When a New York attorney found a long-standing Sister Bay, WI, restaurant’s trade dress demeaning to goats, he filed a petition to cancel the trade dress registration with the Trademark Trial and Appeal Board (TTAB). Specifically, he stated that the trade dress registration denigrated the value of the “dignity and worth of animals.”
The TTAB ruled that Mr. Bank did not have standing to bring the Petition. So Mr. Bank appealed to The Court of Appeals for the Federal Circuit (CAFC). The CAFC ultimately opined that if the goats are not offended, then Mr. Bank (the Petitioner) should not be either.
Yes, that’s right. Believe it or not, the argument on behalf of the goats’ sensitivities was actually a final attempt at winning this case. Bank did start with something that sounded a bit closer to reasonable, however…
The Trade Dress Registration Petition to Cancel
The petitioner originally argued that the “Goats on the Roof” mark was disparaging to animal lovers. We assume he would include himself in that circle. The issue with that argument lies in the requirements for a trade dress cancellation petition to be granted.
Requirements for a “Reasonable Request”
A petition to cancel may proceed only when it initially meets certain standards. When it does, the petition is then considered a reasonable request. The standards are:
- The filer must have a “real,” “legitimate,” and “personal” interest
- There must be a “reasonable basis” for believing the mark will cause damage
The CAFC held that there was neither a real interest nor a reasonable basis provided to support the petitioner’s belief of damage. When no legitimacy was granted to the petition, Bank invoked Matal v. Tam.
Bank Invokes Matal v. Tam
Matal v. Tam was a case in which a band leader applied to register his band name, The Slants, as a trademark. I’ve written about Matal v. Tam here before. The Slants is a term traditionally recognized as disparaging toward people of Asian descent.
The Patent and Trademark Office denied the Slants application based on the disparagement clause in the Lanham Act that specifically outline the prohibition of offensive terms and imagery. Since the US Supreme Court declared the disparagement clause unconstitutional in 2017, the CAFC did not see how the Petitioner’s argument survived the decision in Tam.
“While Mr. Bank asserted that the trade dress ‘is offensive to numerous persons,’ including himself, because it was demeaning to goats, he failed to articulate how this reason survives Tam.”
Ultimately, the court of appeals’ opinion was that the entire lawsuit was frivolous. The judge’s final order even left the petitioner responsible for his own court fees.
Goats on a Roof Demonstrate the Power of Trademark Protection
Besides the petitioner not being able to meet the requirements for his petition to proceed, we believe another factor was key in solidifying his defense: consistency. The trade dress “goats on the roof” of Al Johnson’s Swedish Restaurant and Butik have been grazing there – quite literally – for 60 years now.
Moreover, this is not the first time the “Goats on the Roof” mark has successfully defended its trade dress registration against a petition to cancel – the last time was in 2012.
If you have a trademark or trade dress registration that has recently been the subject of a petition for cancellation, and you have questions or need advice, Crystal Broughan and the Marks Gray intellectual property team can help you make sense of your petition request. Reach out with any questions or concerns.