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CHAPTER SIX
Grounds for Refusing Registration
Section 1052 of the Lanham Act contains a series of grounds for refusing federal
registration of trademarks. We will take its subsections in turn.
1.) 1052(a)
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused registration
on the principal register on account of its nature unless it—
(a) Consists 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; or a
geographical indication which, when used on or in connection
with wines or spirits, identifies a place other than the origin of the
goods and is first used on or in connection with wines or spirits
by the applicant on or after one year after the date on which the
WTO Agreement (as defined in section 3501 (9) of title 19) enters
into force with respect to the United States.
Note: The last clause of 1052(a) was inserted to comply with the TRIPS Agreement. It
prohibits geographical indications on wines and spirits that identify a place other than
their origin, even if the term is not misleading; “Champagne” cannot be used on sparkling
wine unless it comes from Champagne, France. (Or unless the wine was grandfathered
in by being used before the relevant date. Hence the excellent Chandon Brut sparkling
wine from California may not use the term champagne but Cooks Champagne may.)
i.) Disparaging marks. In June 2014, the Trademark Trial and Appeal Board (TTAB)
cancelled the federal registration of six trademarks containing the term REDSKINS—
issued between 1967 and 1990—on the basis that they were disparaging to Native
Americans in violation of section 1052(a). In an earlier case from 1999, the TTAB found
that those same marks were disparaging, but that decision was reversed in 2003 by the
United States District Court for the District of Columbia, which held that there was
insufficient evidence to support the disparagement finding, and that the claim was barred
by laches. The 2014 decision revisited the question of disparagement, using a two-step
inquiry: “What is the meaning of the matter in question?” and “Is the meaning of the
marks one that may disparage Native Americans?” We will first consider the District
Court case and then the more recent TTAB decision.