The Evolving Landscape of Disparaging and Scandalous Trademarks: Historical and Public Relations Perspectives
| Author | Stacy L. Wu - Seth I. Appel |
| Position | Stacy L. Wu is an intellectual property attorney at Law Office of Stacy L. Wu, P.C., based in New York City. She focuses on brand management and protection in the United States and internationally in the areas of trademark, copyright, media, and entertainment. She can be reached at swu@stacywulaw.com. Seth I. Appel is a partner at Pattishall, ... |
| Pages | 24-64 |
©2019. Published in Landslide®, Vol. 11, No. 6, July/August 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in
any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
The
By Stacy L. Wu and
Seth I. Appel
Disparaging
F ederal trademark law has prohibited regis-
tration of disparaging and scandalous marks
for generations. While Congress’s original
intentions are uncertain, in recent years the dispar-
agement clause has generally prevented registration
of marks that are offensive to races, religions, or
ethnicities; and the scandalous clause has gener-
ally prevented registration of vulgar words and
images. This changed with the U.S. Supreme
Court’s 2017 decision in Matal v. Tam, striking
down the disparagement clause as an unconsti-
tutional restriction on free speech. The Federal
Circuit followed suit in In re Brunetti, holding
that the scandalous clause also is unconstitutional.
Accordingly, the oodgates have opened for regis-
tration of disparaging marks, and scandalous marks
may not be far behind if the Supreme Court afrms
the Federal Circuit decision this year.
Evolving
Landscape
of
and Scandalous
Trademarks
Historical and Public
Relations Perspectives
Images: GettyImages
©2019. Published in Landslide®, Vol. 11, No. 6, July/August 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in
any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
In determining whether a proposed mark is immoral or
scandalous, the USPTO has considered the mark as applied
to the goods/services described in the application, from the
standpoint of a “substantial composite of the general pub-
lic (although not necessarily a majority)” and “in the context
of contemporary attitudes, keeping in mind changes in social
mores and sensitivities.”10 Similarly, in determining whether a
mark is disparaging, the USPTO considered the “likely mean-
ing of the matter in question,” and if that meaning refers to
identiable persons, institutions, beliefs, or national symbols,
whether it may be disparaging to “a substantial composite of
the referenced group.”11 Again, this determination was made
“in the context of contemporary attitudes.”12 Under USPTO
practice, the fact that an applicant was a member of the ref-
erenced group or had “good intentions” did not prevent a
nding of disparagement.13
Following are examples of marks that have been refused
registration under section 2(a) on the ground that they are
immoral or scandalous:
• JACK-OFF and 1-800-JACK-OFF for “entertain-
ment in the nature of adult-oriented conversations by
telephone”;14
• BULLSHIT for “accessories of a personal nature, and
wearing apparel, namely: attaché cases, handbags,
purses, belts, and wallets”;15
• ASSHOLE REPELLENT for “amusement device,
namely, a can with a spray top used as a gag gift and
sold as a unit”;16 and
• NO $#!+ for “entertainment services, namely, provid-
ing a web site featuring photographic, video and prose
presentations featuring news, humor, and memes.”17
Following are examples of marks that have been refused
registration under section 2(a) on the ground that they are
disparaging:
• KHORAN for wines;18
• HEEB for clothing and entertainment services;19
• SQUAW and SQUAW ONE for clothing and retail
store services;20 and
• REDSKINS and similar marks for entertainment ser-
vices related to football.21
Constitutionality
For many years, In re McGinley22 was the leading case on
the constitutionality of section 2(a). The USPTO exam-
iner refused registration of a proposed mark comprising a
photograph of a nude man and woman embracing, for news-
letters as well as “social club services.” Upon reviewing the
Stacy L. Wu is an intellectual property attorney at Law Ofce of
Stacy L. Wu, P.C., based in New York City. She focuses on brand
management and protection in the United States and internationally
in the areas of trademark, copyright, media, and entertainment. She
can be reached at swu@stacywulaw.com. Seth I. Appel is a partner
at Pattishall, McAuliffe, Newbur y, Hilliard & Geraldson LLP in Chicago,
Illinois. He works with clients across a broad range of industries to
protect and enforce their intellectual property, and has extensive
experience litigating in federal courts and before the Trademark Trial
and Appeal Board. He can be reached at sia@pattishall.com.
