The Damaged State of Disparagement - Kennedy Law, P.C.

The Damaged State of Disparagement

Author: Stephen A. Kennedy

The Washington “REDSKINS” trademarks have been in litigation for over twenty years. In 1992, the dispute began when a group of Native Americans filed a petition to cancel the registration on the grounds that it disparaged Native Americans. Currently, the Lanham Act does not permit registration of mark that “may disparage” a group or individuals.

In July of this year, a federal judge ordered the cancellation of the Washington “REDSKINS” trademarks. The Washington Redskins have appealed to the Fourth Circuit. In a rather unusual move, the Redskins brief directs the court to examples of other registered trademarks that are, arguably, equally or more offensive than the “REDSKINS” mark. The majority of the examples referred to in the Redskins brief are too inappropriate to print on this blog. AmLaw.com has a copy of the Brief but be forewarned, some of the material is quite explicit. I think that the Redskins’ attorneys do an excellent job highlighting the unequal treatment of marks under the Lanham’s Act current provisions.

Two tests are used to decide whether a mark “may” be disparaging. For marks that may disparage groups of individuals, the following test is employed:

1. 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 in the manner in which the mark is used in the marketplace in connection with the goods or services?

 2. If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, might that meaning be disparaging to a substantial composite of the reference group? In re Squaw Valley Dev. Co. (80 USPQ 2d (BNA) 1264, 1267 (TTAB 2006).

A mark that potentially disparages an individual may not be registered if

1. The mark “reasonably would be understood as referring to the plaintiff;” and

2.  The mark “would be considered offensive or objectionable by reasonable person of ordinary sensibilities.”Bos Red Sox Baseball Club, Ltd P’ship v. Sherman, 88 UPSQ 2d (BNA) 1581, 1589 & n7 (TTAB 2008).

The first test is based on the subjective viewpoint of the potentially disparaged group itself, while the second test reviews how a reasonable person would view the mark.

The Redskins have raised First Amendment arguments regarding the USPTO’s essentially unfettered discretion to determine what may or may not be disparaging. The team has also pointed out that upon its review of over three million trademarks registered since 1870, no other trademark has ever been retroactively cancelled on the grounds of disparagement other than the “REDSKINS” marks.

Section 2(a) disparagement is a quickly developing area of law and the interplay with First Amendment concerns makes this a hot issue area for trademark law. The Federal Circuit is also currently reviewing en banc a decision that upheld the denial of “THE SLANTS,” a mark used by an Asian-American rock band. “THE SLANTS” mark was refused registration on the basis that it may disparage Asians. Interestingly, The Slants band is comprised of Asian Americans.

The trademark attorneys at Kennedy Law will be monitoring these cases closely. If you have questions about whether your potential mark could be refused registration because it is “disparaging,” contact us to have one of our trademark attorneys provide a comprehensive review and analysis of your mark.

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