It’s not every day you’re presented with the unique opportunity of seeing and hearing the Chief Justice of the United States Supreme Court live in your own backyard, thanks very much Caleb!

Tuesday was that day, Chief Justice John G. Roberts, Jr. was here in Minneapolis for the 2018 Stein Lecture at the University of Minnesota’s Northrup Auditorium, as the Star Tribune reported.

SCOTUSBlog had this to say about the Chief Justice’s remarks. To listen to a recording of the event, to a sell out crowd of 2,700, check out MPR’s coverage, here.

Others reporting on this event don’t appear to care about trademarks as much as we do, so this may be the only place you’ll learn about Justice Roberts’ remarks relating to trademarks.

As you can imagine, knowing the vast body of legal subject matter confronted by the Supreme Court, clearly my ears perked up in hearing Justice Roberts utter the word “trademark” five times!

Moderator Robert Stein, former University of Minnesota Law School Dean, asked Chief Justice Roberts whether any highly technical subject matter might be unsuited for the Court to decide.

My mind went to the creation of the CAFC in 1982, specifically designed to hear all federal district court patent appeals, yet the Supreme Court has repeatedly reversed the CAFC since 2005.

Justice Roberts never mentioned the CAFC, instead he waxed a bit about trademark expertise:

“My answer, I think is, no, because usually no matter how complex and involved the legal issue, the case may seem, it implicates a broader legal question about, you know, the statute may be complicated, but the question is going to be, well, how do you go about reading the statute, what sources do you look at in a particular case. We don’t take technical legal cases because we like technical legal cases. They’re usually because they implicate a broader question. When I was practicing law, this is a speech I gave a lot of times, because I was not an expert in any area of the law. I like to think of myself as somebody who was good arguing in a particular court, in the Supreme Court, and so I’d have to, you know, convince someone who comes in with an important trademark case, who could hire the world’s leading expert in trademark law, or me.  And, I would tell them, look, the Supreme Court does not think your case is a big deal for trademark law. It thinks your case is a big deal for how regulations relate to the statute, how particular provisions in the statute should be read. So, you need somebody who, you know, can look at it in that broader perspective that the justices do, and you know, I would say, half of the time, they would say, well, I actually want somebody who knows something about trademark law, and that was understandable, but, then it would be, and, you know, they would get there in front of the Court, and they’re too expert in trademark law, and the justices just aren’t that interested in a lot of those nuances, and sometimes they would just be speaking over each other.”

My ears also perked up with Justice Roberts’ remarks about the Court’s fewer decisions:

“We have particular criteria for the cases we want to take. Obviously, if any court finds an Act of Congress unconstitutional, we will take it, we think as a matter of comity to the branches across the street, we should be the ones to say that, if any court is . . . .”

Do you see where I’m going with that remark, dear readers? I’m thinking about Erik Brunetti.

As you will recall, presently before the Supreme Court, is whether to hear the Brunetti case, and the issue presented in Brunetti is:

“Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

Given the clarity of Justice Roberts’ statement, “if any court finds an Act of Congress unconstitutional, we will take it,” I’ll be amending my prediction otherwise, since the CAFC did just that, in Brunetti.

There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).

If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued “in the name of the United States of America” — won’t be some uninteresting and ignored “nuance” of trademark law to the justices.

Trademarks consisting of or comprising “scandalous or immoral” matter still won’t be granted federal registration “in the name of the United States of America,” at least for the time being.

Immediately on the heels of the International Trademark Association’s 140th Annual Meeting in Seattle, and our well-received panel discussion concerning Trademarks and Free Speech, the United States Patent and Trademark Office announced it will continue to hold on to and suspend trademark applications containing scandalous or immoral matter, until further notice.

The Trademark Office is waiting to see whether the federal government will appeal the Brunetti decision to the U.S. Supreme Court. What I would give to be a fly on the wall in those discussions.

As you may recall, a three-member panel of the Court of Appeals for the Federal Circuit (CAFC), ruled last December that the “scandalous or immoral” statutory bar to registration violates a trademark applicant’s Free Speech, overturning a part of trademark law in existence since 1905.

Since the federal government’s request that the entire CAFC reconsider the three-member panel decision Brunetti was denied in April, the government now has until July 11 to seek Supreme Court review or ask for more time to decide, stay tuned. Learned John Welch predicts no appeal.

