DYKES ON BIKES, THE SLANTS and FUCT: Reclaiming Disparaging, Immoral and Scandalous Trademarks
June is Pride Month, which celebrates the contributions of the LGBTQ+ community. This year also commemorates the 50th Anniversary of the 1969 Stonewall Uprising in Greenwich Village, which helped ignite the fight for LGBTQ+ rights in the US. With today’s lively conversations around the appropriate terminology to use when it comes to sexuality and gender, it’s a perfect time to look at “reclaimed” terms in trademark applications. The timing is also apt, since the Supreme Court is expected to rule any day on Iancu v. Brunetti, a case involving the PTO’s regulation prohibiting registration of “immoral ... scandalous” marks.
Numerous marks have been refused registration on the grounds that they “may disparage” or are “immoral, deceptive or scandalous” pursuant to Section 2(a) of the Trademark Act. Let’s begin with DYKES ON BIKES, which was filed by the San Francisco Women's Motorcycle Contingent in 2003. The PTO issued a final refusal of the mark on the ground that it was potentially disparaging, denied reconsideration, and then, after public outcry, reversed course and published the mark for opposition in 2006. Similarly, LIPSTICK LESBIAN was initially refused and later allowed (although the registration was not issued because no statement of use was filed), and DYKE TV was registered after overcoming a Section 2(a) refusal (it was later cancelled for non-renewal). In these instances, extensive argument was required to persuade the PTO that while the terms can be used in a pejorative manner, when reclaimed and used by the lesbian community, they were not in fact “disparaging.”
Racial and ethnic minorities have also sought to register reclaimed terms as trademarks. For example, in 2005, Heeb Media, a Jewish culture magazine, sought to register HEEB for clothing and entertainment services. The PTO refused the application and the TTAB affirmed the refusal.
Similarly, the PTO refused to register an application by Simon Tam for THE SLANTS as the name of his Asian American band. After TTAB affirmed the refusal, Tam appealed to the Federal Circuit, which found Section 2(a) unconstitutional because it violated the First Amendment right to free speech. The government appealed to the US Supreme Court, which accepted the case. In a 2017 decision in Matal v. Tam, the Supreme Court agreed and held the portion of Section 2(a) concerning potentially disparaging marks unconstitutional.
The Supreme Court is now poised to rule on that portion of Section 2(a) prohibiting registration of “immoral … scandalous” marks. The case, Iancu v. Brunetti, involved a refusal to register FUCT for clothing. Oral argument was held on April 15, 2019 and a decision is expected soon. Most predictions are that the Court will invalidate, or at least narrow, the statute for reasons similar to those in Tam.
As language evolves, words are reclaimed and new terms are introduced. It’s only a matter of time before the legal system catches up. As Rachel Maddow would say, watch this space.