As stated in section 1203.03(c) Disparagement, Bringing into Contempt and Bringing into Disrepute of the Trademark Manual of Examination Procedure:

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 Squaw Valley Development Co., 80 USPQ2d 1264 (TTAB 2006); Order Sons of Italy in America v. The Memphis Mafia, Inc., 52 USPQ2d 1364 (TTAB 1999); Harjo v. Pro-Football Inc., 50 USPQ2d 1705 (TTAB 1999), rev'd on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005).

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 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. This shifts the burden to applicant to rebut the examining attorney's showing. Squaw Valley.

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  • The wording of Section 2(a) makes clear that the prohibition against marks which contain immoral or scandalous matter constitutes a distinct legal claim, as opposed to the prohibition against marks which disparage or bring into contempt or disrepute persons, institutions or beliefs, or which falsely suggest a connection.
    • Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006).
      • Section 2(a) bars the registration of a mark that "consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute...." The wording of the statute makes clear that the prohibition against marks which contain immoral or scandalous matter constitutes a distinct legal claim, as opposed to the prohibition against marks which disparage or bring into contempt or disrepute persons, institutions or beliefs, or which falsely suggest a connection.
  • A claim under Section 2(a) against the registration of scandalous or immoral matter pertains only to marks that are scandalous or immoral, not those that may be viewed as scandalous or immoral in nature.
    • Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006).
      • A claim under Section 2(a) against the registration of scandalous or immoral matter pertains only to marks that are scandalous or immoral. The authority of the Act does not extend to goods or services that may be viewed as scandalous or immoral in nature. See In re Madsen, 180 USPQ 334, 335 (TTAB 1973) (WEEK-END SEX for magazines held not scandalous, the Board observing that whether the magazine contents may be pornographic was not an issue before the Board); In re McGinley, 660 F.2d 481, 485, 211 USPQ 668, 673 (CCPA 1981) ("[T]he Lanham Act does not require, under the rubric of 'scandalous,' any inquiry into the specific goods or services not shown in the application itself.").
  • With regard to a claim of disparagement under Section 2(a), whether a mark is found to be disparaging depends on the context and the persons or groups of persons the mark is directed toward.
    • Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006).
      • With regard to a claim of disparagement under Section 2(a), whether a mark is found to be disparaging depends on the context and the persons or groups of persons the mark is directed toward. See Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600 (TTAB 1999) (BLACK TAIL used on adult entertainment magazines, found 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 America v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (THE MEMPHIS MAFIA for entertainment services found not to be matter that disparages Italian- Americans or brings them into contempt or disrepute).
  • Two-part test to determine whether marks are disparaging under Section 2(a).
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • The Board applied the two-part test set forth in Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1740 - 1741 (TTAB 1999) ("Harjo I"), rev'd on other grounds, 284 F. Supp.2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and later followed in Order Sons of Italy in America v. The Memphis Mafia, Inc., 52 USPQ2d 1364 (TTAB 1999), to determine whether the marks which are the subject of this appeal are disparaging under Section 2(a): "(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." The District Court in Pro Football, Inc. v. Harjo, 284 F. Supp.2d 96, 68 USPQ2d 1225 (D.D.C. 2003) ("Harjo II"), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005) found "no error" in this test for disparagement.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • Thus, the Board in that case identified a two-step process, which requires that we first ask what is the meaning of the matter in question, and, second, whether that meaning may be disparaging, i.e., whether the mark may dishonor by comparison with what is inferior, or slight, deprecate, degrade, or affect or injure by unjust comparison. Id. at 1738.