During our INTA panel discussion, I predicted the government will seek review of Brunetti by the U.S. Supreme Court. I also predicted the Supreme Court will pass on the request, stay tuned.

Even if it might be tempting to believe that — in our present culture — anything goes and nothing can rise to the level of scandalousness any longer, so why bother trying to salvage a statutory relic from more than 100 years ago, I’m thinking the federal government won’t throw in the towel yet.

As we’ve written before, the Brunetti decision, didn’t anchor itself to the viewpoint discriminatory requirement from the Supreme Court in Tam, instead focusing on mere content discrimination to justify invalidation of a more than a century old part of federal trademark law.

This much easier test for invalidation puts at risk many other portions of federal trademark law, so I’m thinking the federal government can’t let the mere content discriminatory requirement of Brunetti stand without at least trying for Supreme Court review for further direction and guidance.

It’s also hard to believe the federal government is truly ready to have the USPTO knowingly begin to federally register obscene, profane, and sexually explicit matter as trademarks, “in the name of the United States of America,” for the first time in history. What’s your prediction?

UPDATE: Susan Decker of Bloomberg interviewed and shares quotes yours truly on the subject, here.

— Jessica Gutierrez Alm, Attorney

Simon Tam wasn’t the only one barred by the Lanham Act from reclaiming a historically derogatory term.

Dykes on Bikes is a nonprofit lesbian motorcycle organization.  According to their website, the group’s mission is to “support philanthropic endeavors in the lesbian, gay, bisexual, transgender, and women’s communities, and to reach out to empower a community of diverse women through rides, charity events, Pride events, and education.”  In 2015, Dykes on Bikes tried to register their logo as a service mark for entertainment.  The application was put on hold pending the outcome of Matal v. Tam, as the Supreme Court considered whether Simon Tam could register his band name—The Slants.  In view of the Court’s landmark decision holding the disparagement provision of the Lanham Act unconstitutional viewpoint discrimination, Dykes on Bikes will move forward with its trademark application as well.

It was in 2003 when Dykes on Bikes first sought to register the name of their organization as a service mark for education and entertainment services.  Registration was refused on the basis that the mark was disparaging to lesbians.  The organization appealed to the TTAB, arguing that the word “dyke” had become a positive term and a symbol of pride and empowerment.  Dykes on Bikes won their appeal before the TTAB.  But when the mark was published for opposition, an individual named Michael McDermott filed an opposition claiming the mark was disparaging to men.  Ultimately, McDermott’s opposition was dismissed for lack of standing.  In particular, McDermott failed to show either (1) he possesses a trait or characteristic implicated by the proposed mark; or (2) others share the same belief of harm from the proposed mark.  The TTAB dismissed McDermott’s opposition and the Federal Circuit affirmed.  DIKES ON BIKES was successfully registered in 2007.

Because they had already won the disparagement battle for their first mark, Dykes on Bikes was surprised to face another disparagement refusal for a second mark.  In 2015, the group sought to register their logo as a service mark.  They sought review by the TTAB, and the case was put on hold pending the outcome of Matal v. Tam.  Dykes on Bikes also filed an amicus brief in the Tam case, arguing in favor of Tam’s position.  After the Supreme Court held in Tam that “the disparagement clause violates the Free Speech Clause of the First Amendment,” the DYKES ON BIKES W M C logo was approved for publication.

Dykes on Bikes and The Slants had similar goals.  As Dykes on Bikes described in their amicus brief, both groups “have chosen to reclaim self-referential terms as trademarks for the benefit of the groups those terms refer to.”  They also drew a distinction with respect to a certain NFL team name: “the Washington Redskins have chosen a term that is unrelated to the people who identify as members of the football team and is commonly understood to be a slur which members of the identified group have not reclaimed.  Whatever the constitutionality of the PTO’s treatment of the Redskins mark, the team’s use of that name is immoral and Dykes on Bikes encourages the Washington Redskins to give up their trademarked name as a matter of respect and decency.”

While the Tam decision may have opened the proverbial flood gates of offensive trademark applications, it also allows for these positive trademark uses in reclaiming derogatory terms.

Of course, loyal readers have been eagerly awaiting Part III of the series (see Part I and Part II) focusing on Tam’s intersection of federal trademark registration and the First Amendment.

In terms of the certain and practical implications flowing from the decision, it opens the door to a host of new trademark applications containing religious and racial slurs, including the N-word.

