Whether to challenge or protect offensive trademarks

Offensive trademarks may deeply offend a minority, while the majority may be insensitive or unaware of the offence.

Richard Crawford, Kentwan Balme, Kedric Golston, Sam Kirkland
Many fans of the Washington Redskins football team - including the Mayor of Washington, DC - try to avoid using the name at all costs, instead referring the team as "our Washington football team" [AP]

How would you feel about a wine called “Khoran?” Apparently, the word “Khoran” is Armenian for altar, which is why a company sought to trademark “Khoran” for wine in the United States. But should such a trademark be registered by the US government when, being phonetically equivalent to the sacred text of Islam, it may offend Muslims when used to denote an alcoholic beverage? In this case, the trademark was refused registration by the US trademark office. 

Should a trademark application for jeans called “Jesus Jeans” be treated any differently? In the US and European Union, this registration was allowed, however, China, Switzerland, Australia, Norway, Cuba, Turkey, Uzbekistan, Tajikistan and Kyrgyzstan have all refused the trademark, and Britain’s trademark office rejected its as “morally offensive to the public”.

What should we do about offensive trademarks? Granted, this is not the biggest problem that plagues us today and there are very few offensive trademarks that are still in use. Perhaps the most obvious thing to do is to vote with our dollars. That is, generally the market will correct the problem since merchants usually do not want to offend their customers.

And yet there still are some trademarks out there that offend. And some of them offend deeply. One of those trademarks is “Redskins”, which is the trademark for the professional American football team in Washington, DC.  

Derogatory racial epithet

In case you are not familiar with the word – and I hope you are not – Redskin is generally understood to be a derogatory racial epithet that refers to Native Americans. The director of the Smithsonian National Museum of the American Indian considers that name to be the most offensive name in current use. Indeed, many fans of the team – including the Mayor of Washington, DC – try to avoid using the name at all costs, instead referring to the team as “our Washington football team”.

This week, the questionable use of the Redskins trademark has captured the attention of the press in the US. On Wednesday, Congressman Eni Faleomavaega introduced a bill (the Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act) into the United States Congress to amend the US Trademark Act to prohibit the registration of the word Redskins.

This action follows on the heels of a March 7 hearing before a tribunal of the United States Patent and Trademark Office in which a group of Native Americans sought to cancel six separate registrations of the football team’s trademark.

This was not the first hearing in the dispute over the trademark. In fact, there has been ongoing litigation in US courts over the Redskins trademark since 1992. That’s right – the litigation has already lasted more than two decades! 

US trademark law prohibits the registration of trademarks that, among other things, “may disparage… persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute”. 

“A trademark registration can be challenged as being immoral, scandalous or disparaging by members of the offended group.”

Under this statutory provision, a group of seven Native Americans first challenged the Redskins trademark in the US trademark office in 1992. The plaintiffs presented the tribunal with evidence of dictionary definitions, linguists’ expert opinions and the results of a survey. In 1999, the tribunal agreed that the registrations should be cancelled.

But on appeal, a federal court found that the Native Americans failed to present sufficient evidence that a substantial composite of Native Americans regard the term Redskins as disparaging when used as a trademark by the football team.

The court also found that the Native American plaintiffs had unjustifiably delayed in bringing the action since the trademark had already been registered 25 years by the time of the lawsuit (the trademarks in question were registered between 1967 and 1990).

After that loss, a new group of younger Native Americans brought a second challenge. Since one cannot be held to have delayed in bringing a legal claim before the age of 18, this group of young adults appear to have overcome any criticism of delay in the new lawsuit by bringing their claims as soon as they could. 

It was their case that was argued before the tribunal a few weeks ago. We await a new ruling, which will no doubt be followed by many more years of appeals. 

Some may be surprised to learn that trademark law has anything to do with the regulation of offensive speech. After all, trademark law regulates commercial behaviour, not civility. Moreover, US law is ordinarily thought to be quite protective of free speech. So why would US trademark law seek to regulate offensive speech in this way? Free speech advocates question the wisdom of trademark examiners acting like thought police.

But US trademark law is not unique in prohibiting the registration of offensive trademarks. Many countries’ trademark laws contain similar provisions. Indeed, international treaties (such as the Paris Convention administered by the World Intellectual Property Organization) contain provisions that anticipate the prohibition of trademarks that are contrary to morality or public order. European trademark law has adopted precisely this standard. 

Offensive trademarks

Of course, trademark offices do not employ linguists or anthropologists, so they may be ill-equipped in making judgments about which words offend which populations. And trademark law, unlike constitutional law, does not have a rich body of jurisprudence that has developed over a long period of time on balancing speech rights and the public order. But that does not mean there have not been cases that have defined the standards to be applied under these statutory provisions.

In the case of disparaging trademarks, the law that has developed in the US seems pretty sensible. First, one must determine the likely meaning of the trademark taking into account not only the dictionary definition, but also any figurative elements of the trademark, the nature of the goods or services associated with the trademark, and the manner in which the trademark is used in the marketplace.

