Legal Standard

Today, the TTAB applies a two-part test to determine whether a mark is disparaging: (1) what is the likely meaning of the mark, and (2) if that meaning refers to an identifiable group, is the meaning disparaging to a ““substantial composite” of that group?

How Is “Likely Meaning” Determined?

The United States Patent and Trademark Office (USPTO) may rely on dictionaries, encyclopedias, and other reference materials to determine the likely meaning of a mark. For instance, the USPTO relied on dictionary and encyclopedia explanations of the significance of Buddhist iconography when an applicant sought registration of BUDDA BEACHWEAR for beach clothes. The USPTO also relied on dictionary definitions to deny registration to the mark MOONIES for novelty dolls that dropped their pants, as it found the mark disparaging to members of the Unification Church founded by Sun Myung Moon. The TTAB reversed, finding that consumers are more likely to perceive the mark as an allusion to “mooning” than a disparaging reference to a religious sect.

Some marks that include offensive words may be per se disparaging. These words are often listed in dictionaries and other references as vulgar or derogatory. For instance, the marks SQUAW and SQUAW ONE were found to be disparaging based in part on dictionary evidence and on evidence that Native Americans found the term SQUAW to be “damaging and offensive, the worst of the worst, an insult and obscene.” Similarly, the mark HEEB was found to be a derogatory reference to those of the Jewish faith where dictionary definitions unanimously underscored the derogatory nature of the term. It has been held that, at least as to offensive matter, dictionary evidence alone can be sufficient to satisfy the USPTO's burden where the mark has only one pertinent meaning.

Marks that are not themselves offensive can be disparaging when used on particular goods. For instance, the mark KHORAN was found to be disparaging because the use of the mark on wine was found likely to offend Muslims. In Squaw Valley, the terms SQUAW and SQUAW ONE were found to be disparaging when used in connection with clothing and retail store services, but not disparaging when used in connection with ski-related equipment because the likely meaning of SQUAW in relation to the latter goods was deemed to be the applicant's Squaw Valley ski resort.

Determining What Is Disparaging to a “Substantial Composite” of the Referenced Group

Whether a proposed mark is disparaging must be determined from the standpoint of a substantial composite of the referenced group in the context of contemporary attitudes. Case law does not provide a fixed number or percentage for “substantial composite.” However, it is well established that a ““majority” is not necessarily required.

The fact that the applicant has good intentions with respect to its use of the term does not preclude a finding that the term is disparaging. Similarly, the opinion of the examining attorney or the TTAB does not substitute for evidence of the views of the referenced person or group. Rather, the TTAB considers evidence such as surveys, affidavits, and documentary sources. Where the examining attorney cannot support his or her decision to refuse registration with sufficient evidence, the TTAB will reverse. For instance, where an examining attorney refused to register the mark CHINA FREE on the ground it disparages the People's Republic of China, the TTAB reversed because there was insufficient proof in the record that it was disparaging.

The TTAB also may consider the applicant's membership in the allegedly offended group, especially when considering self-disparaging marks. Members of disparaged groups who wish to register initially derogatory words or symbols as marks must still show that the meaning is not disparaging to a substantial composite of the group. For example, in 2003, the San Francisco Women's Motorcycle Contingent sought to register the name DYKES ON BIKES. The USPTO initially rejected the application on the ground that the term was disparaging to lesbian, gay, bisexual, and transgender (LGBT) people. The group then submitted extensive documentation from activists, community members, and scholars from across the country, demonstrating that the LGBT community considers “dyke” to be a positive, empowering, and affirming term. The USPTO approved the mark for publication in 2006. The USPTO also has approved self-disparaging marks such as QUEER EYE FOR THE STRAIGHT GUY and QUEER AS FOLK.

Other self-disparaging marks have not been as successful. African American comedian Damon Wayans unsuccessfully attempted to register NIGGA for entertainment services. Similarly, the USPTO refused to register SLANTS as a mark for Asian American rock band The Slants.

Determining Disparagement

1. What is the likely meaning of the mark in question? Does it refer to an identifiable group of people? Consider:

• Dictionary definitions

• The relationship of the term to other elements in the mark

• The nature of the goods or services related to the mark

• The manner in which the mark is used in the marketplace in connection with the goods or services

2.If that meaning is found to refer to an identifiable group, is the meaning disparaging to a substantial composite of the referenced group?