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What Happens When a Trademark Goes too Far

Trademark law is usually concerned with protecting consumers from fraud. The idea behind it is that each company should get its own logo and name so that consumers know who they are buying from. Yet, sometimes trademark law goes beyond this, and attempts to address other concerns.

One area of trademark law where this happens is the doctrine of disparaging trademarks. This doctrine prevents the registration of trademarks that some groups would find disparaging or offensive. The federal act governing trademarks also allows people to contest the registration of marks that they believe are disparaging. Such a contest was at the heart of the recent controversy over the Washington football team’s use of the registered trademark “Redskins,” which still continues in the courts.

Determining Whether a Trademark Is Disparaging

Trademark law has a two part test for determining whether a trademark is disparaging. However, the test is somewhat circular and open to interpretation. The first part of the test is whether the mark can be understood as referencing a given group of people in the context in which it is used. For instance, an Asian-American rock group recently sought to register their name “The Slants” as a trademark. The Trademark Office and a federal court denied that registration as disparaging because it could be interpreted, in the context of the Asian-American rock group, as being a derogatory term for Asians or Asian-Americans. Conversely, a company would likely be able to register the word “slant” in some non-racial context.

If the name can be understood as referring to a specific group, then it moves onto the second part of the test, whether a “substantial composite” of the referenced group would find the term disparaging. This is where the circularity and open-ended nature of the test becomes apparent. The size of a substantial composite is difficult to determine, and determining how disparaging something has to be is difficult. This can be seen in the way that cases that seem similarly situated end up going both ways. The Slants may have lost their registration, despite arguing that many Asian-Americans now consider the term one of pride, but a lesbian biker gang successfully registered “Dykes on Bikes,” while making that same argument.

The Limits of the Disparagement Doctrine

Importantly, the effect of the disparagement doctrine is limited. The doctrine can prevent the federal registration of a disparaging trademark or it can get the registration canceled, but it does not completely eliminate the rights of the holder. This is because even owners of unregistered trademarks still have the right to use those marks in business. They can even still sue for infringement based on those unregistered marks. However, the loss of a federal registration can limit the types of damages that they can seek, limit the geographical areas in which they can enforce their rights, and possibly affect which other companies against which they can enforce their mark.

Trademark holders should keep the doctrine of disparagement in mind when developing their mark. If you are having a potentially disparaging mark enforced against you or have had your mark accused of being disparaging, contact a Florida trademark attorney at Pike & Lustig, LLP today.

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