Section 2(a) of the Lanham Act prohibits registrations of, among other things, material that brings people into contempt or disrepute.
A women motorcyclist organization applied for trademark registration of DYKES ON BIKES (stating a date of first use of 1976).
The examining attorney issued a preliminary refusal stating:
. . . . the proposed mark consists of or comprises matter which may disparage or bring into contempt or disrepute to the lesbian, bisexual and transgender communities. Consumers reasonably would understand that the term DYKES in the proposed mark refers to the disparaged party. A reasonable person of ordinary sensibilities would consider this reference offensive or objectionable because the term has been used as a derogatory or offensive term for lesbians. Trademark Act Section 2(a), 15 U.S.C. §1052(a); See Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB 1988); In re Anti-Communist World Freedom Congress, Inc., 161 USPQ 304 (TTAB 1969); TMEP §§1203.03, 1203.03(c) and 1203.03(d).
A disparagement claim must show that the proposed mark (1) would reasonably be understood as referring to the disparaged party; and (2) is in fact disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities. Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988). See attached definitions that indicate the term is considered derogatory or offensive in relation to lesbians.
The applicant’s attorney argued that applicant was pro-lesbian, and that lesbians utilize the term as a source of pride and empowerment. Voluminous evidence on the meaning of the term today was submitted. Furthermore, the attorney argued that the views of the referenced group should determine whether the material is offensive.
The examining attorney maintained the rejection and replied in part:
The fact that some of the disparaged party have embraced or appropriated the term DYKE, does not diminish the offensiveness of the term that has historically been considered offensive and derogatory.
The applicant submitted approximatley 400 more pages of evidence on the present connotations of the term and the examning attorney replied:
Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, uniformly indicate that a word is vulgar, and the applicants use of the word is limited to the vulgar meaning of the word. TMEP §1203.01. As demonstrated by the evidence previously and presently submitted by the examining attorney, the term DYKE is considered vulgar, offensive and/or disparaging. The fact that a certain segment of the disparaged group has adopted the term and now seeks to obviate the vulgar context of the term does not overcome the Section 2(a) refusal.
So now the application goes to the Trademark Trial and Appeal Board. The jurisprudence on the ‘disparage’ clauise of Section 2(a) is not extensive, and the TTAB has not appeared to have ruled (At least not recently) on a 2(a) situation where a portion of the disparaged group brings the application. The TTAB recently barred registration of WIFE BEATER for t-shirts but the application was not being brought by wives who had been beaten. The SKINS applications was not filed by Indians.
Interestingly, the marks QUEER AS FOLK and QUEER EYE FOR THE STRAIGHT GUY have been registered. An application for MARRIAGE IS FOR FAGS is soon to be examined.
It is certainly the case as a matter of cognitive psychology that the identity of the speaker (and thier intent) effects the perception of the term. These applicants don’t intend to disparage lesbians and in the context in which this mark is encountered, the mark will not likely be perceived as disparaging. However, can this phenomenon can be reduced to a workable rule? Given that there still are entities out there who use the term offensively, should the Trademark Office allow registration of DYKES marks if the applicant proves that they are gay-friendly? If a term is offensive on its face, can an intent test be administered?
Or the TTAB may simply say that the term isn’t that offensive anymore.
SF Chronicle article here.
Interesting afterthought – if the application is approved by the TTAB (or CAFC above it), the application would still have to be published at which point a third-party could oppose.