Despite Tam and Brunetti, companies still must face the busi-
ness consequences of using disparaging and scandalous marks.
Although the legal landscape has shifted, many consumers may
avoid brand names that they nd offensive or vulgar, whether in
the case of a football team or a household product. This article
discusses the history and law surrounding the bar on registration
of disparaging and scandalous marks, as well as public relations
aspects, including how brand owners have dealt with the chal-
lenges of owning arguably disparaging and scandalous marks.
Background of Section 2(a)
Like the current statute, the Trademark Act of 1905 prohibited
registration of marks comprising “immoral or scandalous mat-
ter.” The bar against registration of disparaging marks came
later, with the enactment of the Lanham Act in 1946. Section
2(a) states that the U.S. Patent and Trademark Ofce (USPTO)
may refuse registration of a mark that “[c]onsists of or com-
prises immoral . . . or scandalous matter; or matter which may
disparage . . . persons, living or dead, institutions, beliefs, or
national symbols, or bring them into contempt, or disrepute.”1
The congressional record suggests that the disparagement
clause originally was aimed at preventing registration of marks
that demean specic individuals or organizations, rather than
racial, religious, or ethnic groups. At the 1938 hearings before
the House Committee, for example, the commissioner of pat-
ents cited trademark applications for KNUTE ROCKNE
and NOTRE DAME for alcoholic beverages, as well as the
Duchess of Windsor’s name for brassieres and underwear,
as examples of marks that “shock my sense of propriety”;
accordingly, he favored a law “to prevent such outrages of the
sensibilities of the American people.”2 Edward Rogers, the pri-
mary drafter of the bill that became the Lanham Act, agreed
that the new provision would bar registration of marks that
were offensive to individuals (such as “Abraham Lincoln gin”)
as well as organizations such as the New York Athletic Club.3
Meanwhile, there is a “paucity of legislative history” related to
the bar on registration of immoral and scandalous marks.4
The congressional record also shows that, even prior to
passage of the Lanham Act, there was concern over the dif-
culty in applying a bar on registration of disparaging marks.
For example, Leslie Frazier, assistant commissioner of pat-
ents, remarked:
I am afraid that the use of that word [“disparage”] . . . is going
to cause a great deal of difculty in the Patent Ofce, because
. . . that is a very comprehensive word, and it is always going
to be just a matter of the personal opinion of the individual
parties as to whether they think it is disparaging.5
Despite the MADONNA case6 and other early examples,
the USPTO Trademark Trial and Appeal Board (TTAB) has
claried that “the proper ground for refusing marks which
would offend the sensibilities of an ethnic or religious group
is that the matter is disparaging.”7 By contrast, the bar on
immoral and scandalous marks generally has been applied
to vulgarity.8 The TTAB has recognized that the terms
“immoral” and “scandalous,” as used in section 2(a), are
“basically synonymous.”9
©2019. Published in Landslide®, Vol. 11, No. 6, July/August 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in
any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
applicant’s specimen, the examiner determined that the news-
letter involved sexual topics and the services included parties
for “swinging.” The mark was held to be immoral/scandalous
and refused registration.
