Trademark Review (July 2014)

by Knobbe Martens

Past Disparagement Results in Present Cancellation: REDSKINS Marks Cancelled by TTAB

The Trademark Trial and Appeal Board (“TTAB”) cancelled six registrations for marks consisting in whole or in part of the term REDSKINS for use in connection with a professional football team, because the marks were found to be disparaging to Native Americans at the time they were registered (between 1967 and 1990). 

The Board found that when used in connection with football services, REDSKINS retains the meaning of “Native American.” Videos of football games, newspapers, and press guides created between 1967 and 1990 established that the respondent “made continuous efforts to associate its football services with Native American imagery.” 

The Board also found that dictionary definitions of “redskin” published prior 1967 and during the relevant time period established that there was “a clear trend” to label the term “redskin” as offensive and that by 1986, the dictionaries unanimously labeled the term as offensive. 

The Board then considered statements and resolutions from members of the National Congress of American Indians (“NCAI”) which represented approximately thirty percent of Native Americans during the relevant time period. When considering whether a term is disparaging, a “substantial composite” of the referenced group is required, not a majority.  In 1993, the NCAI passed a resolution voicing its continuous opposition to the registration of the REDSKINS marks. Even though the resolution was passed after 1990, the Board found that it was a group statement about views held during the relevant time period. Further, the NCAI had protested each registration of the mark from 1967 to 1990. Because the petitioners’ evidence demonstrated that the NCAI represented at least thirty percent of Native Americans during the relevant time period, the Board agreed that a substantial composite of Native Americans find the mark disparaging.  

Amanda Blackhorse, Marcus Briggs-Cloud, Philip Grover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No.  92046185 (TTAB June 18, 2014) [precedential].

Some Things Never Change: Swearword Continues to Be Scandalous Matter

The Trademark Trial and Appeal Board (“TTAB”) found the mark “ASSHOLE REPELLENT” to be scandalous and vulgar despite its use on a gag gift. After considering contemporary attitudes towards swearwords, the Board affirmed the examining attorney’s refusal to register the mark. 

The applicant filed an application to register ASSHOLE REPELLENT for a spray-top can. The can is sold as a gag gift. The Trademark Act prohibits the registration of trademarks consisting of “scandalous matter.”  The applicant submitted evidence to prove that the mark is not scandalous and is at worst impolite. However, the Board found that the evidence actually confirmed the examining attorney’s finding that the mark is scandalous and vulgar. 

The Board took into account the standpoint of the general public and contemporary attitudes towards swearwords. However, the Board noted that some terms are still vulgar even though society and the media appear to have a relaxed attitude towards use of swearwords.

The Board found that the use of “asshole” on the applicant’s product, repellant spray, invokes the vulgar meaning of the word. While the evidence demonstrated the increased use of the swearword in the main-stream media, the Board stated that “a term does not lose its profane meaning simply because it may be used more frequently.”  An academic study and a posting confirmed that the general public considers the swearword to be offensive. 

In re Michalko, Serial No. 85584271 (TTAB May 30, 2014) [precedential]

The Mark of Greatness: Russian Imperial Surname is Not Just Any Last Name

In a non-precedential opinion, The Trademark Trial and Appeal Board (“TTAB”) reversed the Patent and Trademark Office’s (“PTO”) refusal to register the mark ROMANÓV.

The applicant sought registration of the mark ROMANÓV for decorative eggs, picture frames, porcelain boxes, jewelry, and table clocks. The Examining Attorney refused registration on the grounds that the mark is “primarily merely a surname.”

Under the Trademark Act, a mark cannot be registered if it is “primarily merely a surname” unless the applicant demonstrates acquired distinctiveness. 

In reviewing the PTO’s refusal, the Board examined the rareness of the surname, whether anyone connected to the applicant bears the surname, whether the mark has significance other than as a surname, and whether the mark looks or sounds like a surname. After considering these factors, the Board found that the PTO had failed to establish that ROMANÓV was “primarily merely a surname”.

The PTO relied upon a search of a directory website that revealed “100+ Results” for “Romanóv.” The Board found this to be insufficient proof that the name is common because “100+” is an inconclusive indicator of the rareness of the surname. There could be thousands of persons having the surname or just over 100 persons. Because it was the Examining Attorney’s burden to demonstrate the commonness of the surname, the Board gave the applicant the benefit of the doubt and assumed that Romanóv was a rare surname. Thus, the public is less likely to consider its significance as a surname when encountering ROMANÓV. The Board also considered that no one connected with the applicant bears that surname. 

The applicant argued that the name has recognizable historical significance, because it is the surname of the dynasty that ruled Russia from 1613 to 1917. The PTO found that “Romanóv” has no significance other than a surname because it has no dictionary meaning and multiple members of the House of Romanóv (such as Peter the Great and Catherine the Great) held that surname. Because the applicant’s goods (decorative eggs and jewelry) are items associated with the Romanóv dynasty, the Board found that consumers encountering the mark are more likely to think of the dynasty and not individuals bearing the surname. Thus, the applicant’s mark ROMANÓV is not “primarily merely a surname.”

In re The Hyman Companies Inc., Serial No. 85483695 (TTAB June 4, 2014) [not precedential].

Super Supplement Does Not Help Vitamin Supplier Outgrow Genericness

The Federal Circuit affirmed the Trademark Trial and Appeal Board (“TTAB”) ruling that the mark CHILDREN’S DHA is generic for nutritional supplements containing DHA. 

Nordic Naturals (“Nordic”) specializes in nutritional supplements made from fish oil, which contains DHA (docashexaeonic acid), an omega-3 fatty acid that assists in brain development. Nordic filed an application to register CHILDREN’S DHA in connection with nutritional supplements containing DHA for children. The examining attorney rejected the mark as generic, or in the alternative, as lacking acquired distinctiveness. The Board affirmed, finding that dictionary definitions and third-party uses of the term established that the term is used generically by parents and adults who purchase nutritional supplements containing DHA for children. Although Nordic has achieved commercial success, the Board found that CHILDREN’S DHA does not identify Nordic as a source. Thus, the mark had not acquired distinctiveness. 

On appeal to the Federal Circuit, the court found the evidence supported the TTAB finding that the relevant public primarily uses “children’s DHA” generically to refer to DHA products for children. 

Nordic also argued that while “children’s DHA supplement” may be descriptive, CHILDREN’S DHA by itself is not descriptive. Nordic claimed that its commercial success results from the consumer’s ability to identify Nordic as the source of CHILDREN’S DHA. Nordic provided declarations from retailers, examples of its own advertising, and third-party uses of “children’s DHA” which refer to Nordic ‘s products. It argued that since there was a “mixture of usages” of the mark, it could not be generic.  

However, the Federal Circuit found that the record did not establish that there was a mixture of usages of “children’s DHA” among the relevant public. The third-party references used the term to describe the products, not to refer to Nordic as the source. Further, the court found that the declarations did not demonstrate that the public uses the term to identify Nordic since the declarations were only from retailers and not the relevant public. 

The Federal Circuit recognized that Nordic may have been the first to use “children’s DHA” in the market. However, since the term is used by the public to refer to DHA products for children, Nordic could not claim exclusive use of the term. 

In re Nordic Naturals,Inc. ( Case No. 2013-1492, Serial No.77131419) (United States Courts of Appeals for the Federal Circuit, June 23, 2014). 


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Knobbe Martens | Attorney Advertising

Written by:

Knobbe Martens

Knobbe Martens on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.