Offensive Marks: The Policing of Trademarks in a Diverse World

Vol. 5 No. 4

By

Francine Ward is a San Francisco area business and intellectual property attorney, with a focus on copyright, trademark, publishing, and social media law issues. She can be reached at info@fwardattorney.com. Stephanie Quick is an associate in the Milwaukee office of Foley & Lardner LLP, where she is a member of the intellectual property litigation practice. She can be reached at squick@foley.com.

The Washington Redskins football team is known for its fierce battles on the playing field. However, for the last 20 years, the team has faced another series of battles—in the courtroom. At the heart of the matter is whether the team can continue to use the name REDSKIN. Some Native American groups and their supporters have argued that REDSKIN is an offensive racial slur. In Harjo v. Pro-Football Inc., a group of Native Americans sought cancellation of a number of the Washington Redskins’ trademarks on the basis that the marks were scandalous and disparaging.1 The Trademark Trial and Appeal Board (TTAB) cancelled the trademarks, finding that the marks may disparage Native Americans and may cast Native Americans into contempt or disrepute in violation of Lanham Act § 2(a).2 Pro-Football successfully appealed the TTAB’s decision in federal district court, where the court held that the suit was barred by the doctrine of laches and that the finding of disparagement was not supported by substantial evidence.3 The district court’s decision was upheld on appeal.4 Currently pending before the TTAB is another challenge to the Redskins’ trademark registrations, in which the petitioners are hoping that the laches defense will be unavailable.5

The Washington Redskins saga presents several interesting questions concerning trademarks and diversity: What happens when a mark offends a group of people based on their race, sex, ethnicity, nationality, religion, or sexual orientation? What legal standards are used to determine whether a mark is disparaging to a particular group?

Federal Trademark Law

Section 2(a) of the Lanham Act prohibits the registration of marks that are scandalous or disparaging.6 Scandalous marks are viewed from the perspective of the general public. Disparaging marks, by contrast, are viewed from the perspective of a particular person, group, institution, or culture that is allegedly being damaged by the mark. A refusal to register is proper if the mark is disparaging in whole or in part.7

The Lanham Act does not provide a definition of “disparaging,” and there is little legislative history on this section. According to the Federal Circuit, the legislative history of the Lanham Act indicates that § 2(a) was intended to preclude registrations that conflict with another’s rights, such as the right of privacy and the right of publicity.8 In Greyhound Corp. v. Both Worlds, Inc., the TTAB defined “disparagement” as essentially a violation of one’s right of privacy—the right to be “let alone” from contempt or ridicule.9 Under this view, the intent of § 2(a) was primarily to protect against the registration of marks that harmed the reputation of a particular individual or company.

Legal Standard

Today, the TTAB applies a two-part test to determine whether a mark is disparaging: (1) what is the likely meaning of the mark, and (2) if that meaning refers to an identifiable group, is the meaning disparaging to a “substantial composite” of that group?10

How Is “Likely Meaning” Determined?

The United States Patent and Trademark Office (USPTO) may rely on dictionaries, encyclopedias, and other reference materials to determine the likely meaning of a mark. For instance, the USPTO relied on dictionary and encyclopedia explanations of the significance of Buddhist iconography when an applicant sought registration of BUDDA BEACHWEAR for beach clothes.11 The USPTO also relied on dictionary definitions to deny registration to the mark MOONIES for novelty dolls that dropped their pants, as it found the mark disparaging to members of the Unification Church founded by Sun Myung Moon.12 The TTAB reversed, finding that consumers are more likely to perceive the mark as an allusion to “mooning” than a disparaging reference to a religious sect.13

Some marks that include offensive words may be per se disparaging. These words are often listed in dictionaries and other references as vulgar or derogatory. For instance, the marks SQUAW and SQUAW ONE were found to be disparaging based in part on dictionary evidence and on evidence that Native Americans found the term SQUAW to be “damaging and offensive, the worst of the worst, an insult and obscene.”14 Similarly, the mark HEEB was found to be a derogatory reference to those of the Jewish faith where dictionary definitions unanimously underscored the derogatory nature of the term.15 It has been held that, at least as to offensive matter, dictionary evidence alone can be sufficient to satisfy the USPTO’s burden where the mark has only one pertinent meaning.16

