What Was the ‘Have Some Decency’ Trademark Case About? In re Alessandra Suuberg, 2021 USPQ2d 1209 (TTAB 2021)
By Alessandra Suuberg, Decency LLC
See: https://ttabvue.uspto.gov/ttabvue/v?pno=88234650&pty=EXA&eno=18
If you’ve read about this case and suspected it wasn’t just about a trademark, you’re right. It wasn’t.
To give some context: My entry into the world of healthcare and medical research in Cambridge and Boston in 2016 happened at a tense moment.
News of the gene editing technology CRISPR and surrounding patent litigation was hitting the mainstream. Within a few years, headlines would announce the birth of genetically modified twins (“CRISPR babies”) in China. Researchers were promoting population genetics initiatives in multiple countries, including the All of Us initiative in the United States, asking citizens to give access to large amounts of genetic and health data. Consumer genomics companies were both gaining popularity and getting critical press for selling data to pharmaceutical companies. The 21st Century Cures Act expedited the arrival of new drugs and medical devices on the market. Scientists were growing “mini-brain” organoids in vitro, releasing genetically modified mosquitos into the wild, injecting themselves with modified DNA in front of a live-stream audience… the list goes on.
As for me, I stumbled into all of this unwittingly, having achieved certain basic definitions of success in a patent law position, and deciding that 2016 would be the year to reclaim a previous interest in healthcare via a premedical program in Cambridge, Massachusetts.
Almost immediately, I was recruited as a non-employee research assistant in a genetics lab. Over the next few years, it would gradually sink in that my predecessor in that lab—also a former lawyer abruptly changing careers—had been recruited specifically to study and outrun her own potentially fatal genetic condition. (This is public knowledge.)
Combining this with, e.g., contemporaneous publications coming out of my university on the ethical and regulatory pitfalls of something called “Patient Centered Outcomes Research” (see, e.g., https://www.acpjournals.org/doi/full/10.7326/M18-1334), involving “patients in roles other than research subject, such as advisors, study personnel, and co-investigators” in medical research, it was tempting to wonder how many of my colleagues might have been hired as intended “patient research partners,” how widespread this practice was at universities or medical institutions, how it was being done, how colleagues felt about the idea, etc.
(To avoid anything being misinterpreted: As far as I know I was not a “patient research partner” for PCOR purposes. I haven’t received medical care for anything unrelated to vaccinations, eye exams, or a broken toe in more than a decade.)
In short, in many ways, medical research has been going through a complicated phase for a number of years now, and this was true even before the COVID-19 pandemic made it clear to the public at large.
In this context, at the end of 2018, I decided to start getting involved in the research ethics conversation. The trademark prosecution was, in itself, a way to enter the conversation.
With all of that said, the following are my take-aways for anyone curious about the ‘Have Some Decency’ case:
One, litigation is not always (only) about its most obvious aim. In my case, in the context of a trademark appeal, I was able to document the essential parts of my 2016-2018 experience in court filings. Especially because COVID-19 ended up making conversations around research ethics (my intended work) extremely contentious, ultimately the chance to say my piece ended up being much more valuable than owning a trademark would have been.
Two, a trademark can make a statement regardless of whether the application is granted. As much as a trademark is a business tool signifying the origin of goods or services, it can also be a statement of what the owner values, and help define a brand or movement. I would like people to think carefully about the meaning of “decency” in healthcare, and now this is known, regardless of whether I own a trademark at the end of the day.
Three, court cases start conversations. What is “decent” in the healthcare context? As became very clear within a year of my filing this application, public opinion can be very divided on this question.
Four, some forms of litigation are less public, expensive, and contentious than others. Anyone who knows me personally knows that I don’t like to draw attention to myself. Trademark appeals are nice and quiet.
Five, some forms of litigation are much more impactful than others—for better or worse. Why not start a plaintiff’s firm and sue large corporate entities or governments over perceived wrongs in the healthcare space? Because readers familiar with, e.g., federal appeals know the risk of “making bad law.” And readers familiar with “impact litigation” know that lawsuits themselves can strategically use a plaintiff’s case to make sweeping changes for many other people. Engaging in this type of activity requires devoting significant effort and resources to ensuring that “bad” decisions aren’t accidentally made—and even then, there can be mistakes with serious consequences.
As for trademark policy and whether I feel registration should have been granted in this instance, that can lend itself to a lengthy discussion of its own on another day.
Now. Do I have any regrets?
Only that this case had to have my name on it, instead of being called something like In re Decency. Because this isn’t supposed to be about me, it’s about “all of us” (pun sort of intended).
See the following for additional discussion of the case:
https://www.jdsupra.com/legalnews/the-ttab-service-mark-use-requires-more-9293115/ (JD Supra)
https://advertisinglaw.foxrothschild.com/2021/12/the-ttab-service-mark-use-requires-more-than-just-preparation/ (Fox Rothschild)
https://trademarks.justia.com/882/34/have-some-88234650.html (JUSTIA)
https://www.ipintelligencereport.com/2022/01/04/actual-use-not-preparations-for-use-of-a-service-mark-is-necessary-for-the-uspto-to-register-it/ (BakerHostetler)
https://www.lexology.com/library/detail.aspx?g=09cce22b-72f5-45ff-a5f3-43bec3d999d1 (Lexology)
https://www.cll.com/OnMyMindBlog/preparation-for-a-service-may-not-be-rendering-that (Cowen Liebowitz Latman)