  • In analyzing a mark for disparagement under Section 2(a), the TTAB considers the meaning of a term as reflected by the goods on which the mark is used.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • The Board has, in analyzing refusals under Section 2(a), considered the meaning of a term as reflected by the goods on which the mark is used. In In re In Over Our Heads, Inc., 16 USQP2d 1653 (TTAB 1990), the Board reversed a refusal to register the mark MOONIES (and design) for a doll which dropped its pants when a collapsible bulb was squeezed, thus exposing its buttocks. The examining attorney took the position that "the mark comprised scandalous matter which disparaged The Unification Church founded by the Reverend Sun Myung Moon." Id. at 1653. However, the Board found that the term MOONIES had more than one meaning, and that the meaning of MOONIES, when used on the subject goods – dolls - would most likely be perceived as indicating that the doll "moons," and would not be perceived as referencing members of The Unification Church.
  • The relevant goods or services must be considered under a Section 2(a) refusal.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • The Board, too, has stated that the relevant goods or services must be considered under Section 2(a). In Harjo I, the Board cited In re Riverbank Canning Co., supra, and stated, "[a]s with most trademark issues, including scandalousness, the question of disparagement must be considered in relation to the goods or services identified by the mark in the context of the marketplace." Harjo I, 50 USPQ2d at 1738.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • It has been long established that in the context of a Section 2(a) ex parte refusal regarding scandalousness, consideration must be given to the identified goods or services. See In re Riverbank Canning Co., 95 F.2d 327, 37 USPQ 268, 269 (CCPA 1938) ("Of course, the word 'Madonna' is not per se scandalous. We do not understand that appellant contends that a mark must be scandalous per se to come within the prohibition of the statute. … It is therefore obvious that, in determining whether a mark ‘consists of or comprises … scandalous matter,' consideration ordinarily must be given to the goods upon which the mark is used."); and In re McGinley, 660 F.2d 481, 211 USPQ 668, 673 (CCPA 1981) ("In determining whether appellant's mark may be refused registration as scandalous, the mark must be considered in the context of the marketplace as applied to only the goods or services described in the application for registration.").
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • The Board, too, has stated that the relevant goods or services must be considered under Section 2(a).
  • The second part of the test for disparagement requires consideration of whether the term would be considered disparaging as the term is used in connection with the identified goods or services.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • It is clear from the foregoing that the second part of the test for disparagement requires consideration of whether the term would be considered disparaging as the term is used in connection with the identified goods or services.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • The Board in Harjo made an exhaustive analysis of the cases involving both scandalous and disparaging marks, and determined that the question of disparagement must be considered in relation to the goods or services identified by the mark in the context of the marketplace. Id. at 1738.
  • Evidence: Regarding the second element of the test, survey evidence should test participants' view of the allegedly disparaging term in the context of the goods/services.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • In commenting on the evidence considered by the Board in connection with its evaluation of the second part of the Harjo I test, the Court made clear that the goods and services must be taken into account in making a determination of whether a mark is disparaging, noting, in connection with survey evidence, that "the survey is not directly dispositive of the legal question before the TTAB because it … did not test the participants' view of the term ‘redskin(s)' in the context of Pro-Football's services …." Harjo II, 68 USPQ2d at 1249.
  • The inquiry is not whether the term is a pejorative term, but whether it is disparaging when used in connection with the relevant goods/services during the relevant time frame.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • Similarly, with respect to the historical evidence before the Board, the Court said that "the ultimate legal inquiry is whether the six trademarks at issue may disparage Native Americans when used in connection with Pro-Football's services and during the relevant time frame. The ultimate legal inquiry is not whether the term ‘redskin(s)' is a pejorative term for Native Americans." Id. at 1252.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • It is clear from the foregoing that the second part of the test for disparagement requires consideration of whether the term would be considered disparaging as the term is used in connection with the identified goods or services. Hence, we reject the examining attorney's contention that the Board did not apply the proper test in our September 26, 2005 decision and/or has applied "a three prong test."
