1203.03(c)   Disparagement, Bringing into Contempt, and Bringing into Disrepute

Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols. See TMEP §1203.03(a) regarding persons, and TMEP §1203.03(b) regarding national symbols.

In sustaining an opposition on this ground, the Trademark Trial and Appeal Board stated as follows:

Disparagement is essentially a violation of one’s right of privacy – the right to be "let alone" from contempt or ridicule. See, Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983). It has been defined as the publication of a statement which the publisher intends to be understood, or which the recipient reasonably should understand, as tending "to cast doubt upon the quality of another’s land, chattels, or intangible things." Restatement (Second) of Torts §629 (1977).

Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988).

The Board applies a two-part test in determining whether a proposed mark is disparaging:

  • (1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
  • (2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

See In re Lebanese Arak Corp., 94 USPQ2d 1215, 217 (TTAB 2010); In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267 (TTAB 2006); Order Sons of Italy in Am. v. The Memphis Mafia, Inc., 52 USPQ2d 1364, 1368 (TTAB 1999); Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1740-41 (TTAB 1999), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded on other grounds, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff'd, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir.2009), cert. denied, 130 S. Ct. 631 (2009).

The question of disparagement must be considered in relation to the goods or services identified in the application. In Squaw Valley, the terms SQUAW and SQUAW ONE were found to be disparaging when used in connection with clothing in Class 25 and retail store services in the field of sporting goods and equipment and clothing in Class 35, because the likely meaning of "Squaw" is an American Indian woman or wife, and the examining attorney’s evidence established prima facie that a substantial composite of Native Americans would consider the term to be offensive. However, these terms were found not to be disparaging when used in connection with ski-related equipment in Class 28, because the likely meaning of "Squaw" in relation to these goods was deemed to be applicant’s Squaw Valley ski resort. In re Squaw Valley Dev., 80 USPQ2d at 1276-77, 1279, 1282.

In an ex parte case, the examining attorney must make a prima facie showing that a substantial composite of the referenced group would find the proposed mark, as used on or in connection with the relevant goods or services, to be disparaging. Lebanese Arak, 94 USPQ2d at 1218, citing In re Heeb Media LLC, 89 USPQ2d 1071, 1074 (TTAB 2008). In Lebanese Arak, the Board clarified that when the application of a mark to a product would offend the sensibilities of an ethnic or religious group, the proper ground for refusal is that the matter is disparaging to the members of that group. Lebanese Arak, 94 USPQ2d at 1217. Moreover, when religious beliefs or tenets are involved, the proper focus is on the group of persons that adhere to those beliefs or tenets. Id. The prima facie showing shifts the burden to applicant for rebuttal. Squaw Valley, 80 USPQ2d at 1271.