Mcle Self-study Article

• Citation: Vol. 40 No. 3
• Publication year: 2015
• Author: SAMUEL BERRIN San Francisco

MCLE Self-Study Article

SAMUEL BERRIN San Francisco

REVISITING SECTION 2(A) DISPARAGEMENT IN TRADEMARK LAW: DOES THE DISPARAGEMENT TEST MAKE SENSE AND IS THE PROVISION CONSTITUTIONAL?

(See end of this article pgr information on receiving 1.0 hour MCLE self-study.)

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Section 2(a) of the Lanham Act of 1946 (the "Act") allows the United States Patent and Trademark Office ("USPTO") to refuse registration or cancel the registration of a mark if it finds that the mark is disparaging.¹ A disparaging mark "dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison."² This definition is mainly interpreted by judges using plain language definitions because the Act does not expressly define disparagement.³

The consequences of stamping a mark "disparaging" are considerable. There are several significant effects if the USPTO refuses to register or cancels a mark. Federal registration affords a mark holder nationwide constructive notice of trademark ownership⁴ and use from the date of filing.⁵ Furthermore, federal registration allows a mark holder to better defend its mark, as it provides prima facie evidence of ownership and validity of a mark,⁶ allows for the opportunity to file for incontestability status after five years of actual use in the marketplace,⁷ and enables the mark holder to bring a lawsuit in federal court.⁸ Finally, federal registration offers a mark holder a right to request customs officials to bar the import of any goods that bear an infringing mark.⁹

In a vacuum, prohibiting disparaging marks serves an important purpose, and you learned it on the playground at a young age. Some words and symbols have the capacity to hurt people due to some personal connection they have with them. Because we do not want to cause harm to those who may be offended by the marks and correspondingly allow a registrant benefit from this use, we do not allow registration for these marks.

Though there is considerable debate as to the viewpoint of the founders at this country's inception,¹⁰ free speech has become a defining source of national pride. Consider for a minute how bizarre it would be today if a person was thrown in jail solely for his or her speech. it is almost inconceivable. But how about a less extreme example—what if a governmental agency were to be perceived to be dictating speech through the allocation of resources? That, too, would likely be an unacceptable trade-off for most Americans.

So, where do we draw a balance in this complex legal realm between disparaging terms and freedom of speech in trademark law? This article seeks to help answer that question by highlighting two cases currently making their way through the judicial process—In Re Simon Shiao Tam and Pro Football v. Blackhorse. The terms at issue in these cases, "Slants" and "Redskins," have the potential to dishonor, degrade, and injure a group by unjust comparison. Both terms are derogatory names for minority groups. But these cases may elicit different feelings from the public, likely because of who the registrant is and what the intentions are behind the name.¹¹ I argue that while both marks are likely to be considered disparaging under the current inconsistent test, they should nonetheless be allowed registration or continued registration due to First Amendment considerations.

The next portion of this article will explore why some disparaging marks are deemed acceptable while others are not by taking a close look at the inefficient and often bewildering disparagement analysis. The final portion of this article will look at why disparagement in its current form is on a collision path with the First Amendment's free speech protection and, hence, why the current provision is unconstitutional.

Section 2(a) Disparagement under the Lanham Act

in order to determine whether a mark is disparaging, courts apply a two-part test. The first question is the meaning of the mark, taking both objective definitional elements and contextual elements into account.¹² Then, if the matter in question refers to a particular group,

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the court considers whether a substantial composite of the referenced group may be disparaged.¹³

Brief Case Summaries: In Re Tam and Blackhorse v. Pro-Football

In In re Tam, the appellant, Simon Shiao Tam, challenged a decision of the Trademark Trial and Appeal Board (the "Board"), which affirmed the examining attorney's refusal to register the mark THE SLANTS because it is disparaging.¹⁴ The Federal Circuit panel agreed that THE SLANTS clearly refers to people of Asian descent.¹⁵ In fact, Mr. Tam admitted that the mark was meant to associate with Asians and it was derived from the ethnic slur for Asians,¹⁶ leaving little question that the first prong of the test was met. The Federal Circuit then found that the evidence supported the Board's finding that the mark was disparaging due to the traditional and slang dictionaries defining the word with regard to people of Asian descent.¹⁷ Further evidence included brochures, blog posts, and news articles, which were all in agreement about the offensive nature of the term.¹⁸ Not surprisingly, the Federal Circuit ultimately affirmed the decision that the mark was disparaging.¹⁹ On April 27 th, the Federal Circuit, on its own initiative, decided to re-hear the case en banc in order to address First Amendment concerns.²⁰

