Frito Bandito, The Slants and The Redskins – Offensive Trademarks in an Uncertain Environment
March 29, 2016
In the late 1960s, the Fritos® brand was represented by an extremely popular cartoon named Frito Bandito, a Mexican character who spoke broken English and robbed people of their Fritos® corn chips. Although the character was a popular marketing device, critics claimed that it was offensive as it referenced the “Mexican bandit” stereotype in western movies. Under pressure from activists and Congressional hearings about ethnic stereotypes on TV, Frito Lay abandoned the cartoon around 1969.
While Frito Bandito fell to public pressure, in recent years, the weapon of choice against offensive trademarks has been the Lanham Act. The Act provides that the US Patent and Trademark Office (USPTO) may refuse to register a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter” (known as the “scandalousness” provision) or “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” (known as the “disparagement” provision).
This has been the recent approach of detractors of the Washington Redskins trademarks. Citing the Lanham Act’s prohibition on disparaging matter, in 2014, the USPTO invalidated federal registrations that included the term “redskins.” These registrations, which date back as far as 1967, were ordered cancelled because the USPTO found that the word “redskin” disparages Native Americans. While the team still has common law rights in the mark and is still able to use the term “redskin”, the loss of federal trademark protection diminishes the team’s ability to protect against infringement and counterfeit goods. Not surprisingly, the team is appealing the decision.
At the same time a much lower profile, but equally important, case about disparaging marks has been decided by the courts. In December of 2015, in In re Tam, the Federal Circuit considered whether the disparagement provision is constitutional or whether it violates the Freedom of Speech Clause of the First Amendment. In this matter, Simon Tam filed a trademark application for his Asian American band’s name, THE SLANTS. The USPTO denied his application on the basis that “slant” is a derogatory term for someone of Asian descent. In a decision that the Redskins are almost certainly reviewing in close detail, the Federal Court reversed the USPTO and held the disparagement provision of the Lanham Act is unconstitutional. The court found that the US Constitution’s Freedom of Speech clause protects the mark, no matter how distasteful.
In addition to the controversies regarding the disparaging nature of the REDSKINS and SLANTS trademarks, the constitutionality of scandalousness provision in the Lanham Act is also currently before the Federal Circuit. In In re Brunetti, the court will rule on the federal registrability of the mark FUCT, a word that sounds like a well-known curse word. Registration was denied by the USPTO based on the scandalous nature of the term.
In light of In re Tam and the pending decisions for the Redskins and Brunetti, on March 10, 2016, the USPTO issued instructions to its trademark examining attorneys that while the constitutionality of these scandalous, immoral or disparaging matter remains in question and may potentially end up before the Supreme Court, the USPTO will suspend action on any trademark applications containing such material until the constitutional questions are resolved by the courts.
In the meantime, companies and marketers with these controversial marks remain in limbo. If the Supreme Court overrules the Circuit Court in Tam, scandalous and disparaging marks may once again become forbidden fruit. Alternatively, they may side with the Tam decision and find that these offensive marks are federally registrable. In the meantime, those who are considering filing for US trademark protection for an offensive mark may want to do so to give themselves priority in case the courts determine that the Redskins, Slants and Frito Banditos of the world are federally registrable.
Fleit Gibbons Gutman Bongini & Bianco PL is an law firm specializing in intellectual property law located in South Florida. This article was written by Paul D. Bianco, Ph.D., a partner in the firm’s Miami office, and Lourdes Perez, an associate with the firm. Their practices involve all areas of intellectual property law, including trademarks, patents, copyrights, trade dress, and internet domain disputes. Both Lourdes and Paul can be reached at 305/830-2600. Paul’s email is pb*****@***bb.com and Lourdes’ is lp****@***bb.com.
1- http://www.tvacres.com/admascots_frito.htm. http://www.businessinsider.com/15-racist-brand-mascots-and-logos-2014-6#frito-bandito-1967-1971-7; http://listverse.com/2009/08/30/10-extinct-advertising-villains/.
2- 15 U.S.C. § 1052(a).
3- USPTO Media Fact Sheet, Trademark Trial and Appeal Board (TTAB) Decision in Blackhorse v. Pro Football, Inc. (TTAB Cancellation No. 92046185).
4- US Registration No. 0836122, registered September 26, 1967; US Registration No. 0978824, registered February 12, 1974; US Registration No. 0986668, registered June 18, 1974; US Registration No. 0987127; registered June 25, 1974; US Registration No. 1085092, registered February 7, 1978; and US Registration No. 1606810; registered June 17, 1990.
5- The team lost at the District Court level. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498 (E.D. Va. 2014). The matter is currently under appeal to the Court of Appeals for the Fourth Circuit.
6- In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), as corrected (Feb. 11, 2016).
7- In Re Brunetti, 85310960, (Aug. 1, 2014).
8- http://www.uspto.gov/trademark/guides-and-manuals/trademark-examination-guides.
