Challenging the Registration of Scandalous and Disparaging Marks Under the Lanham Act: Who has Standing to Sue?

• Date: 01 November 2004
• Published date: 01 November 2004
• DOI: http://doi.org/10.1111/j.1744-1714.2004.04102002.x
• Author: Lynda J. Oswald

Challenging the Registration of

Scandalous and Disparaging Marks

Under the Lanham Act:

Who has Standing to Sue?

Lynda J. Oswald

n

These propositions are so well understood as to require neither the citation of authority

nor an elaborate argument to prove them.

1

At the time that Justice Miller penned these words regarding the

fundamental precepts of trademark law over 120 years ago, trademark law

was indeed simpler, more direct, and less ambiguous. Since then, however,

federal trademark law, responding to unprecedented growth in marketing

and the consumer economy, has mushroomed, encompassing a complexity

of rules and a proliferation of federal causes of action that Justice Miller

likely never imagined.

2

At the same time, societal mores and norms have

251

American Business Law Journal

Volume 41, Issue 2/3, 251–312, Winter/Spring 2004

n

Professor of Business Law, University of Michigan. Copyright 2003 Lynda J. Oswald. This

manuscript was awarded the 2003 Holmes-Cardozo Award by the American Business Law

Journal. A conference draft of this article received the 2003 Distinguished Proceedings Paper

Award from the Academy of Legal Studies in Business. I would like to thank the participants

of the 2001 Hubert Hurst Seminar at the University of Florida Warrington College of Busi-

ness, David L. Baumer of North Carolina State University, and my Michigan Business School

colleagues Julie Simmons Ivy, Margaret Levenstein, and Valerie Y. Suslow for their valuable

comments. I would also like to thank University of Michigan law students Julia DeBeers, John

Hardison, and Marco Salcedo for their excellent research assistance.

1

The Trade-Mark Cases, 100 U.S. 82, 92 (1879).

2

The most recent of these is the creation of a federal cause of action for trademark dilution

in the Federal Trademark Dilution Act of 1995, Pub. L. No. 104–98, 109 Stat. 985 (current

version at 15 U.S.C. § 1125(c) (2000)). For a discussion of this cause of action, see Lynda J.

Oswald, ‘‘Tarnishment’’and ‘‘Blurring’’ Under the Federal Dilution Act of 1995,36A

M.BUS. L.J. 255

(1999).

also undergone radical and dramatic change, particularly with regard to

the nature of the words and symbols that are used to identify and distin-

guish products or services. Marks that might have been deemed repre-

hensible a century ago may well be perfectly acceptable today; conversely,

marks that may have raised few eyebrows in the past may well be viewed as

outrageous today.

3

In particular, while marks containing racial epithets or

depicting offensive ethnic or racial stereotypes were commonplace a cen-

tury ago,

4

contemporary norms reject many of these blatant derogatory

marks.

Many, but not all. Marks depicting stereotypes of Native Americans,

for example, are still commonplace in the sports world.

5

The Chief Wahoo

mark used by the Cleveland Indians baseball team, for example, depicts a

3

See infra note 110 and accompanying text.

4

See HAL MORGAN,SYMBOLS OF AMERICA 52–63 (1986) (reproducing marks that depict racial

stereotypes). Although Morgan does not indicate which of these marks were federally reg-

istered, several of the marks he depicts were. The Aunt Jemima mark that he reproduces, for

example, was federally registered and took several stereotypical forms before evolving into its

current form. See ‘‘Aunt Jemima’’, 120 OFF.GAZ.PAT.OFFICE 1793 (Feb. 6, 1903), registered in

120 OFF.GAZ.PAT.OFFICE 1667 (Apr. 3, 1906) (U.S. Reg. No. 53,538).

Other examples of early commercial uses of negative stereotypes (though not necessarily

identified as registered trademarks) can be found at the Web site of Ferris State University’s

Jim Crow Museum of Racist Memorabilia, at http://www.ferris.edu/news/jimcrow/menu.htm

(last visited Jan. 15, 2004), and at the Web site of Duke University’s John W.Hartman Center

for Sales, Advertising, and Marketing History,at http://scriptorium.lib.duke.edu/hartman (last

visited Jan. 15, 2004).

