I suppose a more modest title would have been “Columbia Law Review Article Discusses ‘Disparaging’ Trademarks.’ (See Footnote 42). TTABlog is cited as well.
Wired article on Damon Wayans filing for the mark NIGGA for various goods. He has several months to respond to an office action that rejects the application on Section 2(a) ‘immoral or scanadalous matter’ grounds (well known to those following the DYKES ON BIKES matter).
The DYKES ON BIKES application was approved for publication but was recently opposed. We don’t have an (even uncitable) TTAB ruling yet on that applicant’s position. Evidence was submitted to establish that use of the terms DYKES by a lesbian social group was empowering, not disparaging. This evidence can support two related but distinct arguments:
1. The term is not disparaging if used by members of the ‘target’ group;
2. That members of target group would wish to use the term is evidence that cultural standards have evolved such that the term is no longer disparaging (for purposes of Section 2(a)).
Both statements may be true but one concern I have is the fact that terms such as DYKES and NIGGA still retain their offensive qualities when uttered by certain people in certain contexts. How to reconcile that with both arguments? Are there trademarks that can only be owned by members of ‘protected classes’? Can the PTO make determinations as to who is and who is not a member of that protected class? Can such trademarks be assignable only to people who will use the term the ‘right way’?
Is the analysis for a mark that is merely the per se term, such as NIGGA, different from a term such as DYKES ON BIKES, which is, devoid of any other context, humorous?
TTABlog reports that a man has filed an opposition to the San Francisco Women’s Motorcycle Contingent application to register the mark DYKES ON BIKES for “Education and Entertainment Services in the nature of organizing, conducting, and promoting parade contingents, community festivals, events, street fairs, forums, seminars, parties and rallies to support, organize and motivate women motorcyclists everywhere to do the same, thereby fostering pride in a wide variety of sexual orientations and identities, namely lesbian, bisexual and transgender.” (Opposition No. 91169211, filed on February 15, 2006).
Opposer argues that registration of the mark DYKES ON BIKES would foster hatred of men, because, you know, lesbians hate men. Although not so much hate as in a tracking them down and killing them kind of hate, but more of sort of a not having sex with them hate.
Opposer makes a ‘disparagement’ argument, not a “‘scandalous or immoral’ material” argument. That the application was approved signals (but is not determinative) of how the Board would come out on whether the term DYKES is scandalous or immoral.
Arguing that the registration of a mark that merely identifies a group (in contrast to a “I HATE [name of group]” mark), disparages some other group, is somewhat novel.
For groups for whom hatred of another group is an essential organizing principle, the ‘scandalous or immoral’ clause may be more applicable. For example, an application that contained the term KU KLUX KLAN recently received the following rejection:
“Registration is refused because the proposed mark consists of or comprises immoral or scandalous matter. Trademark Act Section 2(a), 15 U.S.C. Section 1052(a); TMEP Section 1203.01. According to the attached evidence from the Internet, the proposed mark includes the wording KU KLUX KLAN and is thus scandalous because a majority of the public finds references to the KU KLUX KLAN offensive in light of their beliefs and historical behavior.
‘To be considered “scandalous,” a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out for condemnation,” in the context of the marketplace as applied to goods or services described in the application. [citations omitted]. Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, . . . and in the context of contemporary attitudes. ‘”
If opposer were to succeed in arguing that the name of a group that excludes other groups is per se disparaging, then we may see a flood of litgation against any gender-defined organization (such as the HE MAN WOMAN HATERS CLUB.)
TARR shows that DYKES ON BIKES (filed by a lesbian biker group) has been approved for publication. Background on the issue (whether members of a group can register a ‘scandalous’ pejorative term that applies to that group) here.