TMEP 1203.03(b)(ii): Disparagement, Bringing into Contempt, and Bringing into Disrepute: Case References

This is the October 2015 Edition of the TMEP

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1203.03(b)(ii)    Disparagement, Bringing into Contempt, and Bringing into Disrepute: Case References

Disparagement was found in the following cases: In re Tam, 108 USPQ2d 1305 (TTAB 2013) (finding THE SLANTS for live performances by a musical band to be disparaging to a substantial composite of people of Asian descent); In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010) (finding KHORAN for wines to be disparaging because the public, in general, and Muslim Americans, in particular, would regard the mark as referring to the holy text of Islam, and given that Islamic authorities view alcohol as a prohibited substance, Muslims would find KHORAN used for wine as disparaging to themselves, their religion, and their beliefs); In re Heeb Media LLC, 89 USPQ2d 1071 (TTAB 2008) (finding HEEB for clothing and entertainment services to be disparaging since HEEB means a Jewish person, dictionary definitions unanimously support the derogatory nature of HEEB, evidence of record supports that a substantial composite of the referenced group, i.e., the Jewish community, will perceive HEEB as disparaging, and HEEB has no other meaning in relation to clothing or entertainment services); Boston Red Sox Baseball Club Ltd. P'ship v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (finding SEX ROD to be disparaging because it is sexually vulgar and offensive and the public will associate it with opposer’s mark RED SOX); In re Squaw Valley Dev. Co., 80 USPQ2d 1264 (TTAB 2006) (finding SQUAW and SQUAW ONE to be disparaging when used in connection with clothing in Class 25 and retail store services in the field of sporting goods and equipment and clothing in Class 35, because the likely meaning of “Squaw” in relation to these goods or services is an American Indian woman or wife, and the examining attorney’s evidence established prima facie that a substantial composite of Native Americans would consider the term to be offensive; however, these terms were found not to be disparaging when used in connection with ski-related equipment in Class 28, because the likely meaning of “Squaw” in relation to these goods was deemed to be applicant's Squaw Valley ski resort); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639-40 (TTAB 1988) (finding design of dog defecating, for clothing, to disparage, and bring into contempt or disrepute, opposer’s running dog symbol, the Board finding the evidence of record “sufficient to show prima facie that this design [the running dog symbol] is, in effect, an alter ego of opposer which points uniquely and unmistakably to opposer’s persona.”); In re Anti-Communist World Freedom Cong., Inc., 161 USPQ 304 (TTAB 1969) (holding design of an “X” superimposed over a hammer and sickle to disparage, and hold in contempt and disrepute, a national symbol of the U.S.S.R.).

Disparagement was not found in the following cases: Bd. of Trs. of Univ. of Ala. v. Pitts, 107 USPQ2d 2001, 2030 (TTAB 2013) (finding HOUNDSTOOTH MAFIA and design for apparel not to be disparaging in view of the incongruous nature of the mark); Boswell v. Mavety Media Grp. Ltd., 52 USPQ2d 1600 (TTAB 1999) (finding BLACK TAIL used on adult entertainment magazines, not to be disparaging of women in general, or African-American women in particular, nor to bring those groups into contempt or disrepute); Order Sons of Italy in Am. v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (finding THE MEMPHIS MAFIA for entertainment services not to be matter that disparages Italian-Americans or bring them into contempt or disrepute); In re In Over Our Heads Inc., 16 USPQ2d 1653, 1654 (TTAB 1990) (finding MOONIES and design incorporating a “buttocks caricature,” for dolls whose pants can be dropped, not to be disparaging matter that is unregistrable under §2(a), the Board finding that the mark “would, when used on a doll, most likely be perceived as indicating that the doll ‘moons,’ and would not be perceived as referencing members of The Unification Church.”).