The Evolving Landscape of Disparaging and Scandalous Trademarks: Historical and Public Relations Perspectives

Despite Tam and Brunetti, companies still must face the business consequences of using disparaging and scandalous marks. Although the legal landscape has shifted, many consumers may avoid brand names that they find 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 challenges 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 matter.” 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 Office (USPTO) may refuse registration of a mark that “[c]onsists of or comprises 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 specific individuals or organizations, rather than racial, religious, or ethnic groups. At the 1938 hearings before the House Committee, for example, the commissioner of patents 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 primary 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 difficulty in applying a bar on registration of disparaging marks. For example, Leslie Frazier, assistant commissioner of patents, remarked:

I am afraid that the use of that word [“disparage”] . . . is going to cause a great deal of difficulty in the Patent Office, 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 clarified 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

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 public (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 meaning of the matter in question,” and if that meaning refers to identifiable 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 referenced group or had “good intentions” did not prevent a finding 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 “entertainment 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, providing 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 services related to football.²¹

Constitutionality

For many years, In re McGinley²² was the leading case on the constitutionality of section 2(a). The USPTO examiner refused registration of a proposed mark comprising a photograph of a nude man and woman embracing, for newsletters as well as “social club services.” Upon reviewing the applicant’s specimen, the examiner determined that the newsletter 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), affirming, 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 tangible 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, finding that it was sufficiently precise to satisfy due process requirements. It compared section 2(a) to section 2(d), noting that decisions involving likelihood of confusion also “are often subjective.”²⁵

Following McGinley, courts and the TTAB repeatedly rejected constitutionality challenges to both the scandalous and disparagement clauses.²⁶ In 2017, however, the Supreme Court held in Matal v. Tam²⁷ that the bar on registration of disparaging marks is unconstitutional viewpoint discrimination, in contravention of the First Amendment.

Tam

Simon Tam applied to register THE SLANTS for “entertainment in the nature of live performances 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 stereotypes. 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 criticized,” and First Amendment jurisprudence has evolved.²⁹

The U.S. Supreme Court affirmed 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 disparagement 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 relevant 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 benefits 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 government speech and therefore outside the First Amendment. While the USPTO, an arm of the federal government, handles registration of trademarks, the government “does not dream up these marks,” nor does it inquire whether any viewpoint conveyed by a mark is consistent with government policy.³³ It distinguished this situation from other instances of government speech, such as a federal statute creating a program of paid advertising to promote the beef industry³⁴ and the Texas specialty license plate program.³⁵

Justice Alito and three other justices also rejected the argument that trademark registration is a form of government subsidy outside of the First Amendment. The justices were unmoved by the government’s position that trademark registration requires use of government resources. “[J]ust about every government service requires the expenditure of government funds,” from police and fire 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 narrowly 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

Brunetti

In Tam, the Supreme Court did not directly address the constitutionality of the remainder of section 2(a). In particular, it left open the question of whether the government could still bar registration of immoral or scandalous marks. That issue will be before the Court soon, however, in the Brunetti case.

Erik Brunetti sells a line of clothing under the FUCT brand and applied to register that mark for various types of apparel.³⁸ The examining attorney refused registration because FUCT comprised immoral or scandalous matter, and the TTAB affirmed.³⁹ It found that FUCT is the “phonetic twin” of “fucked,” and that regardless of the applicant’s intentions (and claim the mark could be inspired by “Friends U Can’t Trust”), a substantial composite of the general public would perceive the mark as vulgar.⁴⁰

Following the Supreme Court’s decision in Tam, the Federal Circuit instructed the parties to file briefs addressing its impact and whether there is any basis for treating immoral/scandalous marks differently from disparaging marks. The government maintained that the immoral/scandalous bar is different because it is viewpoint neutral; that is, the denial of registration to vulgar terms and images applies to all “commercial actors regardless of viewpoint.”⁴¹

The Federal Circuit issued its decision in December 2017, holding that section 2(a)’s bar on immoral or scandalous marks is an unconstitutional restriction on free speech.⁴² Whether or not it amounts to viewpoint discrimination, the court held that this provision impermissibly discriminates based on content in violation of the First Amendment.

The government argued that the bar on registration of immoral/scandalous marks was permissible as a government subsidy program. The court disagreed. Under the unconstitutional conditions doctrine, “the government may not restrict a recipient’s speech simply because the government provides him a benefit.”⁴³ The court explained that the government subsidy framework does not apply to trademark registration, which does not implicate Congress’s power to spend funds. As the Supreme Court found in Tam, trademark owners themselves pay fees associated with registration, and to the extent government resources are tangentially involved—such as USPTO employee benefits—“just about every government service requires the expenditure of government funds.”⁴⁴

The court also found, like the Supreme Court in Tam, that the limited public forum doctrine was inapplicable. The fact that registered trademarks appear in a government database does not transform trademark registration into a limited public forum.⁴⁵

Because the bar on registration of immoral/scandalous marks is content-based, and not outside the First Amendment, the court applied strict scrutiny, which requires that the restriction further a compelling government interest. However, it echoed Justice Alito’s view in Tam that the government’s purpose—targeting the expressive message of marks—could not even withstand intermediate scrutiny. For example, the government does not have a substantial interest in protecting the public from profanities. Unlike the radio broadcast at issue in FCC v. Pacifica Foundation,⁴⁶ the court explained, a registered trademark “is not foisted upon listeners”; therefore, “[t]he government’s interest in protecting the public from profane and scandalous marks is not akin to the government’s interest in protecting children and other unsuspecting listeners from a barrage of swear words over the radio.”⁴⁷ The bar on registration of immoral/scandalous marks also does not withstand intermediate scrutiny (let alone strict scrutiny) for other reasons, according to the Federal Circuit, including its inconsistent application. It noted that nearly identical marks have been approved by one examining attorney and rejected as scandalous by another, such as FUGLY, which was approved for clothing but refused for alcoholic beverages.⁴⁸

The USPTO filed a petition for certiorari, which was granted in January 2019.⁴⁹ Again, the Supreme Court will consider the constitutionality of section 2(a). Meanwhile, the USPTO has issued “Examination Guide 2-18” stating that it will continue to examine applications under the immoral/scandalous provision of section 2(a) and issue advisory refusals suspending such applications until a final resolution in Brunetti.

