Disparaging Trademarks: Who Matters

35 Pages Posted: 8 Oct 2015

See all articles by Jasmine Abdel-khalik

Jasmine Abdel-khalik

University of Missouri at Kansas City - School of Law

Date Written: October 6, 2015

Abstract

For more than a century, non-majority groups have protested the use of trademarks comprised of or containing terms referencing the group — albeit for various reasons. For those trademarks that are offensive to targeted groups, some may argue that the market will solve. In other words, some may assume that purchasers in the marketplace will respect the objection, there will be insufficient purchases of the product under the mark, and the mark will disappear. However, objections raised by smaller populations in the United States often fall on deaf ears, and the marks continue to be used in the marketplace. The Washington NFL football team trademarks are an example.

Under the 1946 Lanham Act, Congress added a prohibition against registering disparaging trademarks, which could offer protection to non-majority groups targeted by the use of trademarks offensive to members of the group. The prohibition remained relatively unclear, however, and relatively rarely applied in that context until a group of Native Americans petitioned to cancel the Washington NFL team’s trademarks as either scandalous (meaning offensive to the general population) or disparaging (meaning offensive to the referenced group). In clarifying the appropriate test for disparaging, however, the decision makers have overly analogizing the two prohibitions, rendering the disparaging registration prohibition less effective in protecting non-majority groups from offensive trademarks.

This Article seeks to clarify the history, purpose, and utilization of the disparaging registration prohibition. In so doing, the Article also seeks to detangle the scandalous and disparaging registration prohibitions and refocus the disparaging registration prohibition on a broader and necessary purpose, which is to protect non-majority voices from the numerous harms caused by stereotyping and by rendering painful terms commonplace but no less painful.

Keywords: Trademark; Intellectual Property; Disparaging trademarks; Scandalous trademarks; Native Americans; Race; Religion

Suggested Citation

Abdel-khalik, Jasmine, Disparaging Trademarks: Who Matters (October 6, 2015). Michigan Journal of Race & Law, Vol. 20, No. 2, 2015, Available at SSRN: https://ssrn.com/abstract=2670082

Jasmine Abdel-khalik (Contact Author)

University of Missouri at Kansas City - School of Law ( email )

5100 Rockhill Road
Kansas City, MO 64110-2499
United States

Here is the Coronavirus
related research on SSRN

Paper statistics

Downloads
127
Abstract Views
907
rank
255,140
PlumX Metrics