  • The same standards for determining whether matter in a mark may be disparaging are applicable to determining whether such matter brings a person, living or dead, institutions, beliefs, or national symbols into contempt or disrepute.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • With respect to the ground that applicant's mark may bring women and particularly African-American women into contempt or disrepute, the same standards for determining whether matter in a mark may be disparaging are applicable to determining whether such matter brings "person, living or dead, institutions, beliefs, or national symbols into contempt or disrepute. Harjo v. Pro-Football Inc., supra.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • Although the issue before the Federal Circuit was whether BLACK TAIL was scandalous, within the provisions of Section 2(a), as applied to adult entertainment magazines, many of the comments made by the Court in that decision are applicable to the present case. See Harjo v. Pro-Football Inc., supra at 1738, stating that the issue of disparagement is related to the issue of scandalousness.
  • Burden of proof: The examining attorney has the burden of proving that a trademark falls within a prohibition of Section 2(a).
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • Of course, the examining attorney has the burden of proving that a trademark falls within a prohibition of Section 2(a). See In re Standard Elektrik Lorenz Aktiengesellschaft, 371 F.2d 870, 152 USPQ 563, 566 (CCPA 1967). See also In re Wilcher Corp., 40 USPQ2d 1929, 1934 (TTAB 1996) (evidence of record established prima facie that the mark would be offensive under Section 2(a) to the conscience or moral feelings of a substantial composite of the general public).
  • Burden of Proof: Once the USPTO sets forth a prima facie case, the burden shifts to the applicant to come forward with evidence to rebut the prima facie case with competent evidence.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • Once the USPTO sets forth a prima facie case, the burden shifts to the applicant to come forward with evidence to rebut the prima facie case with "competent evidence." See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); In re R. M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984); In re Teledyne Indus., Inc., 696 F.2d 986, 217 USPQ 9, 11 (Fed. Cir. 1982).
  • Burden of Proof: Given its limited resources, the Examining Attorney can still satisfy its burden of proof even though other evidence, such as consumer surveys would no doubt be instructive.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • See also In re The Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1478 (Fed. Cir. 2003), where the Federal Circuit, in the context of an ex parte Section 2(a) case, stated that "although other evidence, such as consumer surveys, would no doubt be instructive," the USPTO's finding that a mark comprises or consists of scandalous matter pursuant to Section 2(a) "is not legally insufficient because of the absence of such evidence."
  • There is no requirement that a mark, to be found disparaging, must include design or logo elements which reinforce the connection with the referenced persons or symbol.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • However, we are aware of no requirement in Section 2(a) or the case law interpreting Section 2(a) that to be found disparaging a mark must include design or logo elements which reinforce the connection with the referenced persons or symbol.
  • Since there are various ways in which terms can be used to disparage individuals or groups; precedential case law is not inapposite merely because the nature of the disparagement in one case is different from another case.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • FOOTNOTE 10 "Applicant discussed Reemtsma in its reply brief at p. 15, and argued that it is inapposite because "Applicant's mark SQUAW is not the name of a religious sect or order and this case is plainly not applicable to the present facts." We are not persuaded that the case is inapposite to the present case simply because "SQUAW is not the name of a religious sect or order." There are various ways in which terms can be used so as to disparage individuals or groups. Precedential case law is not inapposite merely because the nature of the disparagement in one case is different from another case."
  • Where the notice of opposition and the arguments in opposers' brief assert that the mark disparages a particular group in general, and a sub-group in particular, in deciding whether the mark may be disparaging, the Board must look to the views of the referenced group, and not to American society as a whole.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • Because the notice of opposition and the arguments in opposers' brief assert that the mark BLACK TAIL disparages women in general, and African American women in particular, in deciding whether the mark may be disparaging, we must look to the views of the referenced group, and not to American society as a whole. Id. at 1739.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • We cannot agree with opposers that the comments made by the Federal Circuit in Mavety have no application to the issue in this case. In both cases, the question to be determined is public reaction; in the case of scandalous marks, the relevant group is a "substantial composite of the general public," while in the case of disparaging marks it is the group which is asserted to be disparaged, which may be reasonably determined by the views of a substantial composite thereof. Harjo v. Pro-Football Inc., supra at 1739.
