] In the late 1990s, trademark applications for “O.J. Simpson,” “O.J.” and “The Juice” were filed on behalf of Simpson for use with a broad range of goods, including sportswear, trading cards and figurines.[2] The marks were approved by a PTO examiner and published in the Official Gazette.[3]
Soon after, New Hampshire patent lawyer William B. Ritchie filed opposition to the federal registration of the marks.[4] Ritchie had no connection to O.J. Simpson, but asserted Simpson’s marks were not registrable on either of two statutory grounds: first, the marks were immoral or scandalous matter and should be denied registration under §2(a) of the Lanham Act, and second, one of the marks was primarily merely a surname and was thus unregistrable under §2(e)(4) of the Lanham Act.[5]
In his notice of opposition, Ritchie alleged that he would be damaged by the registration of Simpson’s marks because they “disparage his values, especially those relating to his family.”[6] Furthermore, he claimed that the marks were scandalous because they were synonymous with “wife-beater” and “wife-murderer” and would “attempt to justify physical violence against women.”[7] The TTAB dismissed Ritchie’s oppositions, holding that he did not have standing to oppose the registrations.[8] Ritchie appealed and the case was brought before the Federal Circuit.
An opposer to a mark must meet two judicially created requirements in order to have standing: the opposer must have a “real interest” in the proceedings and must have a “reasonable” basis for his belief of damage.[9]
The Federal Circuit held that Ritchie had a “real interest,” even a personal stake, in the outcome of the proceeding.[10] The court explained that if it accepted as true Ritchie’s belief in loving and nurturing relations between husband and wife and his allegation that the marks were synonymous with “wife-beater” and “wife-murderer,” Ritchie would suffer injury—disparagement of his alleged belief in the relationship between husband and wife.[11]
The court then turned to the issue of whether Ritchie had a “reasonable” basis for his belief of damage. In order to show reasonableness of his belief of damage, Ritchie had to allege other facts establishing that his belief was other than subjective.[12] In his notice of opposition, Ritchie alleged that he had obtained petitions signed by people from all over the U.S. who agreed with him that Simpson’s marks were scandalous and denigrate in their values.[13] The Federal Circuit found that Ritchie’s allegations were more than sufficient to establish that he had objective proof he was not alone in believing that he would be damaged if the marks were registered.[14]
Because Ritchie’s filings demonstrated the required “real interest” in the outcome of the opposition and that his “belief of damage” had a reasonable basis in fact, the Federal Circuit reversed and remanded the TTAB’s decision to dismiss Ritchie’s opposition.
In this way, the Federal Circuit’s ruling sets forth a relatively low burden for establishing standing to oppose trademark registrations. Some have argued that this burden is, in fact, too low. In her dissenting opinion, Circuit Judge Pauline Newman argued that the panel majority created “a dangerous and facile opportunity for the intermeddling public to burden commercial rights in which it has no interest…”[15] She added: “It is simply incorrect to open the trademark tribunals to the litigation of moral preferences by persons with no real interest in the trademark.”[16]
Eventually, O.J. Simpson abandoned the applications to his trademarks. While Simpson’s American Trademark Story might have come to an end, his American Crime Story continues to play out on FX every Tuesday at 10 PM.