How Dykes on Bikes Got It Right : Procedural Inequities Inherent in the Trademark Office's Review of Disparaging Trademarks

Section 2(a) of the Lanham Act prohibits the registration of trademarks that “may disparage” a person, institution, belief or national symbol. Every trademark application filed with the United States Patent and Trademark Office should be reviewed for compliance with this prohibition on disparagement; however, numerous potentially disparaging trademarks, such as REDSKINS and HEEB, have been granted registration easily while other trademarks, such as DYKES ON BIKES, intended to reappropriate a formerly disparaging term, have been forced into lengthy battles over disparagement in order to obtain registration. This lack of consistency is especially problematic when a potentially disparaging mark is allowed to register as it becomes nearly impossible for disparaged third parties to cancel. This undesirable outcome is the result of two larger problems: (1) prohibitively difficult evidentiary burdens faced by disparaged groups in opposition and cancellation actions and (2) the improper application of the doctrine of laches to Section 2(a) cancellation actions. This article argues for the implementation of specific procedural changes that would shift the burden away from disparaged third parties and back onto trademark applicants. Applicants would be required to affirmatively prove that their desired trademark is not disparaging. By holding applicants to this burden, and by requiring them to affirmatively disclose information relevant to the disparagement analysis in their initial trademark application, the trademark office would be placed in a better position to analyze disparagement. The result would be a more predictable and equitable review of trademark applications, ideally preventing the erroneous registration of disparaging trademarks and lessening the need for contentious cancellation actions brought by disenfranchised third parties