The Washington Redskins football franchise came into existence in 1932 and currently owns registrations for six marks (the "Redskins Marks") associated with the "Redskins" name.²¹ Beginning in 1992, in Harjo v Pro Football, Inc., the petitioners claimed that the Redskins Marks may disparage Native Americans, and may bring them into contempt or disrepute.²² Agreeing with the petitioners, the Board ordered the cancellation of the federal registrations for the Redskins Marks.²³ On appeal from the district court's reversal of the Board's findings, the United States Court of Appeals for the D.C. Circuit upheld the ruling based on the laches defense and remanded the case back to the district court in order to settle a laches issue for one of the petitioners.²⁴ The Court never addressed the disparagement ruling and afl:er the Supreme Court declined to grant certiorari, the Harjo case was officially dead.

One year later, the Harjo issue was revived with a different lead petitioner, Amanda Blackhorse. Because the district court in Harjo ruled in favor of Pro-Football based on the laches defense, the Board entertained the new cancellation petition on the disparagement claim. The Board concluded that laches did not bar the new petitioners due to the reasonableness of the delay.²⁵ Furthermore, the Board agreed with Ms. Blackhorse that the Redskins Marks must be cancelled due to the disparaging nature of the term.²⁶ Pro-Football challenged this decision in the District Court for the Eastern District of Virginia. On July 8, 2015, the district court denied Pro-Football's summary judgment motion while simultaneously granting the Blackhorse Defendants' motion for summary judgment upholding the Board's order to cancel the registrations of the Redskins Marks on the grounds that these marks consisted of matter that may disparage.²⁷

No doubt the district court's decision will draw an appeal, but it is difficult to see how the Redskins Marks will survive any two-step disparagement test. The term, "Redskin," is an actual racial epithet that nobody could reasonably argue does not refer to Native Americans. On two different occasions, Congress enacted legislation attempting to try to force the organization to change the name.²⁸ Additionally, the District of Columbia has unilaterally passed a resolution requesting that the organization change its racially insensitive name.²⁹ The National Collegiate Athletic Association has since banned "hostile" or abusive" Native American nicknames from all post-season play leading many schools to change their nicknames.³⁰ Several Native American groups have led countless protests and organized demonstrations voicing their displeasure with the name.³¹ Given this public uproar, past judicial decisions, and common sense, if the Redskins Marks are permitted to remain registered it is safe to say that the reason will not be because they survive the disparagement test.

The Disparagement Test

The disparagement test is judge-made in the sense that neither the Lanham Act nor legislative history of the Act gives a test or justification for the adoption of Section 2(a).³² Because they can only speculate as to the intent of the law, courts struggle with the disparagement analysis. Periodically, courts come to different results due to the subjective standards of the test and fail to accurately determine who the relevant group is and what is defined as a "substantial composite" of the group.

The Standards Are Too Subjective

The disparagement standards are subjective, which tees up examining attorneys and judges to take their best swing at the analysis. Some of the factors weighed by courts include the relationship between the disparaging term and other elements of the mark, the product on which the mark appears, and how the mark appears in the marketplace.³³ For example, SQUAW for clothing is disparaging yet it is not for ski-related goods,³⁴ HEEB for clothing and entertainment services is disparaging³⁵ yet not for magazines,³⁶ FAG for magazines is disparaging³⁷ yet FAG FABULOUS AND GAY for bath products is not,³⁸ RETARD for clothing is disparaging³⁹ yet RETARIPEDIA for entertainment services is not.⁴⁰

There may be explanations for the variable results. One such explanation could be that, applied in different contexts, the same word can have different meanings. Unfortunately, this explanation is of little help when each of the aforementioned registered marks has no significant alternative meaning other then the disparaging one. Some have posited semiotic theory to explain such results.⁴¹ Briefly, semi-otic theory is the study of...