Perhaps this explains, in part, why the Justice Department flipflopped on the issue and now says that the “scandalous and immoral” provision of Section 2(a) actually can survive Matal v. Tam.

If the Federal Circuit allows the “scandalous and immoral” provision to survive Tam and attempts to craft some sort of reasoning as to why it should be treated differently than disparagement, we’ve already pointed to how that may impact pending and suspended refusals of the R-Word.

On the other hand, if the Federal Circuit eliminates “scandalous and immoral” registration refusals relying on the Supreme Court’s Tam decision, as consistency of analysis would seem to require, how many of the newly filed scandalous marks actually will be published in the Official Gazette?

Another interesting question might be whether any of these obviously offensive applications will satisfy the essential predicates to registration, and actually adorn the Principal Register, with official Certificates of Registration issued in the name of the United States of America?

It’s worth asking whether the Supreme Court’s destruction of the even-handed framework that the USPTO devised in applying the disparagement provision of Section 2(a) (conscious of favoring neither side on an issue and determined to ignore an Applicant’s intent), inevitably will lead to selectively enforced analyses above the table driven by emotions residing beneath the table.

One area for concern might be the Trademark Office’s growing interest in refusing registration of matter deemed merely informational; presumed “incapable” of performing a trademark function. I’m left wondering, how tempting might it be to use this rather blunt tool on seriously offensive subject matter after Section 2(a) has been stripped of its previous reach in denying registration?

Having said that, will or should the Trademark Office reassess Exam Guide 2-17, concerning Merely Informational Matter, in light of the Tam Court’s perspective on viewpoint discrimination. Seems like it should to me. So, I’m also left wondering, exactly how might “merely informational matter” not express a viewpoint, making such a refusal presumptively invalid?

Since the federal government is apparently powerless to prevent the registration of disparaging trademarks because doing so constitutes viewpoint discrimination that cannot withstand strict scrutiny, what is the fate of federal dilution law, especially the provisions against tarnishment of famous marks? Wes noted some serious questions, others have too, here, here, and here.

In particular, Justice Alito labeled the disparagement registration ban as a “happy-talk clause,” adding that “[g]iving offense is a viewpoint,” and Justice Kennedy reinforced that viewpoint, saying: “To prohibit all sides from criticizing their opponents makes a law more viewpoint based, not less so.” Given that clarity, does this defecating dog trademark not express a viewpoint too?

The Applicant defended Greyhound’s opposition, in part, by arguing that “reasonable people would not be offended because the mark mocks the craze for shirts bearing prestigious emblems.” Doesn’t that sound a lot like a viewpoint being expressed with the defecating dog trademark?

Yet, in rejecting the Applicant’s arguments, and in granting Greyhound summary judgment and refusing registration of the defecating dog mark, the TTAB concluded, back in 1988:

“We do not find applicant’s arguments to be persuasive. Even assuming that people are not offended by the sight of a dog defecating on the ground, applicant’s mark, used on its goods, is a dog defecating on a shirt. This certainly produces a different effect from the viewing of a dog defecating in its normal environment.”

“Further, applicant admits that some people would find the depiction of feces in the mark offensive and that people ‘expect to find something a little out of the ordinary when they see this type of applique.’ In effect, applicant is admitting that the mark has a shock value, and we view the shock to be the offensiveness of the depiction.” (citation omitted)

Does this not constitute “giving offense” and isn’t it fair to say, it “expresses ideas that offend” — to use Justice Alito’s words? Do shocking images and content not convey a viewpoint?

Justice Kennedy stated the disparagement provision “reflects the Government’s disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination.”

He went on to say:

“Unlike content based discrimination, discrimination based on viewpoint, including a regulation that targets speech for its offensiveness, remains of serious concern in the commercial context.”

If so, and if the “scandalous and immoral” provision of Section 2(a) does not survive Constitutional scrutiny in Brunetti, then how does Greyhound, or any other owner of a famous brand, prevent registration (and use) of trademarks designed to express a negative viewpoint about a famous brand while also serving as a trademark for Applicant’s own goods and/or services?

And, what about the below RED SOX/SEX ROD example? The TTAB ruled that the stylized SEX ROD mark “would be viewed as a sexually vulgar version of the club’s symbol and as making an offensive comment on or about the club.” That sounds like viewpoint discrimination too. So, on what basis can the Boston Red Sox object with the disparagement provision gone, and if dilution by tarnishment is also considered unconstitutional viewpoint discrimination?

