Disparagement

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Disparagement, in United States trademark law, was a statutory cause of action which permitted a party to petition the Trademark Trial and Appeal Board (TTAB) of the Patent and Trademark Office (PTO) to cancel a trademark registration that "may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute". [1] In 2017, the Supreme Court struck down the disparagement provision as unconstitutional in Matal v. Tam .

Contents

Determination

The PTO used a two-step test to determine whether the likely meaning of a mark used in connection with goods and services is disparaging to a group of people: [2]

  1. Would the mark be understood, in its context, as referring to an identifiable group of people?
  2. May that reference be perceived as disparaging to a substantial composite of that group?

According to Trademark Manual of Examining Procedure §1203.03(b)(i), “If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols,” the examiner moves to the second step, asking “whether that meaning may be disparaging to a substantial composite of the referenced group.” [3]

Whether a mark involves an identifiable group involves consideration of: [2]

  1. The dictionary definition of the term;
  2. The relationship of the term and other elements of the mark;
  3. The type of product upon which the mark appears; and
  4. How the mark will appear in the marketplace.

As noted below, this process was highly subjective and inconsistent. Rather than using standard dictionaries, the Trademark Office often relied upon questionable sources such as Urban Dictionary, a wiki-joke website. [4]

Registration of terms that are historically considered disparaging has been allowed in some circumstances. Self-disparaging trademarks have been allowed where the applicant has shown that the mark as-used is not considered by the relevant group to be disparaging. [5] One example of a registered mark with a self-disparaging term is Dykes on Bikes, [5] a name for a lesbian motorcycle club, that was registered after a protracted legal battle. However, when the same organization applied for a trademark registration on their logo, it was once again rejected under the disparagement provision. Their second application was only granted after Matal v. Tam. [6] Several analyses of the disparagement provision found that many applicants who were using a reappropriated and self-disparaging terms that could otherwise be neutral were rejected primarily because of the connection to the identity of the applicant. This was at issue in Tam, whose application for the term "slant" was denied precisely because he was a member of an all-Asian American band. [7] [8] In other words, Tam's ethnic identity provided the "context" of the mark in how it would appear in the marketplace - and therefore, would be connected with Asian Americans.

Criticism of the Disparagement Provision

The TTAB has interpreted the Lanham Act to give broad standing to parties who claim they may be injured by a mark. Examples of trademarks that were refused or cancelled for disparagement include a depiction of Buddha for beachwear, use of the name of a Muslim group that forbids smoking as a cigarette brand name, and an image consisting of a large "X" over the hammer and sickle national symbol of the Soviet Union. [2]

However, because the Lanham Act did not define "disparage", decisions on what constituted as disparaging were often inconsistent. The TTAB itself called the guidelines "somewhat vague" and "highly subjective". [9] Similarly, the Supreme Court stated that "If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently...it is expressing contradictory views." [10]

In addition, legal scholars have also pointed out that determinations under the disparagement provision were content based, highly subjective, and inconsistent and vary with time, context, and tribunal. Megan Carpenter and Kathryn Murphy wrote, "Whether a mark is considered "scandalous" or "disparaging" can often change drastically given the context of the mark." [11] Numerous examples include registrations and rejections for identical terms such as dyke, twatty, and queer. [11]

Some critics have also raised the issue of equity and accessibility. In his law review article, Simon Tam (litigant in Matal v. Tam), argued that the disparagement provision was primarily used against communities of color, women, and the LGBTQ, since those groups were more likely to be engaged in reappropriation and therefore targets under the law. He writes, "Asking already burdened and under-resourced communities to appeal using a long, expensive process that does not allow the complexities of identity politics to be navigated properly is regressive and inequitable in nature. When one considers the effect on the marginalized, this places an undue burden on the applicant by an effort, which has never produced a positive result at the TTAB level." [12]

Others have argued that the disparagement provision was a form of restriction on freedom of speech. Ultimately, the disparagement provision was struck down on those very constitutional grounds. [13]

See also

Related Research Articles

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Nigga is a colloquial and vulgar term used in African-American Vernacular English that began as a dialect form of the word nigger, an ethnic slur against black people. The word is commonly associated with hip hop music and African-American gang culture. In dialects of English that have non-rhotic speech, nigger and nigga are often pronounced the same.

<span class="mw-page-title-main">Lanham Act</span> United States trademark law

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<i>Pro-Football, Inc. v. Harjo</i> U.S. trademark law case

Pro-Football, Inc. v. Harjo, 415 F.3d 44, is a case in which the U.S. Court of Appeals for the District of Columbia considered the decision of the United States Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) to cancel the registration of the Washington Redskins football team, based on the claim that the name was disparaging to Native Americans. The Court of Appeals did not actually reach the merits of the TTAB's decision; it sent the case back to the trial court for consideration of a procedural issue.

