What do an Asian-American rock band and a professional football team from Washington D.C. have in common? Both lost, or were refused, trademark registrations under Section 2(a) of the Lanham Act, which requires a trademark to be refused if it “[c]onsists of or comprises immoral,…, or scandalous matter; or matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols.” Since 2014, several trademarks owned by the Washington Redskins were cancelled for being disparaging to Native Americans, and when a mark for THE SLANTS was filed by an all Asian-American rock band, it was refused for being “[a] racial slur referencing the eyes of those of Asian descent.” This refusal has since been appealed all the way to the Supreme Court of the United States, where the fate of the disparagement portion of Section 2(a) will soon be decided.
Meanwhile, Section 2(a) remains an active part of trademark law, and is important to understand for anyone thinking about getting a registration for something risque. Before we go any farther, it is important to note that Section 2(a) contains two separate grounds for refusal of naughty marks (it actually contains additional grounds for refusing marks that are “deceptive” or create a “false association,” but that is outside the scope of this entry.) The first such ground is refusal of “disparaging” marks, which was the ground applied to both the Redskins and The Slants.
(1) DISPARAGING
In testing to see if a mark is disparaging, the Examining Attorney must ask two questions:
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What is the likely meaning of the mark, taking into account both the literal definition of the term(s) of the mark, but also possible slang meanings, as well as the meaning within the context of the goods and services covered by the mark.
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If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, might that meaning be disparaging to a substantial (but not necessarily majority) composite of the reference group? See In re Squaw Valley Dev Co. (80 USPQ 2d (BNA) 1264, 1267 (TTAB 2006).