5

Five major professional sports teams use Native American team names or mascots: the At-

lanta Braves (baseball), the Cleveland Indians (baseball), the Chicago Blackhawks (hockey),

the Kansas City Chiefs (football), and the Washington Redskins (football). Numerous minor

league or minor sports teams also use such names. See http://aistm.org/fr.getinvolved.htm(last

visited Jan. 15, 2004). For example, in Minor League Baseball, one finds the Burlington In-

dians, the Greenville Braves, the Indianapolis Indians, the Kingston Indians, the Peoria

Chiefs, the Richmond Braves, the Rome Braves, the Spokane Indians, and the Oklahoma

RedHawks. See www.minorleaguebaseball.com (last visited Jan. 16, 2004). In addition, uni-

versities, colleges, and public elementary, juniorhigh, and high schools also use such names.

See, e.g., American Indian Sports Team Mascots, Get Involved Now,at http://aistm.org/fr.getin-

volved.htm (listing fifty-eight colleges and universities which use Native American mascots or

sports team names) (last visited Jan. 16, 2004); Ishgooda, Schools Displaying Racial Mascots by

State,at http://ishgooda.nativeweb.org/racial/index2.htm (last visited Jan. 15, 2004) (listing al-

most 3,000 public elementary,junior high, and high schools with Native American mascots or

team names).

252 Vol. 41 / American Business Law Journal

racial stereotype that would be perceived as demeaning or derogatory by

many.

6

Modern federal trademark law provides a mechanism to allow a third

party to oppose the registration of marks that would be scandalous to the

general public or that would disparage particular groups or individuals, as

well as a mechanism to cancel such a registration after it has been issued.

7

In recent years, there have been a handful of high-profile challenges to

federal registrations of allegedly scandalous or disparaging marks. Two

cases in particular have been highly controversial: the 1999 decision of

the Trademark Trial and Appeal Board (TTAB or Board) to cancel the

registration of the Washington REDSKINS marks in Harjo v. Pro-Football,

Inc. (a decision that was overturned on appeal in September 2003),

8

and the 1999 decision of the U.S. Court of Appeals for the Federal Cir-

cuit in Ritchie v. Simpson

9

that an individual had standing to challenge

6

See, e.g., U.S. Reg. No. 1711810 (registered Sept. 1, 1992) (design to be used on clothing).

Several groups have denounced the use of this symbol. Fore xample,the 2000 General Con-

ference of the United Methodist Church denounced the use of the Chief Wahoo logo as de-

meaning to and diminishing of Native Americans. See United Methodists denounce ‘‘Chief Wahoo’’

as demeaning, at http://umns.umc.org/gc2000news/stories/gc044.htm (last visited Jan. 15,

2004). Protestors have burned Chief Wahoo in effigy at Indians’ games. See Jack Achiezer

Guggenheim, The Indians’ Chief Problem: Chief Wahoo as State Sponsored Discrimination and a

Disparaging Mark,46C

LEV.ST.L.REV. 211, 215 (1998) (noting that Chief Wahoo was burned in

effigy during the 1997 World Series and on April 9, 1998). In addition, the Cleveland public

library system enacted a policy prohibiting its employees from wearing Chief Wahoo para-

phernalia. See Andre Cummings, ‘‘Lions and Tigers and Bears, Oh My or Redskins and Braves

and Indians, Oh Why’’:Ruminations on McBride v. Utah State Tax Commission, Political Correctness,

and the Reasonable Person,36C

AL.W.L.REV. 11, 34 (1999); Press Release, Ohio Library Can’t

Ban Workers from Wearing Cleveland Indians Logo, ACLU Says, (Apr. 22, 1999), at http://

archive.aclu.org/news/1999/n042299a.html (last visited Jan. 15, 2004). Finally, some newspa-

pers, including the Star Tribunein Minneapolis, the Seattle Times, and the Kansas City Star,

have declined to reproduce Chief Wahoo and other images they deem potentially offensive.

See Paper DropsBan onIndian Nicknames, Milwaukee Journal Sentinel, June 10, 2003, at p.02C;

What’s in a Name? Plenty for Redskins, Seattle Post-Intelligencer,Jan. 30, 2003, at p.C1; Native

American Journalists Association, NAJA Affirms Newspaper’s Decision to Drop Chief Wahoo,at

http://www.naja.com/pr-chiefwahoo.html (last visited Jan. 15, 2004) (stating that the Kansas

City Star would no longer print Chief Wahoo).

7

Cancellation and opposition proceedings are described infra at notes 43–57 and accompa-

nying text.

8

50 U.S.P.Q.2d (BNA) 1705 (T.T.A.B. 1999), rev’d, 284 F. Supp.2d 96 (D.C.C. 2003). The pe-

titioners have appealed the district court’s decision. Harjo v. Pro-Football,Inc., appeal docketed,

No. 99-1385 (D.C. Cir. Nov. 4, 2003).

9

170 F.3d 1092 (Fed. Cir. 1999).

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