Editor’s Note [8/27/2018]: Due to a recent Supreme Court Decision, the information in this article no is no longer correct. We will, however, keep this post up as a reference for how the law worked before this 2017 decision. For a new look at disparaging trademarks, see our newer article on the subject.
Along with trademarks that consist of immoral or scandalous matter, Section 2(a) of the Lanham Act prohibits the registration of trademarks that “may disparage…persons, living or dead, institutions, beliefs, or nationals symbols, or bring them into contempt, or disrepute.”
Figuring out whether or not your trademark falls under this definition is sometimes a complicated process.
How do you determine whether a term is disparaging? What are some current examples? Can you overcome being labeled as disparaging? What happens after your trademark is deemed disparaging? Find out the answers to these questions and more below.
What Makes a Term Disparaging?
There are two general tests you should use when figuring out if your trademark is disparaging.
If the mark disparages a subset of people, such as a racial or religious group, then the following questions are asked:
- what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
- if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.[ii]
If the mark is potentially disparaging to an individual or commercial entity, then ask if:
- The mark “reasonably would be understood as referring to the plaintiff;” and
- The mark “would be considered offensive or objectionable by reasonable person of ordinary sensibilities.”[iii]
Notice the subtle difference between the two tests. The first test considers how the disparaged group views the mark while the second test is based on how a reasonable person would view the mark. Also, note how these tests highlight the fact that what is considered “disparaging” is fluid. That is, under these tests what is considered disparaging can change over time—terms that would be seen as disparaging in the 1950s would no longer been seen as such.
Notable debates over disparaging trademarks
The Washington Redskins
On June 18, 2014, the Trademark Trial and Appeal Board (TTAB) found that the term “Redskin” was disparaging of Native Americans when used in relation to professional football services.[iv]
Thus, the Washington Redskins’ trademark was cancelled effective upon this date.
The trademark owner, Pro Football, Inc., argued that the petitioners, Blackhorse, should have been barred from seeking cancellation because the registrations have existed for so long, and have been the subject of significant investments. The TTAB, however, found no merit in this defense.
Pro Football, Inc. appealed the decision, but the TTAB’s decision was upheld by a Federal Court.[v] The mark, however, will not be listed as “cancelled” until after any judicial review is completed.
Despite all the hoopla around this debate, not as much is at stake as you may imagine. Even if the Redskins lose their registration, they can continue to use the mark in all manners. They will simply lose the rights that come with federal registration, which leaves them in the same position as any other common law trademark holder–more on this later.
The Slants is dance rock band who describes themselves as the first Asian-American rock band. Their name, however, has faced great scrutiny from the TTAB.
In a 2013 hearing, the term “slants” was found to be “a highly disparaging reference to people of Asian descent” that continues to be disparaging to “a substantial composite of the referenced group.”
The Slants, however, contend that they have adopted the name to reclaim it and celebrate Asian identity. The TTAB and a panel of Federal Judges disagree, finding that even the best of intentions “does not obviate the fact that a substantial composite of the referenced group find the term objectionable.”[vi]
Perhaps The Slants will be successful in their endeavor to reclaim the term and use it to celebrate Asian identity. If they can move the community’s understanding, then they may be able to successfully reattempt federal registration. While they will not have federal protections in the meantime, they will still have all common law rights associated with their use of the mark and will likely take priority over anyone else who tries to use the mark for similar purposes.
Overcoming Being Labeled as Disparaging
While it may seem that all hope is lost once your mark is deemed disparaging, follow the lead of the Redskins and the Slants because the battle isn’t over until it is over. Just ask another group who managed to escape being permanently labeled as disparaging:
Dykes on Bikes®
Dykes on Bikes’ trademark story began in 2003 when they submitted a trademark application for Dykes on Bikes. Their initial application was denied finding the term “dykes” was disparaging to lesbians. Dykes on Bikes submitted a response to the PTO Office Action with evidence about the organization, the term “dyke” in the LGBT community, and legal arguments about the correct legal standard to apply.
The PTO, again, refused the application.
Dykes on Bikes® then filed a request for reconsideration with the PTO simultaneously with an appeal to the TTAB. The PTO denied the Request for Reconsideration, so they renewed their appeal with the TTAB and submitted new evidence. The TTAB remanded to the PTO to consider the additional evidence and the PTO finally ruled that the mark is not disparaging.[vii]
After this drawn out battle and withstanding a few more hurdles, the organization won and now have their mark federally registered. The key to their success—other than perseverance—was their ability to show how the term “dyke” has lost its disparaging meaning in the LBGT community.
