1203.03(b)   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)(i) regarding persons, TMEP §1203.03(a)(ii) regarding institutions, and TMEP §1203.03(a)(iii) 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).

1203.03(b)(i)   Elements of a §2(a) Disparagement Refusal

The Board applies one of two substantive tests in determining whether a proposed mark is disparaging. The test depends on the nature of the interest disparaged by the mark, that is, whether the interest is commercial or non-commercial (e.g., religious, ethnic, personal reputation, or national interest). See Bd. Of Trs. of Univ. of Ala. Pitts, 107 USPQ2d 2001, 2028 (TTAB 2013).

In an ex parte case involving disparagement of a non-commercial interest, the following two-part test applies 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 Geller, 751 F.3d 1355, 1358, 110 USPQ2d 1867, 1869 (Fed. Cir. 2014); In re Tam, 108 USPQ2d 1305 (TTAB 2013); 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. 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).

In such cases, the examining attorney must make a prima facie showing that a substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark, as used on or in connection with the relevant goods or services, to be disparaging in the context of contemporary attitudes. See In re Geller 751 F.3d at 1362, 110 USPQ2d at 1872; In re Tam, 108 USPQ2d at 1310; 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 not under the clause of §2(a) that prohibits registration of matter that is "immoral" or "scandalous," but under the clause that prohibits registration of matter that "may disparage" the affected person, belief, institution, or symbol, or may bring them into contempt or disrepute. 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 fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable. In re Tam, 108 USPQ2d at 1312 (citing Heeb Media, 89 USPQ2d at 1077). The prima facie showing shifts the burden to applicant for rebuttal. Squaw Valley, 80 USPQ2d at 1271.

In the more rare situation where disparagement relates to a commercial interest, such as disparaging a particular business or trademark owner, the following two-part test applies in determining whether a proposed mark is disparaging:

  • (1) Whether the communication reasonably would be understood as referring to the commercial entity; and
  • (2) Whether the communication is disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities.

See Bd. of Trs. of Univ. of Ala. v. Pitts, 107 USPQ2d at 2028 (citing Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635,1639 (TTAB 1988)).

The question of disparagement must be considered in relation to the goods or services identified in the application and the manner of use in the marketplace. The mere fact that a term has several meanings, even when many may be innocuous, does not foreclose the possibility that the term is disparaging. In re Tam, 108 USPQ2d at 1310. 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. 80 USPQ2d at 1276-77, 1279. 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. Id at 1282.

1203.03(b)(ii)   Disparagement, Bringing into Contempt, and Bringing into Disrepute: Case References

Disparagement was found in the following cases: In re Tam, 108 USPQ2d 1305 (TTAB 2013) (finding THE SLANTS for live performances by a musical band to be disparaging to a substantial composite of people of Asian descent); In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010) (finding KHORAN for wines to be disparaging because the public, in general, and Muslim Americans, in particular, would regard the mark as referring to the holy text of Islam, and given that Islamic authorities view alcohol as a prohibited substance, Muslims would find KHORAN used for wine as disparaging to themselves, their religion, and their beliefs); In re Heeb Media LLC, 89 USPQ2d 1071 (TTAB 2008) (finding HEEB for clothing and entertainment services to be disparaging since HEEB means a Jewish person, dictionary definitions unanimously support the derogatory nature of HEEB, evidence of record supports that a substantial composite of the referenced group, i.e., the Jewish community, will perceive HEEB as disparaging, and HEEB has no other meaning in relation to clothing or entertainment services); Boston Red Sox Baseball Club Ltd. P'ship v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (finding SEX ROD to be disparaging because it is sexually vulgar and offensive and the public will associate it with opposer’s mark RED SOX); In re Squaw Valley Dev. Co., 80 USPQ2d 1264 (TTAB 2006) (finding SQUAW and SQUAW ONE 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" in relation to these goods or services 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); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639-40 (TTAB 1988) (finding design of dog defecating, for clothing, to disparage, and bring into contempt or disrepute, opposer’s running dog symbol, the Board finding the evidence of record "sufficient to show prima facie that this design [the running dog symbol] is, in effect, an alter ego of opposer which points uniquely and unmistakably to opposer’s persona."); In re Anti-Communist World Freedom Cong., Inc., 161 USPQ 304 (TTAB 1969) (holding design of an "X" superimposed over a hammer and sickle to disparage, and hold in contempt and disrepute, a national symbol of the U.S.S.R.).

Disparagement was not found in the following cases: Bd. of Trs. of Univ. of Ala. v. Pitts, 107 USPQ2d 2001, 2030 (TTAB 2013) (finding HOUNDSTOOTH MAFIA and design for apparel not to be disparaging in view of the incongruous nature of the mark); Boswell v. Mavety Media Grp. Ltd., 52 USPQ2d 1600 (TTAB 1999) (finding BLACK TAIL used on adult entertainment magazines, not to be disparaging of women in general, or African-American women in particular, nor to bring those groups into contempt or disrepute); Order Sons of Italy in Am. v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (finding THE MEMPHIS MAFIA for entertainment services not to be matter that disparages Italian-Americans or bring them into contempt or disrepute); In re In Over Our Heads Inc., 16 USPQ2d 1653, 1654 (TTAB 1990) (finding MOONIES and design incorporating a "buttocks caricature," for dolls whose pants can be dropped, not to be disparaging matter that is unregistrable under §2(a), the Board finding that the mark "would, when used on a doll, most likely be perceived as indicating that the doll ‘moons,’ and would not be perceived as referencing members of The Unification Church.").