Disparagement
Encyclopedia
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." Unlike claims regarding the validity of the mark, a disparagement claim can be brought "at any time," subject to equitable defenses such as laches
.
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
.
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 American
s. 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
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.
Whether a mark involves an identifiable group involves consideration of:
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. One example of a registered mark with a self-disparaging term is Dykes on Bikes
.
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
, is a statutory cause of action that permits a party to petition the Trademark Trial and Appeal Board
Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board is a body within the United States Patent and Trademark Office responsible for hearing and deciding certain kinds of cases involving trademarks. These include appeals from decisions by USPTO Examiners denying registration of marks, and opposition proceedings...
(TTAB) of the Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(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." Unlike claims regarding the validity of the mark, a disparagement claim can be brought "at any time," subject to equitable defenses such as laches
Laches (equity)
Laches is an "unreasonable delay pursuing a right or claim...in a way that prejudices the [opposing] party" When asserted in litigation, it is an equitable defense, or doctrine...
.
Examples of disparagement
The TTAB has interpreted the Lanham ActLanham Act
The Lanham Act is a piece of legislation that contains the federal statutes of trademark law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.-History:Named for Representative Fritz G...
to give broad standing
Standing (law)
In law, standing or locus standi is the term for the ability of a party to demonstrate to the court sufficient connection to and harm from the law or action challenged to support that party's participation in the case...
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
Gautama Buddha
Siddhārtha Gautama was a spiritual teacher from the Indian subcontinent, on whose teachings Buddhism was founded. In most Buddhist traditions, he is regarded as the Supreme Buddha Siddhārtha Gautama (Sanskrit: सिद्धार्थ गौतम; Pali: Siddhattha Gotama) was a spiritual teacher from the Indian...
for beachwear, use of the name of a Muslim
Muslim
A Muslim, also spelled Moslem, is an adherent of Islam, a monotheistic, Abrahamic religion based on the Quran, which Muslims consider the verbatim word of God as revealed to prophet Muhammad. "Muslim" is the Arabic term for "submitter" .Muslims believe that God is one and incomparable...
group that forbids smoking as a cigarette
Cigarette
A cigarette is a small roll of finely cut tobacco leaves wrapped in a cylinder of thin paper for smoking. The cigarette is ignited at one end and allowed to smoulder; its smoke is inhaled from the other end, which is held in or to the mouth and in some cases a cigarette holder may be used as well...
brand name, and an image consisting of a large "X" over the hammer and sickle
Hammer and sickle
The hammer and sickle is a part of communist symbolism and its usage indicates an association with Communism, a Communist party, or a Communist state. It features a hammer and a sickle overlapping each other. The two tools are symbols of the industrial proletariat and the peasantry; placing them...
national symbol of the Soviet Union
Soviet Union
The Soviet Union , officially the Union of Soviet Socialist Republics , was a constitutionally socialist state that existed in Eurasia between 1922 and 1991....
.
In 1999, the TTAB issued a decision in which the trademark of the Washington Redskins
Washington Redskins
The Washington Redskins are a professional American football team and members of the East Division of the National Football Conference in the National Football League . The team plays at FedExField in Landover, Maryland, while its headquarters and training facility are at Redskin Park in Ashburn,...
football
American football
American football is a sport played between two teams of eleven with the objective of scoring points by advancing the ball into the opposing team's end zone. Known in the United States simply as football, it may also be referred to informally as gridiron football. The ball can be advanced by...
team was canceled under this provision, based on the claim that the name Redskins was disparaging to Native American
Native Americans in the United States
Native Americans in the United States are the indigenous peoples in North America within the boundaries of the present-day continental United States, parts of Alaska, and the island state of Hawaii. They are composed of numerous, distinct tribes, states, and ethnic groups, many of which survive as...
s. 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
Pro-Football, Inc. v. Harjo
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 to cancel the registration of the Washington Redskins football team,...
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 of disparagement
The PTO uses a two-step test to determine whether a mark is disparaging to a group of people:- Would the mark be understood, in its context, as referring to an identifiable group of people?
- May that reference be perceived as disparaging to a substantial composite of that group?
Whether a mark involves an identifiable group involves consideration of:
- The dictionary definition of the term;
- The relationship of the term and other elements of the mark;
- The type of product upon which the mark appears; and
- 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. One example of a registered mark with a self-disparaging term is Dykes on Bikes
Dykes on Bikes
Dykes on Bikes is a loosely affiliated international network of mostly lesbian and dyke motorcycle clubs, Dykes on Bikes in Portland, and the Women’s Motorcycle Contingent in San Francisco...
.
See also
- ReappropriationReappropriationReappropriation is the cultural process by which a group reclaims—re-appropriates—terms or artifacts that were previously used in a way disparaging of that group. For example, since the early 1970s, much terminology referring to homosexuality—such as gay, queer, and faggot—has been reappropriated...
- Term of disparagement
- Trademark dilutionTrademark dilutionTrademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
- Damn with faint praiseDamn with faint praiseDamn with faint praise is an English idiom for words that effectively condemn by seeming to offer praise which is too moderate or marginal to be considered praise at all...