How About Them Redskins?
(And how about them scandalous trademarks?)
Section 2(a) of the Lanham Act provides that federal registration of a trademark may be refused if the mark “…consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols…” Last year, a divided panel of the Trademark Trial and Appeal Board granted a petition for cancellation and ordered the cancellation of six registrations for marks comprising or containing the word REDSKINS on the ground that the marks disparage Native Americans. Pro Football, Inc. is challenging that decision in the U.S. District Court for the Eastern District of Virginia.
Not surprisingly, the ACLU has weighed in in favor of the Redskins registrations arguing that the First Amendment protects against government interference in private speech. At the same time, the ACLU is a vocal member of the loud chorus of people and groups calling on the team to change its name.
More recently, the TTAB made headlines by affirming a refusal to register the mark THE SLANTS for “entertainment in the nature of live performances by a musical band.” On appeal, the Court of Appeals for the Federal Circuit upheld the refusal to register on the ground that the mark is disparaging to Asian peoples. The Board and the Court found that the mark refers to an identifiable group – persons of Asian descent – and that a substantial composite of the referenced group finds it to be disparaging. In an odd procedural twist, the CAFC, sua sponte, decided to rehear the case en banc and it invited interested parties to submit amicus briefs.
On a much lighter note, there is a substantial body of entertaining and befuddling case law dealing with another part of §2(a) of the Lanham Act – scandalous marks. Although the decisions are hard to reconcile, they are usually fun to read. You be the judge – answers are at the end:
- “Wanker” for beer
- “Wanker” for clothing
- “Cocaine” for clothing
- “Cocaine” for soft drinks
- “Managing Your Inner A**hole” for a series of books
- “The Complete A**hole’s Guide To…” for a series of books
- “Big Pecker Brand” for clothing
- “Audioturd” for musical recordings
- “Fuct” for clothing, and
- “Cock Sucker” for chocolate suckers molded in the shape of a rooster
It can be very difficult to predict how the Patent and Trademark Office will perceive a mark that comes close to the line. Perhaps it is better to stay a step or two behind the line.
(Scandalous: 2, 4, 6, 8, 9, and 10
Not Scandalous: 1, 3, 5, and 7)
Bonus round: Is “Porno Jesus” for DVDs and video recordings featuring music videos, adult themed content, glamour photography, and adult entertainment scandalous? You bet.