On Monday, the Federal Circuit affirmed a decision by the Trademark Trial and Appeal Board refusing to cancel Al Johnson’s Swedish Restaurant and Butik’s federal trade dress registration for “goats on a roof of grass” for use in connection with restaurant services. Yes, Al Johnson’s owns U.S. Trademark Registration No. 2,007,624 (depicted below) for live goats that perch atop a restaurant, grazing on a roof of grass (according to Al Johnson’s website, the goats retreat to a “cozy barn” in the cold winter months).
Although the registration issued more than 20 years ago and goats have been adorning Al Johnson’s roof since 1973, Todd C. Bank filed a petition before the TTAB to cancel the registration in October 12, 2018. In that petition, Mr. Bank (who is an attorney, but appeared pro se) claimed that because the registration “applies to the activity of an animal,” “it is demeaning to the type of animal that is the subject of such a mark” and, thus, “offensive to [Mr.] Bank and denigrates the value he places on the respect, dignity, and worth of animals.” Mr. Bank also claimed that the mark was functional, because the goats' acts of grazing on the roof “ameliorates the need to cut the grass, and is thus economically advantageous.”
Ruling in favor of Al Johnson’s on a motion to dismiss, the TTAB found that Mr. Bank lacked standing to bring his claims. A petitioner who believes that he or she will be damaged by registration of a mark has standing before the TTAB and need only plead that he or she has a real interest in the proceedings and has a reasonable basis for his or her belief of damage. Real interest requires that the petitioner have a legitimate personal interest in the outcome of the proceeding.
Affirming dismissal of Mr. Bank’s petition, the Federal Circuit found that the sole standing argument raised—that because the Goats on a Roof Registration demeaned goats, it was disparaging to Mr. Bank—failed in light of the Supreme Court’s ruling in Matal v. Tam that the prohibition on registration of disparaging marks was unconstitutional. Accordingly, Mr. Bank could not reasonably plead that he would be harmed by registration of a disparaging mark, as the Trademark Office can no longer refuse registration on that basis. Mr. Bank failed to make any other allegation that he had a direct and personal stake in the outcome of the proceeding or that he had a reasonable basis for his belief of damage.
The Federal Circuit also found that Mr. Bank’s appeal was frivolous, relying on the facts that Mr. Bank had filed three different petitions to cancel the Goats on a Roof Registration, all of which were dismissed; that Mr. Bank conceded before the TTAB that Matal v. Tam foreclosed his arguments; and that Mr. Bank is a licensed attorney. The Federal Circuit awarded Al Johnson’s costs and attorneys' fees.
Curious about how Al Johnson's was able to register goats on a roof? Tune in tomorrow for more discussion on that, and ducks in a fountain.
Yet as Mr. Bank conceded before the TTAB, the Supreme Court’s decision in Matal v. Tam, 137 S. Ct. 1744, 1764 (2017), foreclosed his argument, as it held unconstitutional the prohibition on the registration of disparaging marks under the Lanham Act.