This is a prime example of how what is considered disparaging changes over time and a great illustration of the first test mentioned above.
Recall that the test asks how the disparaged group views the term. Here, it is shown that the LBGT community has taken a term that was disparaging and reclaimed it and redefined it to be a term of solidarity and identity—much like The Slants wish to do.
The main difference here is that Dykes on Bikes® attempted registration of the term after the potentially disparaged community had redefined it; The Slants are attempting to register the term as a way of redefining the meaning but before the community has accepted the new meaning, thus failing the test outlined above.
What happens if your trademark is deemed disparaging?
If your mark faces cancellation due to it being disparaging, then you will only lose the benefits that come with having your mark in the federal register (i.e. legal presumption of ownership, ability to use the ® symbol, and the ability to record the registrations with the U.S. Customs and Border Patrol Service to block importation of infringing foreign goods).
You will not, however, lose your right to use the mark. All you are losing is your federal registration.
Moreover, you will not lose all legal right to the mark because you will maintain common law rights to the trademark which come from use of a mark with goods or services. A decision by the TTAB only regards your right to have the mark federally registered, which is why, time and time again, Federal Judges maintain that rejecting or cancelling a disparaging mark is not a violation of the Free Speech Clause of the First Amendment.[viii]
How can you avoid choosing a disparaging mark?
Having a disparaging mark can not only affect your ability to get and maintain your mark’s federal registration, but may greatly affect your brand’s public image and reputation. In the long run, you may fare better by choosing a safer mark.
If you are in the process of choosing a mark, avoid common pitfalls and legal battles by choosing a mark that is not disparaging. Keep in mind that what is considered disparaging may change over time. Find more advice on choosing a strong trademark here.
If you have already registered your mark and it is being challenged as disparaging, then you will want to speak with an experienced trademark attorney today. An attorney can help you find evidence that the mark is not disparaging in the community (like the attorneys with Dykes on Bikes® did) and can ensure that you follow the proper procedure for filing for Reconsideration, appealing to the TTAB and/or the Federal Courts.
While choosing a disparaging mark is not advisable in the vast majority of cases, it is not the end-all be-all of your brand. Consider the three cases we’ve discussed.
The Redskins have shown how one can successfully register a disparaging trademark and maintain registration for years before it is finally cancelled. Both The Skins and Dykes on Bikes® show not only the importance of timing with your federal registration, but also the importance of perseverance to your cause.
In the end, just because your mark has been deemed disparaging does not mean that the battle is over. You may be able to have your application reevaluated. Even if you do not appeal the decision, all of your rights in your mark are not lost.
Just like The Slants have, and the Redskins will be able to do, you will have every right to continue using your mark; you simply will not be afforded the federal benefits provided by registration.
If you find yourself stuck trying to choose a strong trademark for your brand, or your mark has been rejected as disparaging, consider how an experienced trademark attorney can help. Follow this link to schedule a consultation with one of our trademark attorneys today.
For more free trademark resources, check out our trademark knowledge base. Connect with us to engage in the conversation and the great trademark debates on our social media.
[i] 15 U.S.C. § 1052(a).
[iii] Boston Red Sox Baseball Club Ltd. P’ship v. Sherman, 88 U.S.P.Q.2d 1581, 1589 (T.T.A.B. 2008).
[iv] See Blackhorse v. Pro-Football, Inc. available at http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199
[v] See Pro-Football, Inc. v. Blackhorse, 2015 WL 4096277 (E.D. Va. July 8, 2015). Text available for free at http://law.justia.com/cases/federal/district-courts/virginia/vaedce/1:2014cv01043/308029/161/
[vi] In re Tam, No. 2014-1203, 2015 WL 2076025 (Fed. Cir. Apr. 20, 2015); see also In re Simon Shiao Tam, available at http://ttabvue.uspto.gov/ttabvue/ttabvue-85472044-EXA-12.pdf
[vii] For a more detailed timeline, visit their website http://www.dykesonbikes.org/index.php/about-dykes-on-bikes/history/the-trademark
[viii] See Pro-Football, Inc. v. Blackhorse, 2015 WL 4096277 (E.D. Va. July 8, 2015)(finding that Section 2(a) of the Lanham Act does not implicate the First Amendment because the cancellation of a trademark does not burden, restrict, or prohibit the holder’s ability to use the mark). http://law.justia.com/cases/federal/district-courts/virginia/vaedce/1:2014cv01043/308029/161/