  • In deciding whether the matter may be disparaging refer to an identifiable person(s) we must look to the views of the referenced group, as shown by the views of a substantial composite thereof.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • Further, to the extent the matter in question is found to refer to an identifiable person or persons, in deciding whether the matter may be disparaging we must look to the views of the referenced group, as shown by the views of a substantial composite thereof. Id. at 1739.
  • A mark could be found disparaging where it refers to a specific group of identifiable persons.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • Applicant contended, in its brief on appeal, that: "The mark SQUAW as used by Applicant for goods and services closely associated with its famous resort does not refer to identifiable persons. Therefore, it is not necessary to consider the second prong of the test for determining whether the matter is disparaging. Brief at p. 8." We disagree. As stated above, the examining attorney has made out a prima facie case that applicant's marks are associated with identifiable persons, i.e., Native Americans, and, in our original decision we found in favor of the Office with respect to the first prong of the Harjo I test.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • Applicant's unsupported statement that its marks do not refer to identifiable persons is not sufficient to rebut the evidence submitted by the examining attorney that the word SQUAW in applicant's marks, used in connection with the identified goods and services in International Classes 25 and 35, would have the meaning of a Native American woman or wife.
  • The use of Native American indicia in applicant's specimens would strengthen the association between the marks and the meaning of "squaw" as a Native American woman or wife, the lack of such indicia does not mean that there would be no such association.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • However, while use of Native American indicia in applicant's specimens would strengthen the association between the marks and the meaning of "squaw" as a Native American woman or wife, the lack of such indicia does not mean that there would be no such association. Even without other Native American indicia, consumers would understand applicant's marks for its identified International Class 25 and 35 goods and services to refer to a Native American woman or wife.
  • The TTAB has on previous occasions resolved doubt as to whether a term was disparaging or scandalous in favor of publication; however, the key point is that the TTAB has done so when there has been doubt.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • While it is true that the Board has on previous occasions resolved doubt as to whether a term was disparaging or scandalous in favor of publication, the key point is that the Board has done so when there has been doubt. In this case, upon reconsidering our previous decision and the evidence of record in light of the degree of evidence required for the Office to meet its burden to make a prima facie showing, we have no doubt that under Section 2(a), as interpreted by the Board and the courts, the term is disparaging with respect to the identified goods in International Class 25 and the identified services in International Class 35.
  • Registration of a trademark reflects no endorsement by the USPTO of the applicant's products or services.
    • Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006).
      • Lastly, with regard to opposer's allegations that the USPTO, in approving applicant's mark for publication, has given its stamp of governmental imprimatur, it is well settled that registration of a trademark reflects no endorsement by the USPTO of the applicant's products or services. See In re Old Glory Condom Corp., 26 USPQ 1216 (TTAB 1993).
  • The opposer must properly plead a claim for scandalous and immoral material.
    • Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006).
      • It is apparent from opposer's responsive brief that he intends to assert in his pleading both that applicant's mark is disparaging and that it is comprised of scandalous and immoral material under Section 2(a). However, based on a review of opposer's notice of opposition, the Board cannot discern any properly pleaded claim.
  • Evidence: The party bringing a proceeding on the ground of disparagement should not be required to conduct a survey.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • We do agree with opposers to the extent that a party bringing a proceeding on the ground of disparagement should not be required to conduct a survey, particularly since a party with a real commercial interest in a mark is not required to conduct a survey to prove likelihood of confusion in a proceeding before the Board. See Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993). However, this does not mean that such a plaintiff is absolved from the requirement to show that the allegedly disparaged group views the mark at issue to contain or comprise disparaging matter.