Marks that are not themselves offensive can be disparaging when used on particular goods. For instance, the mark KHORAN was found to be disparaging because the use of the mark on wine was found likely to offend Muslims.17 In Squaw Valley, the terms SQUAW and SQUAW ONE were found to be disparaging when used in connection with clothing and retail store services, but not disparaging when used in connection with ski-related equipment because the likely meaning of SQUAW in relation to the latter goods was deemed to be the applicant’s Squaw Valley ski resort.18

Determining What Is Disparaging to a “Substantial Composite” of the Referenced Group

Whether a proposed mark is disparaging must be determined from the standpoint of a substantial composite of the referenced group in the context of contemporary attitudes.19 Case law does not provide a fixed number or percentage for “substantial composite.” However, it is well established that a “majority” is not necessarily required.20

The fact that the applicant has good intentions with respect to its use of the term does not preclude a finding that the term is disparaging.21 Similarly, the opinion of the examining attorney or the TTAB does not substitute for evidence of the views of the referenced person or group.22 Rather, the TTAB considers evidence such as surveys, affidavits, and documentary sources.23 Where the examining attorney cannot support his or her decision to refuse registration with sufficient evidence, the TTAB will reverse. For instance, where an examining attorney refused to register the mark CHINA FREE on the ground it disparages the People’s Republic of China,24 the TTAB reversed because there was insufficient proof in the record that it was disparaging.25

The TTAB also may consider the applicant’s membership in the allegedly offended group, especially when considering self-disparaging marks. Members of disparaged groups who wish to register initially derogatory words or symbols as marks must still show that the meaning is not disparaging to a substantial composite of the group. For example, in 2003, the San Francisco Women’s Motorcycle Contingent sought to register the name DYKES ON BIKES.26 The USPTO initially rejected the application on the ground that the term was disparaging to lesbian, gay, bisexual, and transgender (LGBT) people.27 The group then submitted extensive documentation from activists, community members, and scholars from across the country, demonstrating that the LGBT community considers “dyke” to be a positive, empowering, and affirming term.28 The USPTO approved the mark for publication in 2006.29 The USPTO also has approved self-disparaging marks such as QUEER EYE FOR THE STRAIGHT GUY and QUEER AS FOLK.30

Other self-disparaging marks have not been as successful. African American comedian Damon Wayans unsuccessfully attempted to register NIGGA for entertainment services.31 Similarly, the USPTO refused to register SLANTS as a mark for Asian American rock band The Slants.32

Challenging Marks

There are three ways that the federal registration of potentially disparaging marks can be challenged: (1) by the USPTO’s refusal of registration, (2) by opposition to the registration after publication, or (3) by cancellation of the registration.

Refusal of Registration

Applications for federal trademark registration are examined by a USPTO attorney for compliance with statutory formalities, and disparaging marks are refused registration. If the registration is refused, the applicant may appeal to the TTAB in an ex parte proceeding.33 If there are doubts on the issue of whether a mark is disparaging, the TTAB prefers to resolve the doubt in favor of the applicant and pass the mark for publication with the knowledge that if a group does find the mark to be scandalous or disparaging, an opposition proceeding can be brought and a more complete record can be established.34

Opposition and Cancellation Proceedings

If a trademark application is approved, the mark is published in the USPTO’s Official Gazette.35 Once the mark is published, a potentially injured party has 30 days to file an opposition before the TTAB challenging the registration of the mark, or to request an extension of time.36

If no opposition is filed within the required time period, the mark is registered and a third party may challenge it only by instituting a cancellation proceeding at the TTAB.37 Although a petition for cancellation generally must be filed within five years after registration, a petition brought under § 2(a)’s prohibition against registration of disparaging marks may be brought at any time.38 For instance, in the Washington Redskins case, the cancellation petition was filed nearly two decades after some of the REDSKINS registrations had issued.

