Dykes on Bikes opposition fails on appeal

The Court of Appeals for the Federal Circuit in the US of A has ruled that an application for DYKES ON BIKES as a trade mark by the San Francisco Women’s Motorcycle Contingent cannot be barred from registration on morality grounds. The application was made by a group of lesbian bikers who lead the annual San Francisco gay pride march, and was turned down twice by the USPTO.

The decision itself is rather narrow. The CAFC never actually deals with whether the mark actually is immoral or offensive. Instead, the decision is based on whether the opponent had standing to oppose the mark.

The opposition was brought by one Michael McDermott, who argued that the mark, by including the term ‘dykes’ was disparaging, and also that the mark was scandalous because it was associated by a pattern of illegal activity undertaken by the applicants.

According to the court’s past case law, to have standing in opposition proceedings, a party must have (i) a real interest in the proceedings and (ii) reasonable basis for his belief that he would be damaged by registration. A previous finding that McDermott had a real interest went unopposed by the trade mark applicants, and so the case turned on whether he had a reasonable basis for his belief that he would be damaged by the registration.

The CAFC found that he had no such basis for the simple reason that he was a man, and so was not ‘implicated’ by the term ‘dykes’. Additonally, there was no evidence that others in a similar position to McDermott believed that they would be damaged by the mark.

The IPKat says that such a test would appear to make it rather tricky to oppose a trade mark on morality grounds if one isn’t part of the group referred to in the mark. This would make it difficult to oppose a mark on the grounds that a term is hurtful to a specific group, and therefore offensive to society as a whole.
Dykes on Bikes opposition fails on appeal Dykes on Bikes opposition fails on appeal Reviewed by Anonymous on Tuesday, July 17, 2007 Rating: 5

3 comments:

  1. Mortality grounds? Does that mean that no-one would want to be seen dead with goods bearing the mark?

    ReplyDelete
  2. Mortality is not a problem for trade mark law, on the assumption that the principle of perpetual renewal remains sacrosanct.

    ReplyDelete

All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html

Powered by Blogger.