Judge Suggests Market Forces Can Stop Disparaging Marks

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  • Development: Federal appeals court judge asks whether market forces can stop use of disparaging trademarks.
  • Takeaway: Brand owners often revise trademarks over time to account for changing standards.


By Peter Leung

May 23 — Shifting tastes may force disparaging trademarks out of the market as brand owners adapt to changing sensitivities, the Federal Circuit judge who wrote the landmark In re Tam decision said.

Judge Kimberly A. Moore of the U.S. Court of Appeals for the Federal Circuit suggested that companies wishing to sell broadly must be aware of shifting market sensibilities. That means brand owners may often have to revise their marks to make them more appropriate for changing standards. Moore's remarks came May 22 during a panel discussion on trademarks and free speech at the International Trademark Association's annual meeting in Orlando, Fla.

Moore’s statements hinted at skepticism about the necessity or effectiveness of prohibiting the registration of disparaging trademarks.

Views Foreshadowed in Court Opinion

Moore’s views are not a complete surprise. In In re Tam, the full Federal Circuit ruled last December that the trademark law’s prohibition against disparaging trademarks is an unconstitutional violation of free speech protections (91 PTCJ 529, 1/1/16).

In re Tam is about an Asian-American band that tried to register its name “The Slants” as a trademark. The PTO rejected the application on the grounds that the term is a slur against Asians.

During the panel, Moore pointed to the evolution of the Betty Crocker logo as an example of how market forces can affect trademarks. The image has gone through several changes and no longer looks like a stereotypical housewife but more like a professional woman, she said.

Moore suggested the evolution stemmed from the company’s need to appeal to the market, a force that may be even more effective than any legal prohibition against disparaging marks.

Betty Crocker, Aunt Jemima Are Illustrative

“She looks like a lawyer. Any one of you in this room could be on the Betty Crocker trademark,” Moore said.

Moderator Rachel Rudensky of Akerman LLP noted that the logo for Aunt Jemima syrup has also gone through several iterations, with earlier ones now derided as offensive caricatures of African-Americans.

Elisabeth Ohm, deputy director the Norwegian Board of Appeal for Industrial Property Rights, said this mechanism is at play in her country as well.

In one case, a company selling spices under the very well-known “Black Boy” brand simply let its trademark registration expire. It appeared that the owner no longer wanted to be associated with the trademark and the market no longer sees the mark as a positive, she said.

Registration v. Cancellation

The different contexts in which the issue of disparaging marks comes up raises additional questions.

In re Tam involves the registration of a mark, but the issue comes up in cancellation proceedings initiated against long-standing trademark registrations that are now deemed disparaging.

From a legal perspective, evaluating these cases can be particularly challenging, because the question is whether a trademark was disparaging at the time of the registration.

Moore warned that it is very difficult to step back in time. She recalled thinking “The Bad News Bears” was a very funny movie as a child. Watching it again as an adult, she was horrified at the offensiveness of the jokes and turned it off after five minutes.

“So I don’t know how you go backwards and try to do that,” she said. “I mean, you have to go backwards to the time a particular mark was issued and say ‘how would people have reacted to this mark at that particular moment in time?' Maybe that’s why cancellation is a bigger problem.”

Moore was speaking generally, but practitioners are likely to apply the logic to the controversy surrounding attempts to cancel the Washington Redskins' trademark registrations.

That dispute, currently before the U.S. Court of Appeals for the Fourth Circuit, involves Native American activists looking to cancel the football team’s registrations (91 PTCJ 19, 11/6/15).

The trademarks were registered in 1967, meaning that the court will evaluate them under the standards of that time.

For Moore, the cancellation issue raises concerns about one of trademark law's core goals—protecting investments that brand owners have made in the goodwill of their brands.

In that sense, the threat of cancellation of a long-standing registration implicates a much greater scope of property rights than a refusal to register a new mark.

To contact the reporter on this story: Peter Leung in Washington at pleung@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

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