Disparagement
Disparagement, in United States trademark law, was a statutory cause of action which permitted 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] In 2017, the Supreme Court struck down the disparagement provision as unconstitutional in Matal v. Tam.
Determination
The PTO used a two-step test to determine whether the likely meaning of a mark used in connection with goods and services is disparaging to a group of people:[2]
- 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?
According to Trademark Manual of Examining Procedure §1203.03(b)(i), “If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols,” the examiner moves to the second step, asking “whether that meaning may be disparaging to a substantial composite of the referenced group.”[3] Whether a mark involves an identifiable group involves consideration of:[2]
- 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.
As noted below, this process was highly subjective and inconsistent. Rather than using standard dictionaries, the Trademark Office often relied upon questionable sources such as Urban Dictionary, a wiki-joke website.[4]
Criticism of the Disparagement Provision
The TTAB has interpreted the Lanham Act to give broad standing to parties who claim they may be injured by a mark. 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] However, because the Lanham Act did not define "disparage", decisions on what constituted as disparaging were often inconsistent. The TTAB itself called the guidelines "somewhat vague" and "highly subjective".[5] Similarly, the Supreme Court stated that "If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently...it is expressing contradictory views."[6] Others have argued that the disparagement provision was a form of restriction on freedom of speech. Ultimately, the disparagement provision was struck down on those very constitutional grounds.[7]
See also
References
- ↑ 15 U.S.C. § 1052.
- ↑ 2.0 2.1 2.2 Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d (BNA) 1705 (TTAB 1999).
- ↑ "Guides, Manuals, and Resources". www.uspto.gov. Retrieved 2020-03-10.
- ↑ "Urban Dictionary: The New Expert Witness?". Columbia Undergraduate Law Review. 24 May 2019. Retrieved 2020-03-10.
- ↑ gphillips (2016-11-03). "TTAB - Trademark Trial and Appeal Board - *1 IN RE IN OVER OUR HEADS, INC. Serial No. 755,278 August 28, 1990". www.ipmall.info. Retrieved 2020-03-10.
- ↑ "Babbling Prodigiously and Incoherently – Lanham Act Disparagement Clause Ruled Unconsitutional [sic] – Patent Arcade". Retrieved 2020-03-10.
- ↑ "Supreme Court says disparagement clause violates the First Amendment Free Speech Clause". IPWatchdog.com | Patents & Patent Law. 2017-06-19. Retrieved 2020-03-10.
