Nick Brandt

Trademark & Unfair Competition Seminar

Outline and Sample Bibliography

Very Rough Idea of Where I’m Going:

Is there any reason we need the Lanham Act’s Section 2(a) prohibition on trademarks that are disparaging? What was the intent of including this prohibition in the first place? Does it serve the foundation interests of trademark law? What role does the prohibition on disparaging marks play in the modern expansion of trademark protection? Are there any benefits to preventing registration of disparaging marks? Are they benefits trademark law cares about? What are the relative harms and benefits of allowing disparaging marks to be registered?

I realize this isn’t a thesis yet, but I think these questions all dance around the issue of what’s the point of the prohibition on registration of disparaging marks. And if there isn’t a point to the prohibition, does that necessarily mean we should eliminate Section 2(a)?

  1. Brief History of Section 2(a)
  2. Distinguish between scandalous, immoral, and disparaging trademarks
  3. Compare standards, or lack thereof
  4. What was the purpose of Section 2(a)
  5. Why was it enacted?
  6. Legislative history?
  7. How does Section 2(a) fit in with general trademark theory
  8. Overview of “disparaging” trademark case law
  9. Washington Redskins
  10. Various rejections and approvals of QUEER and marks using DYKE
  11. Rejections of “NIGGA”
  12. “HEEB”
  13. Potential drawbacks of prohibiting registration of disparaging marks
  14. Prevents re-appropriation (DYKES ON BIKES)
  15. But is re-appropriation something that trademark should be concerned with fostering and developing?
  16. How difficult would it be to administer a system allowing registration of self-disparaging marks?
  17. First Amendment issues?
  18. Potential benefits of prohibiting registration of disparaging marks
  19. Stays closer to original trademark theory of source identification
  20. How can a slur really identify source?
  21. Keeps marketplace “clean”
  22. But is this the kind of paternalism we want coming from trademark law?
  23. Conclusion

Preliminary Bibliography

Variety of U.S. P.T.O trademark applications (DYKES ON BIKES, NIGGA, HEEB, etc.)

In re In Over Our Heads Inc., 16 U.S.P.Q.2d (BNA) 1653 (T.T.A.B. 1990)

Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d (BNA) 1705 (T.T.A.B. 1999), rev’don other grounds 284 F. Supp.2d 96 (D. D.C. 2003)

Stephen R. Baird, Moral Intervention in the Trademark Arena: Banning the Registration of Scandalous and Immoral Trademarks, 83 Trademark Rep. 661 (1993).

Theodore H. Davis, Jr., Registration of Scandalous, Immoral, and, Disparaging Matter Under Section 2(a) of the Lanham Act: Can One Man’s Vulgarity be Another’s Registered Trademark?, 54 Ohio St. L.J. 331 (1993).

Llewellyn Joseph Gibbons, Semiotics of the Scandalous and the Immoral and the Disparaging: Section 2(a) Trademark Law after Lawrence v. Texas, 9 Marq. Intell. Prop. L. Rev. 187 (2005).

Lynda J. Oswald, Challenging the Registration of Scandalous and Disparaging Marks Under the Lanham Act: Who Has Standing to Sue?, 41 Am. Bus. L.J. 251 (2004).

Kimberly A. Pace, The Washington Redskins Case and the Doctrine of Disparagement: How Politically Correct Must a Trademark Be?, 22 Pepp. L. Rev. 7 (1994).

Jendi B. Reiter, Redskins and Scarlet Letters: Why “Immoral” and “Scandalous” Trademarks Should be Federally Registerable, 6 Fed. Cir. B.J. 191 (1996).

Ethan G. Zlotchew ”Scandalous” or “Disparaging”? It Should Make a Difference in Opposition and Cancellations Actions: Views on the Lanham Act’s Section 2(a) Prohibitions Using the Example of Native American Symbolism in Athletics, 22 Colum.-VLA J.L. & Arts 217 (1998).

Todd Anten, Note, Self-Disparaging Trademarks and Social Change: Factoring the Reappropriation of Slurs Into Section 2(a) of the Lanham Act, 106 Colum. L. Rev. 388 (2006).