Can dilution tarnishment survive the Tam Court’s strict scrutiny against viewpoint discrimination?

Daniel Snyder, NFL owners, FEDEX, and other NFL sponsors, take note, breaking news from courageous Neal M. Brown, Ed.D., Head of School, Green Acres School in Bethesda, Maryland, about twenty miles from FEDEX Field:

“[T]he term ‘Redskin’ is a racial slur. Its use, whether intentional or not, can be deeply insulting and offensive. It is a term that demeans a group of people. Similarly, the team’s logo also can reasonably be viewed as racially demeaning. At best, the image is an ethnic stereotype that promotes cultural misunderstanding; at worst, it is intensely derogatory.”

“As such, having students or staff members on campus wearing clothing with this name and/or this team logo feels profoundly at odds with our community’s mission and values. We pledge in our Diversity Statement to foster both ‘an inclusive and uplifting community’ and ‘a sense of belonging for everyone in the Green Acres community.’ Similarly, our Statement of Inclusion calls upon us to ‘welcome people of any race, national, or ancestral origin,’ among other social identifiers. Further, as our guidelines for ‘appropriate dress’ in the Community Handbook require students to ‘dress in ways that demonstrate respect for others,’ we cannot continue to allow children or staff members—however well intentioned—to wear clothing that disparages a race of people.”

“I ask that you please not send your children to school wearing clothing with either the team name or logo in the year and years to come. I will be speaking with students to share with them my decision and to enlist their understanding and support. Additionally, we invite you to reach out to us with any questions you may have about how to discuss this with your child.”

Again, not so fast, Mr. Snyder, the R-Word is looking awfully scandalous these days, and this issue isn’t going away . . . .

See coverage from USA Today, Washington Post, Washington Times, and Sports Illustrated.

UPDATE from Time: The NFL Needs to Stop Promoting a Racial Slur

— Jessica Gutierrez Alm, Attorney

This week’s Matal v. Tam (formerly Lee v. Tam) Supreme Court ruling serves as a reminder that free speech is a two-way street.  It also suggests the value of a sympathetic litigant, at least in terms of public response.

Many rallied behind Simon Tam and his rock band, The Slants.  The band members, who are all Asian American, sought to reclaim and diffuse a historically derogatory term by naming their band “The Slants.”  The band first tried to register THE SLANTS with the Trademark Office in 2010.  The Office rejected the application under the disparagement clause of the Lanham Act.  15 U.S.C. 1052(a).  The band appealed to the Trademark Trial and Appeal Board, and later to the Federal Circuit, which ultimately led to review by the Supreme Court.

The resulting narrative told the story of a group of young musicians pushed out by a bureaucratic system and an antiquated law dictating morality.  Tam and his band were the good guys.  There was no public outcry calling for the band to change its name.  They were not viewed as insensitive or bigoted, at least in part because Tam and the other band members are Asian American and thus belong to the group presumably disparaged by the term.  For many, it was easy to rally behind the argument that The Slants have a First Amendment right to obtain federal trademark protections for their band name.  The Supreme Court’s decision that “the disparagement clause violates the Free Speech Clause of the First Amendment,” thus removing The Slants’ block to registration, was a well-received public victory.  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *20 (U.S. June 19, 2017).

However, as many have since pointed out, this decision was a win not only for The Slants, but for anyone seeking federal registration of an otherwise disparaging mark.

In 2015, a federal district court affirmed the USPTO’s cancellation of THE REDSKINS registered trademarks.  At the time, the district court’s decision that “the federal trademark registration program is government speech and is therefore exempt from First Amendment scrutiny” was lauded as a moral victory.  Pro-Football, Inc. v. Blackhorse, 112 F.Supp.3d 439, 452 (E.D. Vir. 2015).  The New York Times Editorial Board reported, “Slurs Don’t Deserve Trademark Protection.”  The Supreme Court’s First Amendment decision means the NFL team will now be able to recover their federal registrations for THE REDSKINS.

The Slants and The Redskins each wanted federal trademark protections for racially derogatory terms, but presented entirely different political positions and applicants.

The long-fought battle over cancellation of the Redskins marks began with a group of Native Americans arguing disparagement.  In this narrative, the team’s owners were often depicted as the villains callously profiting from a racial slur.  The Navajo Nation filed an amicus brief in support of the decision to cancel the trademarks.  Media outlets and NFL announcers refused to use the team’s name in their reporting.  While many also saw The Redskins as leading the charge in the fight against political correctness, The Redskins undeniably faced stronger public opposition than The Slants.

