Disparagement

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Disparagement, in United States trademark law, is a statutory cause of action that permits 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] Unlike claims regarding the validity of the mark, a disparagement claim can be brought "at any time," subject to equitable defenses such as laches.

Examples of disparagement[edit]

The TTAB has interpreted the Lanham Act to give broad standing to parties who claim they may be injured by a mark. In one case, the TTAB permitted two women to seek the cancellation of a chicken restaurant's slogan, "Only a Breast in the Mouth is Better Than a Leg in the Hand." Other 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]

In 1999, the TTAB issued a decision in which the trademark of the Washington Redskins football team was canceled under this provision, based on the claim that the name Redskins was disparaging to Native Americans.[2] On appeal to the federal district court and then to circuit court, the TTAB's decision was reversed in 2005 in Pro-Football, Inc. v. Harjo[3] as the laches defense as applied to the particular plaintiffs who brought the complaint was not considered. However, this case was ultimately dismissed when remanded to the District Court.

Determination[edit]

The PTO uses a two-step test to determine whether a mark 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?

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.

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.[4] One example of a registered mark with a self-disparaging term is Dykes on Bikes.[4]

See also[edit]

References[edit]

  1. ^ 15 U.S.C. § 1052.
  2. ^ a b c d Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d (BNA) 1705 (TTAB 1999).
  3. ^ Pro-Football, Inc. v. Harjo, 415 F.3d 44.
  4. ^ a b 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, retrieved 2007-07-12 

External links[edit]