The third-party challenger has the burden of proving that the mark is disparaging by a preponderance of the evidence.39 The TTAB’s decision may be appealed on the administrative record to the Federal Circuit or de novo to any federal district court.40

It is important to note that even if a mark is found to be disparaging, prohibition from federal trademark registration does not affect its use in commerce, and the mark may still be used in the marketplace.41

Disparaging Marks in the International Context

In addition to possible challenges to federal trademark registration in the United States, trademark owners should be mindful of how their marks are viewed internationally.

With the recent implementation of the new generic top-level domains (gTLDs), the Internet Corporation for Assigned Names and Numbers provided a process to challenge prospective gTLDs that could be potentially disparaging to certain groups.42 Under the “limited public interest objection,” third parties can file an objection to a gTLD application if the applied-for gTLD is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law.43 Anyone may file a limited public interest objection.44 However, these objections are subject to a “quick look” designed to filter out frivolous or abusive objections.45 An objection also may be filed as a “community objection” if there is substantial opposition to the proposed gTLD from a significant portion of the community the gTLD string is targeting.46 An objector on this ground must be an established institution associated with a clearly defined community.47

If an objection is filed, the applicant may withdraw the gTLD application, attempt to reach a settlement with the objector, or file a response and enter into dispute resolution proceedings.48 If for any reason the applicant does not file a response to an objection, the objector will prevail by default.49 Dispute resolution proceedings for these particular objections are administered by the International Centre of Expertise of the International Chamber of Commerce.50 The objection filing period opened in June 2012 and will end in March 2013.51

Conclusion

Companies rely on their trademarks to distinguish their goods and services from their competitors. As one of a company’s most valuable assets, trademarks represent a firm’s brand and reputation. In our global marketplace where technology has allowed various populations to become more interconnected, trademark owners must take into account how their marks will be perceived by a variety of cultures and groups. Trademark attorneys and trademark owners should therefore choose their marks carefully and be mindful of the potential offensiveness of a mark to any number of groups.

Endnotes

1. 50 U.S.P.Q.2d (BNA) 1705 (T.T.A.B. 1999).

2. Id. at 1749.

3. Pro-Football Inc. v. Harjo, 284 F. Supp. 2d 96 (D.D.C. 2003).

4. Pro-Football Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009).

5. Blackhorse v. Pro-Football Inc., Cancellation No. 92046185 (T.T.A.B. Aug. 11, 2006).

6. 15 U.S.C. § 1052(a).

7. Id. (“No trademark . . . shall be refused registration . . . unless it—(a) Consists of or comprises . . . matter which may disparage . . . .” (emphasis added)).

8. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps., 703 F.2d 1372, 1375–76 (Fed. Cir. 1983).

9. 6 U.S.P.Q.2d (BNA) 1635, 1639 (T.T.A.B. 1988) (citing Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983)).

10. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 1203.03(c) (Oct. 2012); see also In re Lebanese Arak Corp., 94 U.S.P.Q.2d (BNA) 1215, 1217 (T.T.A.B. 2010) (citing In re Heeb Media LLC, 89 U.S.P.Q.2d (BNA) 1071, 1074 (T.T.A.B. 2008); In re Squaw Valley Dev. Co., 80 U.S.P.Q.2d (BNA) 1264, 1267 (T.T.A.B. 2006); Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d (BNA) 1705, 1740–41 (T.T.A.B. 1999)).

11. In re Hines, 32 U.S.P.Q.2d (BNA) 1376 (T.T.A.B. 1994) (later reversed due to no opposition by Buddhists).

12. In re In Over Our Heads Inc., 16 U.S.P.Q.2d (BNA) 1653 (T.T.A.B. 1990).

13. Id. at 1654.

14. Squaw Valley, 80 U.S.P.Q.2d (BNA) at 1276 (internal quotation marks omitted).

15. Heeb Media, 89 U.S.P.Q.2d (BNA) at 1076.

16. In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003).

17. In re Lebanese Arak Corp., 94 U.S.P.Q.2d (BNA) 1215, 1220 (T.T.A.B. 2010).

18. Squaw Valley, 80 U.S.P.Q.2d (BNA) at 1277, 1282.

19. Id. at 1269; Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d (BNA) 1705, 1758 (T.T.A.B. 1999); see also Boulevard, 334 F.3d at 1340; In re McGinley, 660 F.2d 481, 485 (C.C.P.A. 1981).

