What Is a Disparaging Trademark?

The Trademark Trial and Appeal Board (TTAB), an independent administrative tribunal of the U.S. Patent and Trademark Office (USPTO) issued an eagerly anticipated decision last month in the case of Blackhorse v. Pro Football Inc., more commonly known as the Redskins trademark case.

The plaintiffs in the case were five Native Americans, who petitioned the TTAB to cancel six of the Washington Redskins’ registered trademarks on the basis that the marks were disparaging to Native Americans under U.S. trademark law.  The TTAB, after years of protracted litigation between the parties, agreed with the plaintiffs and issued an order cancelling the registered marks at issue in the case.

This month, we consider the fundamental principle at the heart of the matter – the somewhat obscure and rarely used provision of U.S. trademark law concerning disparaging, immoral or scandalous trademarks. The USPTO rarely rejects a trademark application on the grounds of disparagement, but when it does, it’s usually newsworthy. Section 2(a) of the Trademark Act bars the registration on either the Principal or the Supplemental Register of a designation that consists of, or comprises, matter which, with regard to persons, institutions, beliefs, or national symbols, does any of the following: (1) disparages them, (2) falsely suggests a connection with them, (3) brings them into contempt, or (4) brings them into disrepute.

The Redskins case hinged on Section 2(a)(1), namely that the term “Redskins” was disparaging to Native Americans, when used in relation to professional football services. What does this mean from a practical standpoint? What is a disparaging trademark and how can you avoid such a finding for your trademark application? Let’s consider the following.

To determine whether a mark is disparaging to a group of people, e.g., Native Americans in the current case, the USPTO uses a two-part analysis: (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, and the manner in which the mark is used in the marketplace in connection with the goods or services, and (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 referenced group?

To determine whether a mark is disparaging to an individual or commercial entity, the standard of review is (1) whether the mark would reasonably be understood as referring to the individual or commercial entity, and (2) would the mark be considered offensive or objectionable by a reasonable person of ordinary sensibilities. Note the differences in the standard – a substantial composite for groups of peope, versus a reasonable person for an individual or corporate entity.

According to Section 1203.01 of the Trademark Manual of Examining Procedure (the USPTO’s trademark examination bible), an Examiner who finds a proposed trademark unacceptable must provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace.  The burden of proof on the USPTO is really quite low, and such evidence may include dictionary definitions, newspaper articles, and magazine articles.  So essentially, if a large swath of the general public would agree that your proposed mark is derogatory or disparaging in its reference to a group of persons, institutions, beliefs or national symbols, or if a reasonable person would consider the mark disparaging of an individual or commercial plaintiff, the mark may be refused registration under Section 2(a) of the Trademark Act.

To avoid a possible Section 2(a) disparagement refusal of your trademark, consider the following tips:

1. Analyze your proposed trademark for ethnic, racial, cultural and religious sensitivity. It may be funny, amusing or non-offensive to you, but what about the broader public or a particular group?
2. Examine alternate meanings, translations, or phonetic equivalents of your mark and how it could be misinterpreted, despite your best intentions.
3. Evaluate your mark in context. Something that may be non-offensive in one context, may be viewed differently depending on the nature of the goods and/or services offered in connection with the mark.
4. If your mark straddles the line between wit and humor and possible offensiveness, gauge public feedback prior to applying for trademark registration.

For more information on disparaging trademarks, or scandalous and immoral marks, or to discuss your particular trademark concerns, contact us for a complimentary consultation with one of our trademark attorneys, (800) 769-7790. We’re always happy to hear from you.