NON-REGISTERABLE SUBJECT MATTER: DISPARAGING MARKS

January 15, 2015

Section 2(a) of the Trademark Act provides that the USPTO may refuse an application when the trademark “[c]onsists of or comprises ... matter which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a).

The court’s determination of whether a mark is disparaging in violation of section 2(a) of the Trademark Action involves a two prong analysis.  The first prong of the disparagement test determines “the likely meaning of the matter in question.”  The second prong of the disparagement inquiry asks whether the likely meaning identified in prong one “is found to refer to identifiable persons, institutions, beliefs or national symbols,” and if so, whether that meaning “may be disparaging to a substantial composite of the referenced group.” In re Lebanese Arak Corp., 94 U.S.P.Q.2d at 1217.

In the recent case of In re Geller, 751 F. 3d 1355 (Fed. Cir. 2014) The Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“TTAB”) refusal to register the mark STOP THE ISLAMISATION OF AMERICA in connection with “[p]roviding information regarding understanding and preventing terrorism.”  The Federal Circuit affirmed the TTAB’s finding that the mark contained matter that was likely to be disparaging to members of the Muslim religion in violation of section 2(a) of the Trademark Act.

If you have any questions regarding the potential registerability of your trademark or have any questions regarding patents, trademarks, and copyright law, please feel free to contact our office at 305.921.9326 to setup a consultation.