08 April, 2014

What is Inappropriate in Trademarks?

As times have changes and society has moved on from its perceptions about race and related terminology, what is acceptable and what is not has shifted quite drastically. This type of shift more often than not also impacts the judicial sphere, and a great area where this can be seen is trademarks. Under several common law jurisdictions, such as the US, Canada and the UK, certain marks are not registrable because they are disparaging against certain people or is contrary to public morality. What entails such a mark will change as society's perceptions over what is offensive or disparaging change; however this issue has been brought back to light after a recent US Patent and Trademark Office decision over a mark.

The mark in question was 'Washington Redskin Potatoes', relating to the marketing of entertainment services and certain merchandise, with no actual connection to the sale or marketing of potatoes. In addition to the confusing connection with foodstuffs the services being sold by the applicant have nothing to do with the famous American football team either, increasing the uncertainty behind the name and its use.

Irrespective of these considerations what remains interesting is the rejection of the mark by the USPTO as they deemed "...the connotation [of the word Redskin] is disparaging", backed by the National Congress of American Indians' view on the word. This raises a point about the legitimacy of the Washington Redskins' trademark as well, due to it using the same mark which has been clearly deemed as disparaging. This, however, is still not as straightforward as one might think based on the USPTO's assessment of the Redskins Potatoes mark. In the case of Pro-Football v Harjo the very mark the football team owns came into contention, with the Court of Appeals upholding the team's mark due to the appellant not being able to challenge it as they were late to do so, and thus failed under equity. Although the initial Trademark Trial and Appeals Board decision did state that the mark "...may be disparaging of Native Americans to a substantial composite of this group of people... [and] may bring Native Americans into contempt or disrepute"; clearly aligning itself with the rationale of the USPTO's decision some 15 years later, the issue of whether the mark would be disparaging to American First Nation people never was fully addressed on appeal due to the inexcusable lateness of the complaint by the appellant.

How would such marks be treated in other common law jurisdictions then? In Canada the Canadian Trade-Marks Act stipulates that a mark cannot be awarded if it is "...likely to be mistaken for... any scandalous, obscene or immoral word or device". This could be a number of things, which could include names which could be seen as derogatory towards a subset of people, such as First Nations people. The Washington Redskins however do own the trademark in Canada as well as the US, clearly demonstrating that the mark could be seen as acceptable, although having been registered over 30 years ago. The mark has never been challenged in Canada, but should the Redskins' mark be challenged further or even potentially lost, it would undoubtedly spur Canadians to do the same.

In the UK under the current Trade Marks Act 1994 no marks can be registered which are "...contrary to public policy or to accepted principles of morality". In the case of Re Hallelujah Trade Mark this was seen to being an assessment of morality under current standards as to not cause offense to anyone or any segment of the populous. Much like in the US and Canada the mark is still registered in the UK, clearly indicating an acceptance of the mark which was registered nearly 30 years ago. The mark has not been challenged in the UK.

As can be clearly seen what is immoral or inappropriate can vary wildly over decades or even years, making a definitive line differentiating what is or isn't appropriate almost impossible to set. Morality has always been a subjective concept, making it even harder for the judiciary or the legislature to effectively enforce it without upsetting one party or the other. What can be said through the Redskins saga is that not all marks exist purely for the sake of offense, and that what truly is inappropriate in trademarks has to be left open and moldable to the standards that exist at the time of assessment. Whether the Washington Redskins' mark will be further challenged will be left to be seen; however this writer for one thinks most parties will not be able to do so under equity, at least not in the US.

Source: Bloomberg

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