<span class="mw-page-title-main">Concurrent use registration</span> Federal trademark registration of the same trademark to two or more unrelated parties

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<span class="mw-page-title-main">Reappropriation</span> Valuing a formerly pejorative term in esteem

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<i>Wrenn v. Boy Scouts of America</i>

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<span class="mw-page-title-main">The Slants</span> Rock band and nonprofit organization

The Slants is an American dance-rock band composed entirely of Asian Americans. The band was formed in Portland, Oregon, by Simon Tam in 2006. The band went through a number of early lineup changes, but had a core lineup for its albums and tours by 2009 consisting of Aron Moxley (vocals), Tam, Jonathan Fontanilla (guitar), and Tyler Chen. After experiencing some transitions, the core lineup consisted of Tam, lead singer Ken Shima, and guitarist Joe X. Jiang by 2015. The band's name originates from an effort of reappropriation and was the source of a protracted legal battle that took them to the Supreme Court of the United States in the case Matal v. Tam.

Simon Tam is an American author, musician, activist, and entrepreneur. He is best known as the bassist and founder of the Asian American dance-rock band, the Slants, who won their case against the U.S. Patent & Trademark Office at the United States Supreme Court. The case, Matal v. Tam, was a landmark legal battle that clarified First Amendment rights in trademark law. The court ruled unanimously in Tam's favor, holding that trademark registrations may not be rejected under the Disparagement Clause of the Lanham Act (1946) since that would be considered viewpoint discrimination; this includes, as in Tam's case, trademarks using such language filed by members of minority groups who wish to reclaim slurs that would have been previously denied.

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<span class="mw-page-title-main">Thunderpussy</span> American rock band

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<span class="mw-page-title-main">Soni Wolf</span> American queer activist

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Patent and Trademark Office v. Booking.com B. V., 591 U.S. ___ (2020), was a United States Supreme Court case dealing with the trademarkability of a generic terms appended with a top-level domain (TLD) specifier. The Court ruled that such names can be trademarked unless the existing combination of term and TLD is considered to have a generic meaning to consumers.

Vidal v. Elster,, is a pending United States Supreme Court case dealing with 15 U.S.C. § 1052, a provision of the Lanham Act regarding trademarks using the name of living individuals without their consent. The court will decide whether such a provision violates the Free Speech Clause of the First Amendment.

References

  1. ↑ 15 U.S.C.   § 1052.
  2. 1 2 3 Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d (BNA) 1705 (TTAB 1999).
  3. ↑ "Guides, Manuals, and Resources". www.uspto.gov. Retrieved 2020-03-10.
  4. ↑ "Urban Dictionary: The New Expert Witness?". Columbia Undergraduate Law Review. 24 May 2019. Retrieved 2020-03-10.
  5. 1 2 Anten, Todd (2006), "Self-Disparaging Trademarks and Social Change: Factoring the Reappropriation of Slurs into Section 2(a) of the Lanham Act" (PDF), Columbia Law Review, 106: 338, archived from the original (PDF) on 2006-04-26, retrieved 2007-07-12
  6. ↑ "DYKES ON BIKES No Longer Idling After Matal v. Tam". DuetsBlog ®. 2017-11-17. Retrieved 2020-03-10.
  7. ↑ Tam, Simon (2017-06-23). "Opinion | The Slants on the Power of Repurposing a Slur". The New York Times. ISSN   0362-4331 . Retrieved 2020-03-10.
  8. ↑ Kreps, Daniel (2017-01-10). "Asian-American Group The Slants Head to Supreme Court Over Band Name". Rolling Stone. Retrieved 2020-03-10.
  9. ↑ gphillips (2016-11-03). "TTAB - Trademark Trial and Appeal Board - *1 IN RE IN OVER OUR HEADS, INC. Serial No. 755,278 August 28, 1990". www.ipmall.info. Retrieved 2020-03-10.
  10. ↑ "Babbling Prodigiously and Incoherently – Lanham Act Disparagement Clause Ruled Unconsitutional[sic] – Patent Arcade" . Retrieved 2020-03-10.
  11. 1 2 Carpenter, Megan; Murphy, Kathryn (2010-01-01). "Calling Bullshit on the Lanham Act: The 2 (a) Bar for Immoral, Scandalous, and Disparaging Marks". University of Louisville Law Review. 49: 465.
  12. ↑ Tam, Simon (2018). "First Amendment, Trademarks, and the Slants: Our Journey to the Supreme Court". Buffalo Intellectual Property Law Journal. 12– via Hein Online.
  13. ↑ "Supreme Court says disparagement clause violates the First Amendment Free Speech Clause". IPWatchdog.com | Patents & Patent Law. 2017-06-19. Retrieved 2020-03-10.
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