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.