The differences in these cases, and in the  trademark applicants themselves, serve as a reminder that free speech for one necessarily means free speech for all.  Perhaps nothing underscores this point better than the New York Times Editorial Board’s recent statement that they have “reconsidered [their] underlying position” with respect to the team’s name following the Tam decision.

While many will surely still advocate for a new team name, if we are to allow The Slants to enjoy the benefits of federal registration, we must allow The Redskins–and others–the same opportunity.

Justice Kennedy said it best: “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.  The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *25 (U.S. June 19, 2017) (Kennedy, J. concurring).

We can be certain of one thing for sure, the Supreme Court’s decision today, striking down the disparagement clause of Section 2(a) of the Lanham Act will be analyzed for some time.

The Court called the provision of the Lanham Act barring the federal registration of trademarks that consist of or comprise matter that may disparage persons, a “happy-talk clause,” concluding it violates the First Amendment.

The debate over the implications of the Tam decision has commenced, so stay tuned.

Those of you who know me well can appreciate, this is a tough pill to swallow, we’ll have to see what good can come from it.

And, the answer to a question I raised back in 2015 apparently will be answered “no,” but not for reasons I had hoped.

Ron, I had envisioned writing a very different post about the Supreme Court’s long-anticipated decision in Tam, you, your team, and Mr. Tam have made history.

By the way, anyone know who coined the phrase Happy-Talk Clause, I must have missed that in the briefing?

HowardMcGeeTeam

It’s not every year that participants in the William E. McGee National Civil Rights Moot Court Competition need to understand the various nuances of federal trademark law.

Yet, with the Lee v. Tam case pending before the U.S. Supreme Court, and Section 2(a) of the Lanham Act hanging in the balance, this was such a year for more than fifty competitors.

The weekend before last, yours truly had the distinct privilege of judging the final oral arguments in the McGee competition at the Mitchell Hamline School of Law in St. Paul, Minnesota. It was ever so humbling to be part of a very distinguished panel of would-be U.S. Supreme Court Justices, hearing the oral arguments and probing the Constitutional issues in the Tam case.

The very distinguished portion of the panel included: The Honorable Peter M. Reyes, Jr. of the Minnesota Court of Appeals, retired Minnesota Supreme Court Justice Esther Tomljanovich, Sharon Sandeen, Director of Mitchell Hamline School of Law’s Intellectual Property Institute, and Robert J. Gilbertson of the Greene Espel law firm.

The winning first place team hailed from Howard University (shown above), located in Washington, D.C., arguing in favor of the government’s position to uphold the Constitutionality of Section2(a). The second place finalist team came from the Illinois Institute of Technology’s Chicago-Kent College of Law, arguing in favor of Simon Tam’s challenge to strike down the disparagement clause of Section 2(a) on First Amendment and Void for Vagueness grounds.

The would-be Supreme Court Justices were not judging the merits of the case, instead we judged the teams based on the quality and organization of their oral arguments.

It was inspiring to witness such strong intellect, confidence, poise, grace, and decorum, from each of the finalists — there is no doubt in my mind, they will all make fine lawyers, and they should all be very proud of their performances and high achievement.

Learning after the event that only three of the four finalists had taken an intellectual property course before, made their mastery of the issues even more impressive, hearty congratulations!

Last week the U.S. Supreme Court agreed to hear Mr. Simon Tam’s arguments and review the Court of Appeals for the Federal Circuit’s majority decision striking as unconstitutional Lanham Act Section 2(a)’s bar against the federal registration of disparaging matter, so it will decide the following issue, once and for all:

“Whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.”

As you may recall, Tiffany previously wrote how Dan Snyder’s Washington D.C. NFL franchise asked to have its district court loss and appeal jump over the 4th Circuit Court of Appeals to go directly to the Supreme Court, if the Court were to decide to hear the Tam case.

As much stock as the team has put in the constitutional challenge to defend its several R-Word registrations, found offensive and disparaging to Native Americans, I suspect Mr. Snyder and his lawyers don’t relish the idea of sitting on the sidelines while Mr. Tam’s counsel argues the constitutional issue to the Court.

