Supreme Court refuses to overturn approval of DYKES ON BIKES

In McDermott v San Francisco Women's Motorcycle Contingent (January 7 2008), the US Supreme Court has denied the petition for certiorari filed by Michael McDermott in his case against the San Francisco's Women's Motorcycle Contingent (SFWMC). McDermott was appealing a July 11 2007 decision in which the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (TTAB) dismissal of McDermott's opposition to an application to register the trademark DYKES ON BIKES.

SFWMC applied to register the mark DYKES ON BIKES for education and entertainment services. The application was initially refused under 15 USC 1052(a) on the basis that the word 'dyke' was disparaging to lesbians. Paragraph 1052(a) prohibits registration of a mark which:

"[c]onsists of or comprises immoral, deceptive or scandalous matter; 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."

Upon consideration of additional evidence following a remand from the TTAB, the examiner approved the application, which was published for opposition. McDermott filed a notice of opposition, making two claims. First, he argued that the term 'dykes' is disparaging. Second, he claimed that the mark comprised scandalous and immoral material because the mark in full is associated with a pattern of illegal activity by SFWMC. The TTAB dismissed McDermott's opposition, finding that he lacked standing to oppose the registration of the mark, having failed to allege facts showing that he had a reasonable basis for his belief that he would be damaged.

On appeal, the US Court of Appeals for the Federal Circuit agreed that McDermott lacked standing to assert either claim. An opponent must have both a real interest in the proceedings and a reasonable basis for a belief that it would be damaged by the registration. The TTAB found (and SFWMC did not challenge on appeal) that McDermott sufficiently pleaded a real interest in the proceeding. However, turning to the reasonable basis for McDermott's belief that he would be damaged, the Federal Circuit concluded that he had failed to make the required showing. The court observed that one method of establishing the reasonableness of a belief of damage is to allege that the opponent "possesses a trait or characteristic that is clearly and directly implicated in the proposed mark". The TTAB found - and the Federal Circuit agreed - that the proposed mark would have no implications for McDermott because he is a man.

The Federal Circuit observed that McDermott could have alleged that others share the same belief of harm from the proposed trademark, through such proof as surveys, petitions or affidavits from public interest groups. However, McDermott presented no evidence that his belief was shared by others and no reference to supporting evidence demonstrating such a shared belief.

David S Fleming, Brinks Hofer Gilson & Lione, Chicago

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