  • Evidence: Testimony can be used to establish the kind of usage of a potentially disparaging term.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • If opposers had wanted to make evidence of this kind of word usage of record, she could easily have done so through testimony. (If this type of locker room talk is as pervasive as opposers indicate, it would seem that there would be no shortage of witnesses.) However, opposers have elected to try to prove that BLACK TAIL is disparaging solely on the basis of dictionary definitions and ten adult entertainment magazines. In effect, we have in this record essentially the same evidence that was before the Board and the Court in the ex parte appeal.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • We would also add that opposers have provided no evidence, beyond the dictionary definitions themselves, that women in general, or African American women in particular, believe themselves to be disparaged by the use of BLACK TAIL. Even in her affidavit Ms. Boswell testified only that she believed herself to be damaged by the registration of applicant's mark; she provided no testimony as to what the mark indicated to her personally, or why she felt it was disparaging. Nor did opposers supply any evidence with respect to the views of other women. Compare Ritchie v. Simpson, supra, in which opposer alleged that he had obtained petitions signed by people from all over the United States who agree with him that the marks at issue are scandalous; Harjo v. Pro-Football Inc., supra, referring to a broad range of evidence, including testimony by several witnesses.
  • The affirmative defense that Section 2(a) is unconstitutional is rejected for the reasons given by the Court in Mavety, 31 USPQ2d at 1928.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • Finally, for the sake of completeness, applicant's affirmative defense that Section 2(a) is unconstitutional is rejected for the reasons given by the Court in Mavety, 31 USPQ2d at 1928. See also, In re International Flavors & Fragrances, Inc., __F.3d__, __USPQ2d__ (Fed. Cir. July 20, 1999).
  • Summary of Cases involving disparagement.
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • A case involving both the "scandalous" and "disparaging" subsections of Section 2(a) discusses whether MOONIES and design was disparaging of The Unification Church (an institution or juristic person) or members thereof (natural persons), some of whom may have viewed the term MOONIES as derogatory. See In re In Over Our Heads Inc., 16 USPQ2d 1653 (TTAB 1990).
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • In a cancellation case brought by a fraternal association and which involved a pleading alleging disparagement of the association as an entity, the Board considered whether the involved mark was disparaging "either to members of the Order or Italian-Americans in general." Order Sons of Italy in America v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999).
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • Finally, in another case involving various claims under Section 2(a), and in the context of discussing the disparagement claim, the Board explained: "Who comprises the targeted, or relevant, group must be determined on the basis of the facts in each case. For example, if the alleged disparagement is of a religious group or its iconography, the relevant group may be the members and clergy of that religion; if the alleged disparagement is of an academic institution, the relevant group may be the students, faculty, administration, and alumni; if the alleged disparagement is of a national symbol, the relevant group may be citizens of that country." Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1739 (TTAB 1999), reversed on other grounds by Pro-Football Inc. v. Harjo, 284 F.Supp.2d 96, 68 USPQ2d 1225 (DC DC 2003).
    • In re Julie White, Serial No. 78175476, (TTAB 2004).
      • We find that each federally recognized Apache tribe is necessarily either a juristic person or an institution. Therefore, if APACHE would be viewed as suggesting a connection with these persons or institutions, whether the nine tribes are considered individually or collectively, when the designation is used on or in connection with the identified goods, and if such suggestion would be false, then refusal of registration under Section 2(a) is warranted.
  • Case Finding: The TTAB concluded the word "Redskin(s)" was a derogatory term when used as a reference for Native Americans.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • Additionally, the District Court emphasized that, under the second part of the Harjo I test, the question of disparagement had to be considered in the context of the involved goods or services. The District Court went on to state: "To reach its conclusion that the trademarks may disparage Native Americans, the TTAB essentially determined that because the word "redskin(s)" may be viewed by Native Americans as derogatory when used as a reference for Native Americans, the trademarks are disparaging because they use that word. The result of this analysis is that there is very little discussion of the use of the mark in connection with Pro-Football's product or services. … [I]n this case the TTAB did very little analysis of how the use of the trademarks in connection with Pro-Football's services disparages Native Americans. The Board was content with stating that because it found the name to be pejorative, the marks must be disparaging. Id. at 1254. (Emphasis in original)."