Earlier today the Supreme Court denied the team’s request, so Snyder’s team of lawyers will have to sit out for that important oral argument, although I suspect they’ll be one of many to submit a written amicus brief, as a “friend of the court.”

Why doesn’t Dan Snyder instead focus on being another kind of friend and get on the right side of history? And, doesn’t Mr. Snyder’s refusal to ever consider a name change, even after losing the registrations, actually undermine his Free Speech challenge?

As you know, my view is that Section 2(a) of the Lanham Act should be upheld as constitutional:

Stay tuned for more and let’s hope that Georgetown Law School Professor Rebecca Tushnet’s insights on the constitutionality of Section 2(a) carry the day at the Court.

— Jessica Gutierrez Alm, Attorney

TJ Root/Getty Images

 

In appealing the cancellation of six trademarks, the Washington Redskins filed their opening brief in the Fourth Circuit this week.  Cancellation of the team’s REDSKINS trademarks was upheld by a federal district court in July.  The marks were deemed “disparaging” under Section 2(a) of the Lanham Act, which denies trademark protection to marks that are scandalous or disparaging.

The team is now appealing the district court’s decision.  A primary argument presented in the team’s opening appeal brief is the First Amendment argument.  Essentially, the Washington team argues that cancellation of its trademarks under Section 2(a) violates free speech rights, because the marks are a form of expressive speech.  Of course even without a federal trademark registration, a mark may still be used.  The team can still call themselves the Redskins and sell Redskins merchandise, but cancellation of the marks means they will not enjoy the protections and benefits that accompany federal registration.  The team argues that by denying those protections and benefits of the federal trademark registration, the government is infringing on the team’s free speech rights.

The lower court held that Section 2(a) does not violate the First Amendment, in part, because federal registration of a trademark represents a form of government speech, rather than private speech.  That is, the government may freely choose which marks it wishes to include as part of its federal trademark registration program.

In an effort to thwart this argument and show that federal trademark registration is not a form of government speech, the Washington team made the bold choice to include in its brief a long list of—colorful—marks that have been successfully registered.  The list seems primarily compiled from the adult entertainment industry, and includes, among many, many others, TAKE YO PANTIES OFF clothing, SLUTSSEEKER dating services, and MILFSDOPORN.COM pornography.  A footnote in the brief actually states that “word limits” prevented the team from adding even more to their offending list.

While the purported purpose was to address whether trademark registration represents government speech, the sheer length of the list leaves the distinct impression of an underlying argument: Well if these dirty words can be trademarked, why can’t we just trademark our team name?

At first blush, it may seem like a fair argument.  As presented in the brief, the list of clearly offensive marks makes one wonder why these too were not cancelled or denied registration.

One reason may be that potentially scandalous and disparaging marks are viewed in the context of the goods or services and the market with which they will be associated.  Consider that the goods and market of the porn industry are very different than the goods and market of an NFL team.  MILFSDOPORN.COM may not be scandalous or disparaging in the context of providing adult entertainment.

Another reason may be that most of the unsavory marks listed in the team’s brief are unlikely “disparaging,” and would more likely fall into the “scandalous” category of Section 2(a).  Section 2(a) excludes from registration marks that are scandalous and marks that are disparaging.  The test for scandalous marks is different from that for disparaging marks.

Disparagement relates to a particular person or group.  Some marks that have been denied as disparaging are HEEB and SQUAW for clothing.  To determine whether a mark is disparaging, the test looks to whether a substantial composite of the group referenced by the potentially disparaging mark would find the mark disparaging in the context of the particular goods or services.

In contrast, potentially scandalous marks are viewed with respect to the broader public’s opinions.  Marks such as COCAINE for soft drinks have been denied registration as scandalous.  The test for determining whether a mark is scandalous looks to whether a substantial composite of the general public would find the mark scandalous in the context of the particular goods or services.  Each test looks to a group of people to determine whether something is offensive, but the scandalous test looks to a larger and broader group, the general public.

TAKE YO PANTIES OFF, SLUTSSEEKER, MILFSDOPORN.COM, and many others on the team’s list would seem to fall under the more general “scandalous” category, because the terms do not seem to target a particular person or group in the way that a mark like REDSKINS does.  (Surely MILFS are not an identifiable group.)  Given that the scandalous test looks to the broad opinions of general public, rather than of a particular group, it may be an easier task to register a potentially scandalous mark than a potentially disparaging mark.  Just ask The Slants.