Of Slurs and Square Roosters: The Strange World of Section 2(a) Refusals

Introduction

What do an Asian-American rock band and a professional football team from Washington D.C. have in common? Both lost, or were refused, trademark registrations under Section 2(a) of the Lanham Act, which requires a trademark to be refused if it “[c]onsists of or comprises immoral,..., or scandalous matter; or matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols.” 

Since 2014, several trademarks owned by the Washington Redskins were cancelled for being disparaging to Native Americans, and when a mark for THE SLANTS was filed by an all Asian-American rock band, it was refused for being “[a] racial slur referencing the eyes of those of Asian descent.” 

This refusal has since been appealed all the way to the Supreme Court of the United States, where the fate of the disparagement portion of Section 2(a) will soon be decided. Meanwhile, Section 2(a) remains an active part of trademark law, and is important to understand for anyone thinking about getting a registration for something risque.

Understanding Section 2(a) of the Lanham Act

Before we go any farther, it is important to note that Section 2(a) contains two separate grounds for refusal of naughty marks (it actually contains additional grounds for refusing marks that are “deceptive” or create a “false association,” but that is outside the scope of this entry.) The first such ground is refusal of “disparaging” marks, which was the ground applied to both the Redskins and The Slants.

Disparaging Marks under Section 2(a)

In testing to see if a mark is disparaging, the Examining Attorney must ask two questions: What is the likely meaning of the mark, taking into account both the literal definition of the term(s) of the mark, but also possible slang meanings, as well as the meaning within the context of the goods and services covered by the mark. I

f that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, might that meaning be disparaging to a substantial (but not necessarily majority) composite of the reference group? 

Scandalous Marks under Section 2(a)

The second ground for refusal covers “scandalous marks” defined as marks that are “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable;… giving offense to the conscience or moral feelings;…[or] calling [for] condemnation.” In Re Fox, 702 F.3d 633 (Fed. Cir. 2012).

Examples of Trademark Cases

This covers slurs, but also words that are considered offensive without being references to any group or belief system. For example, a mark for COCAINE for “carbonated and non-carbonated soft drinks and energy drinks” was refused because, (in part) the USPTO argued that a substantial number of people would consider it scandalous that a product bearing the name of an illegal drug would be sold to children. 

On the other hand, the USPTO recently allowed a mark for CAJUN COCAINE for seasonings to proceed to registration without issuing a Section 2(a) refusal, and merely requiring the applicant to clarify that the seasonings did not in fact contain the drug. So, the USPTO is inconsistent at best in how zealously it prevents the registration of references to illicit drugs.

Conclusion

The Lanham Act's Section 2(a) plays a crucial role in trademark law, particularly in cases involving potentially disparaging or scandalous marks. It has been applied in high-profile cases such as those involving the Washington Redskins and the rock band, The Slants. However, the application of this section can be inconsistent, as seen in the contrasting outcomes of the COCAINE and CAJUN COCAINE trademark cases.