  • Case Finding: The use of "Squaw" on skiing equipment is not disparaging to Native Americans because consumers will connect the meaning of the mark to the Squaw Valley ski resort instead of Native Americans.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • Accordingly, we reiterate our finding that, when SQUAW is considered in connection with applicant's "skis, ski poles, ski bindings, ski tuning kits comprised of waxes and adjustment tools, ski equipment, namely, power cords," i.e., items which are directly connected with skiing, it is the Squaw Valley ski resort meaning of SQUAW, rather than the meaning of a Native American woman or wife, that will come to the minds of consumers. The same meaning will attach to SQUAW ONE, used for such goods, not because applicant has established that SQUAW ONE is well known (in view of the limited evidence regarding SQUAW ONE), but because of the prominence of the term SQUAW in the mark.
  • Case Finding: A mark for use with cigarettes was found disparaging to a Moselm sect which forbids smoking.
    • In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006).
      • In fact, in In re Reemtsma Cigarettenfabriken G.m.b.H., 122 USPQ 339 (TTAB 1959), involving the mark SENUSSI for "cigarettes," the Board's decision does not refer to a design component in the applied-for mark, yet the Board found the mark to be disparaging to a Moslem sect whose tenets forbid the use of cigarettes.
  • The requirement that pertains to personal names under the Lanham Act is found in Section 2(c) which requires written consent from living individuals.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • The requirement that pertains to personal names under the Lanham Act is found in Section 2(c) which requires written consent from living individuals.3 FOOTNOTE 3 "Personal names are also addressed in Section 2(a) of the Lanham Act which provides: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it - (a) Consists of or comprises ... matter which may disparage or falsely suggest a connection with persons, living or dead...or bring them into contempt, or disrepute. However, that issue is not before us."
  • In the context of Section 2(a), a disparaging mark will cast doubt upon the quality of a plaintiff's corporate goodwill.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • In the context of Section 2(a), a disparaging mark will cast doubt upon the quality of a plaintiff's corporate goodwill. See Harjo, supra at 1740.
  • Section 2(a) embodies concepts of the right to privacy and publicity, that is, the right to protect and to control the use of one's identity.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • As noted in University of Notre Dame du Lac v. J.C. Food Imports, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), Section 2(a) embodies concepts of the right to privacy and publicity, that is, the right to protect and to control the use of one's identity.
  • Case Finding: SEX ROD is offensive, and because the public will associate the offensive message with opposer, the mark may disparage opposer.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • While the line between what is or is not offensive may not always be clear, in this case it is. The difference between opposer's expressions of subtle or good-natured ribbing and applicant's crude, overtly sexual mark SEX ROD is obvious. Because applicant's mark is offensive, and because the public will associate the offensive message with opposer, the mark, in the language of the Statute, "may disparage" opposer.
  • In effect, this provision of Section 2(a) protects against appropriation of one's identity by another and subjecting it to contempt or ridicule.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • In effect, this provision of Section 2(a) protects against appropriation of one's identity by another and subjecting it to contempt or ridicule. See Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988) ("Disparagement is essentially a violation of one's right of privacy -- the right to be 'let alone' from contempt or ridicule.").
  • There are different tests for disparagement depending upon whether the party alleging disparagement is an individual, commercial corporate entity, or a non-commercial group.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • FOOTNOTE 7 "As the Board noted in Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1740 (TTAB 1999), there are different tests for disparagement depending upon whether the party alleging disparagement is an individual or commercial corporate entity, as in Greyhound, or a non-commercial group, such as a religious or racial group, as in Harjo. Id., rev'd on other grounds, 284 F.Supp.2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), dismissed on remand, (D.D.C. June 25, 2008). Because opposer is a commercial corporate entity, the test enunciated in Greyhound is applicable here."
