Think Twice Before Attempting to Register a Disparaging Trademark

Considering protecting your brand by filing a trademark application? Have you already done so? Read below for important considerations regarding choosing the right trademark name as well as contesting a finding by the USPTO that your trademark is obscene or disparaging.

When the Washington Redskins filed for their first trademark registration in 1967, they did not foresee any problems, as there were no other professional football teams with that name.  However, even though the United States Patent and Trademark Office (USPTO) initially granted registration of their mark, it was later deemed offensive and disparaging against Native Americans.

If you have ever registered a trademark with the USPTO, you probably never considered whether your mark is offensive or disparaging. Why? Because the First Amendment of the U.S. Constitution protects, among other things, a person’s freedom of speech in this country. Because of this, generally a trademark cannot be refused registration on account of its nature – i.e. the content of the mark. However, if the mark is considered disparaging or offensive, it will be refused registration with the USPTO as a violation of the Lanham [Trademark] Act.

What Is A Disparaging Trademark?

The USPTO uses a two-step test to determine whether a mark is disparaging. Basically, the test looks at two things: (1) how an ordinary person would view the mark and (2) how the so-called “disparaged” group views the mark. If the mark improperly disparages national symbols, beliefs, institutions or persons, either living or dead, then that mark will be considered disparaging. What is considered disparaging is fluid, and can change over time. In other words, what was once considered disparaging may not be anymore.

Some examples of what the USPTO has found to be disparaging marks are: the Chief Wahoo mark used by Cleveland Indians baseball team, the term “WASHINGTON REDSKINS” used by the Washington Redskins football team, the term HEEB for clothing (a previous derogatory term used against those of Jewish descent), “SQUAW” and “SQUAW ONE” for retail services (a term which was held to be offensive to Native Americans), “KHORAN” for wines (a term which was held to be offensive to Muslim Americans as alcohol is a prohibited substance in Islam).

Notable Litigation Over Disparaging Trademarks

The U.S. Supreme Court is currently considering whether prohibiting offensive or disparaging marks from trademark registration violates the First Amendment. In a case presently before the Supreme Court, Lee v. Tam, the first all-Asian American dance-rock band known as “THE SLANTS” attempted to register their trademark as the name of their band, but were refused because the name is disparaging to Asian-Americans. The band claims that their reason for using the name “THE SLANTS” is not meant to be offensive or disparaging. Rather, it is meant to embrace a derogatory term used to describe their ethnicity in a positive way by reappropriating its meaning.

Similarly, the owners of the N.F.L. team the Washington Redskins are currently involved in a legal trademark dispute over their name, the “REDSKINS.”  Opponents consider the term “REDSKIN” to be disparaging and a derogatory racial slur which has been used to describe people of Native American dissent. In fact, both the trial court and Court of Appeals in Virginia agreed, arguing the mark was indeed disparaging and offensive. The Washington Redskins owners claim that it was unconstitutional for the government to reject its mark, as they meant no offense by the use of the mark. This matter will not be resolved fully until the Supreme Court rules on the Slants case, above. Depending on how that case is ruled, the Redskins may lose their trademark protection with the USPTO.

How Does This Apply To You?

Regardless of what stage you are in regarding the trademark registration process, the results of the two cases, above, are relevant. The Court’s ruling in Tam may affect your brand whether you already have a registered trademark with the USPTO, applied for a trademark with the USPTO and are currently awaiting registration, or have yet to apply for trademark protection but are considering filing an application to protect your brand.

Until the Supreme Court rules in Tam, the current rule is that if your mark is either refused or cancelled due to it being disparaging, then you lose the protections that a federal trademark registration provides. These protections include providing constructive notice nationwide that the mark is indeed yours, the right to bring a trademark infringement suit in federal court, the right to use the mark nationwide, the right to have the ® next to your mark, and most importantly, a trademark which has been registered for five years is considered “incontestable,” meaning the owner has established exclusive rights to use of the mark in commerce.

However, please note that you will not lose all the rights to your mark. While your federal registration may be lost, you still have common law rights to the mark. Common law trademark rights are governed by state law, and protect the trademark holder in the geographic region where the mark is used. In other words, even if you lose the federal trademark protection, you still have rights to exclusive use of your mark in the area where you have been using the mark in commerce.

What Can You Do?

If you are considering registration of a mark, it is important to choose a mark that is not likely to be found disparaging either now, or later down the line. It is much easier to be on the safe side and choose a mark that is not likely to be offensive or disparaging, rather than go through the hassle of paying for a trademark application to later find out that your mark is not protectable because it is obscene. It is always a good idea to talk to a trademark attorney, as they will be able to assist you through the process of deciding which mark to register, as well as any later filings or appeals that may be necessary moving forward. Furthermore, most trademark attorneys will offer an estimate or a flat fee at a reasonable rate for handling the trademark registration, including providing research and advice regarding choosing the name of your trademark.

If you have already registered a mark that could possibly be considered disparaging by the USPTO, you should watch closely to see how the Supreme Court rules in Tam. If the USPTO finds that your already registered mark or current application is disparaging, you may have legal recourse. There have been several cases where the USPTO initially ruled against registration because the mark was disparaging, and later reversed their ruling. In other words, if you receive an initial ruling against registration or for cancellation based on a disparaging mark, do not give up. Contact a trademark attorney who can help you through the opposition to any cancellation proceedings and craft arguments on your behalf.

The reader is cautioned that the information contained herein is not legal advice and is not a substitute for legal advice. There is no attorney client relationship created by the transmittal of this information. The opinions expressed herein are those of the authors only and do not necessarily reflect the views of Cohen Business Law Group, apc.

JEFFREY A. COHEN
Jeffrey A. Cohen presently serves as managing partner and founder of the Cohen Business Law Group, apc with two offices in California. Mr. Cohen is a Business, Intellectual Property and Internet law attorney who represents business entities on business, corporate, finance, commercial, employment and intellectual property issues. He attended Arizona State University school of business where he obtained a degree in Advertising and his Juris Doctorate from Pepperdine University School of Law in Malibu, CA and London England. Mr. Cohen can be reached at JCohen [at] Cohenblg.com.

MIRANDA NICHOLS
Miranda Nichols is a law clerk focused upon trademark law at Cohen Business Law Group, apc, a business, corporate, intellectual property and internet law firm with two offices in California. She attended the University of Southern California, studying international relations and sociology where she was also an All-American water polo player. Ms. Nichols earned her Juris Doctorate in 2015 from Loyola Law School. Ms. Nichols can be contacted by email at mnichols [at] cohenblg.com

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