INTA 2016: Donkeys, Republicans and disparaging marks
Trademark applications for ‘Capitalism sucks donkey dick’ and ‘Republicans shouldn’t be allowed to breed’ were among the “disparaging” terms that have been rejected by US examiners, a lively panel discussion on free speech and trademark law heard.
Speaking during the International Trademark Association’s (INTA) annual meeting on Sunday, May 22, speakers from the US Court of Appeals for the Federal Circuit, the Norwegian Board of Appeal for Industrial Property Rights, and the IP division of the Tokyo District Court discussed the system for rejecting disparaging marks and examples of marks that have passed or failed.
During the discussion, Federal Circuit Judge Kimberly Moore was asked what factors courts need to consider when assessing whether a mark is disparaging.
Moore referenced US rock band The Slants. Last year, the Federal Circuit upheld a 2014 decision by the Trademark Trial and Appeal Board (TTAB) to reject a trademark application for ‘The Slants’ on the grounds that the term, a slang word for people of Asian heritage, was offensive to Asians.
The Slants had appealed against the initial rejection on the grounds that refusal was a violation of its free speech rights. The Federal Circuit, in an en banc decision handed down last December, overturned the court’s initial ruling and the case is now pending before the US Supreme Court.
Moore said that when assessing the case judges were required to decide “whether there was enough evidence to support the TTAB decision” and if the term was offensive from the perspective of a substantial portion of those affected.
“In the case of The Slants, all of the evidence pointed to the fact that it was,” Moore said, adding that internet evidence, survey evidence and dictionary definitions could all be taken into account.
Judge Kara Stoll, also on the Federal Circuit, added that there is not always consistency about what can be registered. “What is scandalous and disparaging can change,” she added.
Moore then pointed to three other trademarks that were rejected: ‘Capitalism sucks donkey dick’, ‘Republicans should not be allowed to breed’, and ‘Democrats should not be allowed to breed’.
“These were deemed to be offensive to the respective groups,” she added.
Elisabeth Ohm, deputy director of Norway’s appeal board, said the country is “more liberal” with what it allows.
She referenced a trademark application for ‘Turbonegro’ by a death metal band of the same name which was “accepted without problems”.
Yasuhito Okinaka, of the Tokyo District Court, spoke about a famous example from Japan.
Despite the Japan Supreme Court’s 1916 ruling against registering ‘Seirogan’ as a trademark, some companies have continued to use the term.
The term translates as ‘Conquer Russia’ and stems from the Russo-Japanese war between 1904 and 1905.
Earlier this month WIPR hosted a webinar on disparaging trademarks.
The INTA annual meeting runs until Wednesday, May 25.
