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 applicant’s 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.

The file wrapper for this application should be viewable here.  If the link is not working go to the basic TESS page here , type in DYKES ON BIKES, then hit the TDR button to view the file).

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.

The use of HOT PROPERTY as a blog name by both Business Week and by RealtyBaron, prompted The Realtygram Blogger to ask: to what extent can similarly named blogs can coxist?  Micropersuasion picked up the ball and impliedly asks: should blog owners be seeking trademark protection?

There seems to be no compelling argument why, as a class, blogs aren’t analogous to magazines or series of newspaper columns, in that they constitute the provision of information services eligible for trademark protection.  The fact that blogs do not charge (or that many do not accept advertisements) would not be relevant as to whether the services are ‘trademarkable.’ 

A blog (like other forms of online information) would have to contain some value-add and do more than merely advertise the ‘primary’ goods or services of the trademark owner, for it to constitute protectable services.

As to whether two blogs could co-exist with the same name, without speaking to the precise example given above, the analysis would be the same as to whether any other goods or services could co-exist under similar, namely the multi-factorial likelihood of confusion test.  The three most important factors would be similarity of the marks; similarity of the goods/services and similarity of the channels of trade.

On the whole, as Internet users have grown more sophisticated, courts have as well, moving away from the early-90’s thinking that the Internet was a single monolithic channel of trade.

So can you read the wrong blog by mistake?

There are numerous ways of arriving at a blog and some (such as arriving by hyperlink) seem confusion-proof.  However, given that users sometimes pick blogs to read  from lengthy blog-rolls or other lists or directories sorted by title, it seems possible that if there were identically named blogs, you could wind up on a blog other than the one you were seeking.  How long you lived under this misapprehension would be determined by a variety of things, for example if what you were looking for had nothing to do with what you saw.

A thorny issue that affects this and other matters of mis-directed web traffic, is the doctrine of initial interest confusion, which may impose liability even if confusion is dissipated fairly quickly.  I’ll merely state that Initial Interest Confusion doctrine is controversial, and I wouldn’t worry about it all that much in the case of good faith name collisions between blogs of unrelated subject matter.

Remember that confusion among readers may not be the only type of actionable confsuion.  What if, for example, a website adopted a name similar to ENDGADGET, and solicited advertising for a website about electronic consumer products?

So should you file for trademark protection for your blog title? Well, are there plausible scenarios where you would be damaged by the third party adoption of a confusingly similar name?

How do you obtain trademark protection?  You could start with the U.S. Trademark Office.  Also, I happen to be in that line of work (marty at schwimmerlegal dot com).

A final point: if your blog is, for example, a review site named “Joe’s Unofficial Blog About [Famous Trademark]’s Products,” you are best off not filing for trademark protection of precisely that name.

ADDENDUM: Prof. Goldman (I’m tired of linking to him) makes the point that group blogs raise issues of who owns the name (and the copyright, for that matter).  This is likely one of those things that no one fights over until it’s apparent it’s worth something.  As Groucho said, loves goes out the door when money comes innuendo.

 

 

WSJ (free for a change) article on piracy in the U.S. of non-U.S. brands (in this case, Mexican and Filipino).

Quibble: The statement that US trademark applications can go through WIPO (which I would describe as a NGO and not an advocacy group) is correct but mis-leading as the procedure is only available to entities that have a ‘significant establishment’ in a country that’s a member of the Madird Protocol (list of Madrid members here). Neither Mexico nor the Phillipines is.

More than a quibble: the article leaves the impression that if the non-U.S. company hasn’t obtained a U.S. registration, then it is out of luck.  While you absolutely want to register your trademark in the U.S. to perfect your rights (as quickly as possible), protectable trademark rights arise in the U.S. from use in interstate commerce or international commerce with the U.S.

Even prior to the controversial Casino du Monte Carlo decision which radically expanded the definition of ‘international commerce with the U.S.’, the definition was sufficently broad enough that a non-U.S. entity, faced with the use in the U.S. of its trademark, should ask U.S. counsel to evaluate whether its activities may give rise to U.S. common law rights.  In the age of the Internet, a non-U.S. company, even one without a U.S.-based distributor, may well meet the threshold for protection.

Additionally, in some rare cases, a non-U.S. mark not in use here may be eligible for protection as a famous mark (the recent Cohiba case at least leaves the door open for such a theory).

As to filing for trademark protection, do it early and often.  Even if the ‘core’ brand covers a non-U.S. location-based service (hotel, restaurant, sporting event, festival),  merchandising, or information services bearing the mark, may well be provided in international commerce with the U.S., thus satisfying the use requirements for a U.S. registration.