The U.S. Court of Customs and Patent Appeals (CCPA),
afrming, held that the bar on immoral and scandalous marks
was constitutional because it does not affect the applicant’s
right to use the mark: “No conduct is proscribed, and no tangi-
ble form of expression is suppressed. Consequently, appellant’s
First Amendment rights would not be abridged by the refusal
to register his mark.”23 The court remarked: “We do not see
[section 2(a)] as an attempt to legislate morality, but, rather,
a judgment by the Congress that such marks not occupy the
time, services, and use of funds of the federal government.”24
The McGinley court rejected the applicant’s argument that
section 2(a) was void for vagueness, nding that it was suf-
ciently precise to satisfy due process requirements. It compared
section 2(a) to section 2(d), noting that decisions involving like-
lihood of confusion also “are often subjective.”25
Following McGinley, courts and the
TTAB repeatedly rejected constitu-
tionality challenges to both the
scandalous and disparage-
ment clauses.26 In 2017,
however, the Supreme
Court held in Matal v.
Tam 27 that the bar on
registration of dis-
paraging marks is
unconstitutional view-
point discrimination,
in contravention of the
First Amendment.
Ta m
Simon Tam applied to
register THE SLANTS
for “entertainment in
the nature of live per-
formances by a musical
band” and was refused
under the disparagement clause. Tam, an Asian
American, is the front man of the band by that name, which
it chose to “reclaim” and “take ownership” of Asian stereo-
types. The Federal Circuit vacated the refusal, holding that
the bar against registration of disparaging marks constitutes
viewpoint-based discrimination.28 It observed that in the 30
years since McGinley, that decision had been “widely criti-
cized,” and First Amendment jurisprudence has evolved.29
The U.S. Supreme Court afrmed the Federal Circuit
in June 2017, striking down the disparagement clause as
unconstitutional.30 Justice Alito wrote the chief opinion of
the Court, joined in various sections by different justices.
The Court recognized that “Slants” is a derogatory name
for persons of Asian American descent; yet Congress may
not prohibit its registration, which “offends a bedrock First
Amendment principle: Speech may not be banned on the
ground that it expresses ideas that offend.”31
Like the Federal Circuit, the Supreme Court found that
the disparagement clause impermissibly discriminates on the
basis of the trademark owner’s viewpoint.
To be sure, the clause evenhandedly prohibits disparage-
ment of all groups. It applies equally to marks that damn
Democrats and Republicans, capitalists and socialists, and
those arrayed on both sides of every possible issue. It denies
registration to any mark that is offensive to a substantial
percentage of the members of any group. But in the sense rel-
evant here, that is viewpoint discrimination: Giving offense is
a viewpoint.32
While trademark rights are created through use, the Court
observed, registration confers important rights and benets
that cannot be withheld based on the owner’s views.
The Court (including all of the participating justices)
rejected the argument that trademark registration is govern-
ment speech and therefore outside the First Amendment.
While the USPTO, an arm of the federal govern-
ment, handles registration of trademarks,
the government “does not dream up
these marks,” nor does it inquire
whether any viewpoint con-
veyed by a mark is consistent
with government policy.33
It distinguished this situa-
tion from other instances
of government speech,
such as a federal statute
creating a program of
paid advertising to pro-
mote the beef industry34
and the Texas specialty
license plate program.35
Justice Alito and three
other justices also rejected
the argument that trade-
mark registration is a
form of government sub-
sidy outside of the First Amendment.
The justices were unmoved by the government’s
position that trademark registration requires use of gov-
ernment resources. “[J]ust about every government service
requires the expenditure of government funds,” from police
and re protection to use of public parks and highways.36
The parties disagreed over whether trademark registration
is commercial speech and therefore subject to a lower level of
First Amendment scrutiny. The Court found that it does not
matter: the bar on registration of disparaging marks cannot
withstand even intermediate scrutiny because it is not nar-
rowly drawn to serve a substantial government interest.
In June 2017, the USPTO issued “Examination Guide
1-17” recognizing that under Tam , the disparagement clause
violates the First Amendment. Therefore, that a mark may
“disparage . . . or bring . . . into contempt, or disrepute”
is no longer a valid ground on which to refuse or cancel a
registration.37
The U.S. Supreme Court struck
down the disparagement clause
as unconstitutional viewpoint
discrimination.
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