My March 25, 2011 post addressed whether the PTO is too touchy when it comes to perceived scandalous trademarks. Below is a response that I received to that post from the attorney for the trademark applicant, the Slants music group:
Not sure if you remember this, but I believe that you and I spoke for a few minutes a few years back at a CLE. Hope you are doing well. I was reading up on some of the recent commentary regarding the trademark case involving my client, The Slants, and I noticed you recently talked about the case on your blog. I appreciate the coverage, but I also wanted to point out that this matter is one that involves an allegedly “disparaging” mark and not a “scandalous” one. The difference is significant because, unlike the case of scandalous marks, the legal test for deciding whether a mark is disparaging ultimately looks only to the views of the referenced group (as opposed to the views of the general public). See In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267 (TTAB 2006) (citing Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1740-41 (TTAB 1999), rev’d on other grounds. The point was also addressed in the Harjo case at 1339, where the opinion states that “the perceptions of the general public are irrelevant…[O]nly the perceptions of those referred to, identified or implicated in some recognizable manner by the involved mark are relevant to this determination.”
Spencer I. Trowbridge, Esq.
McNamer and Company
920 SW Third Ave, Suite 200
Portland, Oregon 97204
ph: 503.727.2502 fax: 503.727.2501