  • Applicant admission that the design of the mark is intended to refer to opposer is strong evidence that he will accomplish his purpose, and that the mark will be perceived by the public as referring to opposer.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Furthermore, applicant admits that the design of his mark is intended to refer to opposer (Ans., ¶ 8), and to evoke the Club (Dec., ¶ 2). Applicant's intent is strong evidence that he will accomplish his purpose, and that the mark will be perceived by the public as referring to opposer. See Dunkin' Donuts of America, Inc. v. Metallurgical Exoproducts Corp., 840 F.2d 917, 6 USPQ2d 1026 (Fed. Cir. 1988) (evidence of intent is pertinent to Section 2(a) claim of disparagement). See also Notre Dame, supra at 509, regarding intent in the context of a Section 2(a) claim of false connection ("Evidence of such intent would be highly persuasive that the public will make the intended false association. The defense that the result intended was not achieved would be hollow indeed.").
  • Section 2(a) prohibits registration of a mark that consists of or comprises...matter which may disparage...persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Section 2(a) of the Trademark Act also prohibits registration of a mark that "consists of or comprises...matter which may disparage...persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."
  • Disparagement is 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.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • We turn then to the question of whether applicant's mark disparages opposer's identity. As the Board stated in Greyhound, disparagement is "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, chattles, or intangible things.'" Greyhound citing Restatement (Second) of Torts §629 (1977).
  • The Board in Greyhound set forth the two elements of a claim of disparagement: 1) that the communication reasonably would be understood as referring to the plaintiff; and 2) that the communication is disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • The Board in Greyhound set forth the two elements of a claim of disparagement: 1) that the communication reasonably would be understood as referring to the plaintiff; and 2) that the communication is disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities.7
Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) In re Squaw Valley Development Company, Serial Nos. 76511144 and 76511145, (TTAB 2006) Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006) In re Julie White, Serial No. 78175476, (TTAB 2004) Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999) Grand Total
The District Court in Pro Football Inc. v. Harjo, 284 F. Supp.2d 96, 68 USPQ2d 1225 (D.D.C. 2003) ("Harjo II"), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005) 1
In re The Boulevard Entertainment Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) 1
Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600 (TTAB 1999) 1
Harjo v. Pro Football Inc., 50 USPQ2d 1705 (TTAB 1999) 3
Order Sons of Italy in America v. The Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) 3
Harjo v. Pro Football Inc., 50 USPQ2d 1705, 1739 (TTAB 1999), reversed on other grounds by Pro-Football Inc. v. Harjo, 284 F.Supp.2d 96, 68 USPQ2d 1225 (DC DC 2003) 2
In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) 1
In re Old Glory Condom Corp., 26 USPQ 1216 (TTAB 1993) 1
In re In Over Our Heads Inc., 16 USPQ2d 1653 (TTAB 1990) 2
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB 1988) 1
Dunkin' Donuts of America, Inc. v. Metallurgical Exoproducts Corp., 840 F.2d 917, 6 USPQ2d 1026 (Fed. Cir. 1988) 1
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) 1
In re R. M. Smith Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) 1
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 1
In re Teledyne Indus. Inc., 696 F.2d 986, 217 USPQ 9, (Fed. Cir. 1982) 1
In re McGinley, 660 F.2d 481, 211 USPQ 668 (CCPA 1981) 2
In re Madsen, 180 USPQ 334 (TTAB 1973) 1
In re Standard Elektrik Lorenz Aktiengesellschaft, 371 F.2d 870, 152 USPQ 563 (CCPA 1967) 1
In re Reemtsma Cigarettenfabriken G.m.b.H., 122 USPQ 339 (TTAB 1959) 1
In re Riverbank Canning Co., 37 USPQ 268 (CCPA 1938) 1
Grand Total 4 14 5 3 1 27

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.