Also known as: disparaging mark · disparagement
Written by attorneys — see sources below.
A publication that disparages the quality of another's land, chattels or intangible things and thereby causes pecuniary loss to the owner.
NimbusCloud published a report falsely stating that DataHaven's storage platform permanently corrupts user files. Several corporate customers canceled contracts with DataHaven after reading the report. DataHaven sued for injurious falsehood seeking recovery of the resulting pecuniary losses. The court examined whether the publication directly caused the cancellations and whether expenses to counteract the statements were recoverable.
Simon Tam applied to register The Slants as the name of his Asian-American rock band. The examining attorney refused registration on the ground that the mark disparaged persons of Asian descent. Tam challenged the refusal as unconstitutional viewpoint discrimination in the trademark registration system.
Simon Tam serves as the lead singer of the rock group The Slants, whose members are Asian-Americans. He chose the name in an effort to reclaim the term and drain its denigrating force as a derogatory reference to Asian persons. The group has incorporated childhood slurs into its lyrics and titled albums including The Yellow Album and Slanted Eyes, Slanted Hearts. Tam filed an application with the Patent and Trademark Office seeking registration of THE SLANTS as a trademark. The PTO examining attorney rejected the application after applying a two-part analysis and concluding that a substantial composite of persons of Asian descent would find the mark offensive. The attorney cited dictionary definitions labeling the term as derogatory and evidence that the band's name had prompted cancellation of a performance along with negative comments from online readers. Tam appealed the denial first to the examining attorney and then to the Trademark Trial and Appeal Board, which upheld the refusal. Tam then brought the case before the Federal Circuit. Sitting en banc, that court reversed the Board. The Government petitioned for certiorari, and the Supreme Court granted review.
View caseErik Brunetti sought registration of a mark containing a vulgar term for apparel. The USPTO refused registration on the ground that the mark was scandalous. Brunetti argued that the refusal constituted impermissible viewpoint discrimination under the First Amendment.
Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark is pronounced as four letters, one after the other. Brunetti applied to the U.S. Patent and Trademark Office for federal registration of the mark under the Lanham Act. A PTO examining attorney denied the application, determining that FUCT was a total vulgar and therefore unregistrable. On review, the Board stated that the mark was highly offensive and vulgar and had decidedly negative sexual connotations. It found that Brunetti’s website and products contained imagery, near the mark, of “extreme nihilism” and “anti-social” behavior. In that context, the Board thought, the mark communicated “misogyny, depravity, [and] violence.” Brunetti brought a facial challenge to the “immoral or scandalous” bar in the Court of Appeals for the Federal Circuit. That court held that the prohibition violates the First Amendment. The Supreme Court granted certiorari. The PTO rejected marks conveying approval of drug use (YOU CAN’T SPELL HEALTHCARE WITHOUT THC for pain-relief medication, MARIJUANA COLA and KO KANE for beverages) because it is scandalous to “inappropriately glamoriz[e] drug abuse.” But at the same time, the PTO registered marks with such sayings as D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.
View caseLexmark publicly asserted that Static Control's business was illegal and that its products infringed Lexmark patents. Static Control sued under the Lanham Act alleging that the statements damaged its business reputation and caused lost sales. The court analyzed whether the false statements about the competitor's products and legality proximately caused the claimed economic harm.
Lexmark International, Inc. manufactures and sells laser printers along with the toner cartridges designed exclusively for those printers. It introduced a Prebate program that offered customers a 20-percent discount on new cartridges if they agreed to return the empty cartridges to Lexmark once used. The program terms were communicated to consumers through notices printed on the toner-cartridge boxes. Static Control Components, Inc. manufactures and sells components necessary for remanufacturers to refurbish used Lexmark toner cartridges. Static Control developed a microchip that could mimic the microchip in Lexmark Prebate cartridges, enabling remanufacturers to refurbish and resell those cartridges after replacing the original chip. In 2002 Lexmark sued Static Control alleging violations of the Copyright Act and the Digital Millennium Copyright Act. Static Control counterclaimed under section 43(a) of the Lanham Act, alleging that Lexmark misled end-users into believing they are legally bound by the Prebate terms. Static Control further alleged that Lexmark sent letters to remanufacturers falsely advising that it was illegal to sell refurbished Prebate cartridges and to use Static Control products. Static Control alleged that these statements caused it lost sales and damage to its business reputation. The district court granted Lexmark’s motion to dismiss the Lanham Act counterclaim on prudential standing grounds. The Sixth Circuit reversed after applying the reasonable-interest test. The Supreme Court granted certiorari to decide the appropriate analytical framework.
View caseYes. Trademarks constitute private speech. A statutory or administrative bar on registering marks because they disparage persons or groups amounts to unconstitutional viewpoint discrimination that fails strict scrutiny.
The plaintiff must show that the publication was a substantial factor in causing the loss and that the loss resulted directly from the effect of the publication on third parties or from reasonable expenses incurred to counteract the statements.
Yes. Both defamation and injurious falsehood require a false statement of fact. When the challenged statements accurately describe the plaintiff's conduct, the claims fail regardless of the resulting economic harm.
…beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U. S. C. §1052(a). This case involves the disparagement clause. Simon Tam, lead singer of the Asian-American dance-rock band The Slants, chose this moniker in order to “reclaim” and “take ownership” of stereotypes about people of Asian…