The CAFC tackles disparagement in In re Tam

In the case In re Tam, decided by the CAFC on 20 April 2015, the appellate court affirmed the TTAB's affirming
the examining attorney’s refusal to register the mark THE SLANTS because it is disparaging.

As to the legal analysis of


Section 2(a) of the Lanham Act provides that the Patent
and Trademark Office (PTO) may refuse to register a
trademark that “[c]onsists of or comprises immoral,
deceptive, or scandalous matter; or matter which may
disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols, or
bring them into contempt, or disrepute.” 15 U.S.C.
§ 1052(a).

A disparaging mark “‘dishonors by comparison
with what is inferior, slights, deprecates, degrades, or
affects or injures by unjust comparison.’” In re Geller, 751
F.3d 1355, 1358 (Fed. Cir. 2014) (quoting Pro-Football,
Inc. v. Harjo, 284 F. Supp. 2d 96, 124 (D.D.C. 2003))
(alterations omitted). In Geller, we applied a two-part
test to determine if a mark may be disparaging:
(1) what is the likely meaning of the matter in
question, taking into account not only dictionary
definitions, but also the relationship of the matter
to the other elements in the mark, the nature of
the goods or services, and the manner in which
the mark is used in the marketplace in connection
with the goods or services; and
(2) if that meaning is found to refer to identifiable
persons, institutions, beliefs or national symbols,
whether that meaning may be disparaging to a
substantial composite of the referenced group.



The text in Geller is as follows:


A mark may disparage when it “ ‘dishonor[s] by comparison with what is inferior, slight[s], deprecate[s], degrade[s], or affect[s] or injure[s] by unjust comparison.’ “ Pro–Football, Inc. v. Harjo, 284 F.Supp.2d 96, 124 (D.D.C.2003) (quoting Harjo, 50 U.S.P.Q.2d at 1737 n. 98). - See more at: http://caselaw.findlaw.com/us-federal-circuit/1666371.html#sthash.4zyC3zX6.dpuf



Note the words "may disparage." The text in Tam is not an accurate representation of what is in Geller.

Within the district court memorandum opinion on Harjo [284 F.Supp.2d 96 (2003) ]:



At issue in this appeal is the decision of the Trial Trademark and Appeal Board ("TTAB" or the "Board") to cancel six federal trademark registrations involving the professional football team, the Washington Redskins, because it found that the marks "may disparage" Native Americans or "bring them into contempt, or disrepute." Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705, 1749, 1999 WL 375907 (Trademark Tr. & App. Bd.1999) ("Harjo II").

(...)

In September 1992, Suzan Shown Harjo and six other Native Americans (collectively, "Defendants" or "Petitioners") petitioned the TTAB to cancel the six trademarks, arguing that the use of the word "redskin(s)" is "scandalous," "may ... disparage" Native Americans, and may cast Native Americans into "contempt, or disrepute" in violation of section 2(a) of the Lanham Trademark Act of 1946 ("Lanham Act" or "Act").
(...)
None of the parties argue that the TTAB's decision to treat "disparage" in the same manner as "contempt or disrepute" was error. Therefore, the Court has not reviewed this legal determination and in assessing the TTAB's decision, only reviews whether the marks at issue "may disparage" Native Americans, which includes whether the marks bring Native Americans into contempt or disrepute.

(...)

The TTAB first defined the term "disparage" in accordance with the ordinary and common meaning of the term. Id. From this review, the Board concluded that the trademarks may disparage if they may "dishonor by comparison with what is inferior, slight, deprecate, degrade, or affect or injure by unjust comparison." Id. The Board then observed that unlike the inquiry into whether a trademark is scandalous, where the test looks to the reaction of American society as a whole, a disparagement test is much more circumscribed and is limited by section 2(a) of the Lanham Act. Id.


Note again that the district court used the words "may disparage."

Within the case Rain v. Rolls-Royce : the court looked to Black's Law Dictionary to identify the plain and ordinary meaning of the term “disparage,” which it found to be: “[t]o dishonor (something or someone) by comparison” or “[t]o unjustly discredit or detract from the reputation of (another's property, product or business).” - link: http://caselaw.findlaw.com/us-7th-circuit/1545188.html#sthash.FStcbCxY.dpuf

In the Tam case, the proposed mark "The Slants" is not making a comparison. Also, it is not discrediting or detracting from the reputation of another's property, product, or business.



The final words of Judge Moore's concurring remarks, in which the limitation on "may disparage" is questioned on
constitutional grounds:


We have yet to be presented with any substantial government interests that would justify the PTO’s refusal to register disparaging marks. Without this, § 2(a) cannot satisfy the Central Hudson test. It is time to revisit the holding in McGinley in light of subsequent developments in the law and the trademark registration funding re-gime.



And note the words of the statute are "may disparage." What does that mean?