Second, there should be evidence that it is more likely than not that the meaning of the trademark is disparaging to a substantial composite of the referenced group.

So in trademark law, the issue is not whether the word is disparaging in the abstract, but rather whether the word is disparaging when used as a trademark for the particular goods. While the trademark office tribunal was satisfied by survey evidence that showed that 131 (37 percent) of the 358 Native Americans surveyed found the word Redskins to be offensive, the court that overturned the cancellation of the trademark criticised this evidence because the survey did not ask about the respondents’ reaction to the use of the word Redskins in the context of a trademark for football.

The theory of that court was that context matters, although it is difficult to accept that a racial epithet could become acceptable when applied to any conceivable set of goods. When it comes to racial epithets one would think that almost any commercial use would offend.

Another US case honed in on the population required to deem a trademark disparaging. The case involved “Heeb”, which sought to trademark the word for the company’s “clothing and entertainment services”. The only problem is, Heeb is a homophone of “hebe”, which is an ethnic slur for Hebrew. This trademark was rejected by the US trademark office as being anti-Semitic and disparaging of Jewish people even though the evidence showed that there was a generational divide in terms of how the Jewish population regarded the term. While younger Jewish people did not find the trademark offensive, older Jewish people did.

Of course, having sensible legal doctrines does not in and of itself justify legal regulation. Significantly, trademark law seeks to regulate only the registration of offensive trademarks and is not so ambitious to attempt to regulate the use of offensive trademarks. This means that a trademark deemed offensive and therefore denied registration is still legally able to be used in the marketplace.

Thus, should the Native Americans be victorious in their case against the football team, the legal result would be that the registration of the Redskins trademark would be cancelled, but the team would continue to use their trademark in commerce without interference.

In this way, we can see that these trademark laws are a very limited regulation of offensive speech. Not only do these laws not prohibit the use of offensive trademarks, but under US law offensive trademarks – unregistered, but used in commerce – will still be protected in US courts as common law trademarks. 

If these trademark laws do not prohibit the use of offensive trademarks, then what’s the point? Surely, the Native Americans who challenged the Redskins trademark would prefer to ban the use of the trademark rather than to just ban the registration of the trademark. Nonetheless, the registration of a trademark by national government has the symbolic effect of the government giving its stamp of approval to the trademark. 

“The psychological harms of racialised representations impact not only the referenced group, but also society as a whole.”

Obviously, if that trademark deeply offends a minority, it may appear that the government condones the use of such offensive language. Therefore, this legal restriction provides governments with an opportunity to refuse to lend the support of the administration to those trademarks that offend the public. 

Racist stereotypes

In addition to refusing to register trademarks that are disparaging, the US trademark act also forbids the registration of marks that “falsely suggest a connection” with another group or person, as well as trademarks that are “immoral” or “scandalous”. These other restrictions are not tested against the reactions by a minority, but instead look to the reaction of the American society as a whole.

There are a number of unusual trademark cases brought under this law, but most involve unprintable words. In the UK, two variants recalling a coarse slang term received different treatment. Curiously, “Fook” was denied registration, but “FCUK” was allowed. 

A trademark registration can be challenged as being immoral, scandalous or disparaging by members of the offended group. But it is quite an arduous undertaking for a group of private citizens to mount a challenge to an offensive trademark. Many countries’ trademark laws permit trademark examiners to refuse registration of offensive marks on their own.

As a society, we owe a debt of gratitude to those who mount such challenges. In many cases of offensive trademarks, the trademark may deeply offend a minority, while the majority may be insensitive or unaware of the offence. These challenges then are opportunities for all of us improve upon our awareness of cultural sensitivities. And this has certainly been the case in the Redskins dispute.

Many have wondered whether the commercial use of an epithet denoting another race would be so difficult to challenge. Again, there are unprintable words that come to mind. Would a trademarks referring to the skin of an African or an Asian person be acceptable? 

Embarrassingly, Americans have for too long accepted racist stereotypes of Native Americans. Especially in sports, where universities and high schools often have used Native American nicknames and mascots. But these regretful practices are largely disappearing now, with this one notable exception.

For decades indigenous peoples have fought to protect themselves from the public humiliation and discrimination associated with racial slurs such as Redskin. The use of the word is hurtful and insulting to our nation’s first inhabitants and their descendants. 

Racist trademarks tear down the fabric of society by promoting negative stereotypes of minority groups. There is a strong public interest in eliminating damaging stereotypes and stigmatisation. The social costs to the public at large are huge and include reinforcing hateful and erroneous stereotypes and misinformation about our fellow citizens.

The psychological harms of such racialised representations impact not only the referenced group, but also society as a whole.

In these larger issues of racial identity, civility and community, obviously trademark law plays a very minor role. But as some of these disputes, such as the Redskins dispute, demonstrate, on occasion this small role can be an important one.

Christine Haight Farley is a professor of law at American University Washington College of Law who teaches and writes about intellectual property law.