January 01, 2017

iWitness: Can Trademark Laws Dictate What Is Disparaging?

Yuri Mikulka and Caleb Bean

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Can federal trademark law prohibit registration of trademarks that are disparaging? Currently, yes. But how do you determine what is disparaging? And wouldn’t such a prohibition violate our First Amendment right to free speech? Possibly.

Under section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), the U.S. Patent and Trademark Office (USPTO) can refuse a trademark registration that “comprises immoral, deceptive, or scandalous matter; or matter which may disparage.” The USPTO has applied this disparagement clause to refuse registrations such as HAVE YOU HEARD THAT SATAN IS A REPUBLICAN?, DEMOCRATS SHOULDN’T BREED, and THE CHRISTIAN PROSTITUTE.

But is a term still disparaging if the intended target is the one seeking to register the disparaging mark? Consider Lee v. Tam. That case involves an all-Asian rock band’s request for federal trademark registration of the trademark THE SLANTS. This has been a subject of heated controversy. The USPTO believes the mark should not be registered because it is disparaging, while the U.S. Court of Appeals for the Federal Circuit believes the disparagement clause is altogether unconstitutional. Even groups that are often aligned, such as the National Asian Pacific American Bar Association and the American Civil Liberties Union disagree on this issue.

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