20. McGinley, 660 F.2d at 485.

21. In re Heeb Media LLC, 89 U.S.P.Q.2d (BNA) 1071, 1076 (T.T.A.B. 2008).

22. In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1371 (Fed. Cir. 1994) (explaining that the Federal Circuit panel’s opinion does not substitute for evidence from the referenced group).

23. Id.

24. In Re Prosynthesis Lab., Inc., No. 77902555, 2012 WL 1267929 (T.T.A.B. Mar. 23, 2012).

25. Id.

26. U.S. Trademark Application Serial No. 78,281,746 (filed July 31, 2003).

27. Office Action Outgoing for U.S. Trademark Application Serial No. 78,281,746 (Feb. 20, 2004).

28. Paper Correspondence Incoming for U.S. Trademark Application Serial No. 78,281,746 (Apr. 26, 2005).

29. Notice of Publication for U.S. Trademark Application Serial No. 78,281,746 (Jan. 4, 2006). Official registration was delayed further until October 30, 2007, because of a third-party opposition. See Registration Certificate for U.S. Trademark Application Serial No. 78,281,746 (Oct. 30, 2007).

30. See QUEER EYE FOR THE STRAIGHT GUY, Registration No. 2,905,014 (2004); QUEER AS FOLK, Registration No. 2,592,636 (2002).

31. Office Action Outgoing for U.S. Trademark Application Serial No. 76,639,548 (Dec. 22, 2005).

32. Office Action Outgoing for U.S. Trademark Application Serial No. 77,952,263 (June 11, 2010).

33. 15 U.S.C. § 1070.

34. In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994) (“We . . . commend the practice adopted by the Board in another case to resolve the issue whether a mark comprises scandalous matter under § 1052(a) in favor of [the] applicant and pass the mark for publication with the knowledge that if a group does find the mark to be scandalous . . . , an opposition proceeding can be brought and a more complete record can be established.” (alteration in original) (internal quotation marks omitted)); In re In Over Our Heads Inc., 16 U.S.P.Q.2d (BNA) 1653, 1654–55 (T.T.A.B. 1990).

35. 15 U.S.C. § 1062(a).

36. Id. § 1063(a).

37. Id. § 1064.

38. Id. § 1064(3).

39. In re Squaw Valley Dev. Co., 80 U.S.P.Q.2d (BNA) 1264, 1271 (T.T.A.B. 2006); see also In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1339 (Fed. Cir. 2003) (citing Mavety, 33 F.3d 1367).

40. 15 U.S.C. § 1071(a)(1), (b)(1).

41. In re McGinley, 660 F.2d 481, 483–84 (C.C.P.A. 1981); see also Mavety, 33 F.3d at 1374.

42. Internet Corp. for Assigned Names & Numbers, gTLD Applicant Guidebook § 3.2 (June 4, 2012), available at http://newgtlds.icann.org/en/applicants/agb/guidebook-full-04jun12-en.pdf.

43. Id. § 3.2.2.3. For an in-depth discussion on the standards used to evaluate objections under the limited public interest objection, see id. § 3.5.3.

44. Id. § 3.2.2.3.

45. Id.

46. Id. § 3.2.2.4. For an in-depth discussion on the standards used to evaluate objections under the community objection, see id. § 3.5.4.

47. Id. § 3.2.2.4.

48. Id. § 3.2.4.

49. Id.

50. Id. § 3.2.3.

51. See Objection and Dispute Resolution, ICANN, http://newgtlds.icann.org/en/program-status/objection-dispute-resolution (last visited Jan. 16, 2013).

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