The Importance of Public Relations

Public relations (PR) is defined as “the actions of a corporation, store, government, individual, etc., in promoting goodwill between itself and the public, the community, employees, customers, etc.”;⁵⁰ think positive media coverage. PR is not only the provenance of corporations; it can also be a powerful tool for entrepreneurs, celebrities, and other noncorporate entities in shaping brand perception. This section examines PR issues relating to controversial marks, which have an impact outside of the USPTO.

Because they work closely in the area of branding, trademark practitioners are often particularly attuned to PR and other marketing issues. For example, trademark clearance of global brands involves worldwide searching and nonlegal considerations. Search reports may include an evaluation of whether a term means something undesirable in a foreign language, which could have a negative effect on the local market. Another example might be sending an unconventional demand letter,⁵¹ which can double as a marketing tool (and be particularly effective when dealing with infringement by fans).

Strategic Considerations Involving Disparaging and Scandalous Marks

Thanks to Tam, marks previously deemed disparaging by the USPTO have now become registered—even marks that unabashedly target a particular group.

For example, the USPTO issued a disparagement advisory refusal against a 2015 application for STOP ISLAMIZATION OF AMERICA, filed by the American Freedom Defense Initiative (AFDI). This was essentially a refiling of a lapsed 2010 application by AFDI’s principals, which was likewise rejected on disparagement grounds. Only after Tam was AFDI able to obtain a registration.

There has also been a “land grab” by lesser-known entrepreneurs following these recent developments involving section 2(a). For example, there have been a number of new filings including n-word marks as well as designs such as a swastika. Historically, the USPTO had deemed n-word marks as disparaging (among other things) including, for example, a 2005 refusal of two applications by comedian Damon Wayans for N*GGA [asterisk added] (Serial Nos. 76639548, 76623949).

With Tam now having struck down the disparagement provision, the USPTO seems to be relying more heavily on the “immoral or scandalous” provision, which remains so far intact. For instance, the current batch of n-word marks for various goods have received scandalous advisory (but not disparaging) refusals. The examining attorney has explained that the marks are vulgar: “standard publications consider the term vulgar and won’t print it and people cannot say it on TV, like other vulgar terms.”⁵² Such applications are currently suspended pending Brunetti and could potentially become registered if the “immoral or scandalous” provision is also struck down.

While some applicants may be willing to bear the risk of filing offensive or controversial marks, others must consider potential damage to brand reputation. From a social perspective, corporate behavior and messaging is under watch more than ever. Millennials wielding social media influence and power⁵³ are steering brands ever more toward corporate social responsibility (CSR). In addition, historically marginalized groups are gaining political prominence⁵⁴ as well as a growing share of media representation (partly due to the increased buying power of minority consumers).⁵⁵

PR strategies on how to handle potentially scandalous and disparaging marks can depend on several factors, including the identity of the brand owner and its consumer base. Select case studies from the fields of sports and consumer goods follow.

The Washington Redskins

This National Football League (NFL) team has been able to withstand a decades-long and heavily publicized attack on their trademarks.

The “Redskins” football team first adopted the name in the 1930s and subsequently obtained federal trademark registrations for several variations of the REDSKINS mark. The TTAB ordered cancellation of these marks in 2014, holding that they were disparaging to a substantial composite of Native Americans at the time of registration.⁵⁶ The TTAB—and the district court affirming cancellation—cited numerous dictionary entries characterizing “redskins” as an offensive or contemptuous term; literary, scholarly, and media references to “redskins” portraying Native Americans in a negative light; and views expressed by individuals and leaders of Native American groups. The district court relied heavily on a 1993 resolution of the National Congress of American Indians stating: “[T]he term REDSKINS is not and has never been one of honor or respect, but instead it has always been and continues to be a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for Native American[s].”⁵⁷

Ultimately, the REDSKINS registrations were saved by the Supreme Court’s decision in Tam. Moreover, the team possesses strong common law trademark rights due to years of use. The potential loss of its registrations would neither force the team to change its name nor be atomic to the brand; although the trademark battle brought additional negative coverage upon the team.

The fight also spilled into the court of public opinion. The team’s owner, Dan Snyder, backed by many fans, was outspokenly resistant to changing the name. Many people who were not sports fans weighed in on whether the term “Redskins” was disparaging. Following apparent cancellation in 2015, the Washington Post wrote that the team “lost the biggest legal and public relations battle yet in the war over the NFL team’s name.”⁵⁸ However, Tam ultimately restored the trademark registrations. “We said the term ‘Redskins’ is disparaging and the courts agreed with us,” petitioner Amanda Blackhorse told USA TODAY Sports. “It’s just that now the Supreme Court says it’s OK to register a disparaging term.”⁵⁹

The Cleveland Indians and “Chief Wahoo”

In January 2018, Major League Baseball’s (MLB’s) Cleveland Indians announced its voluntary removal of the “Chief Wahoo” logo from on-field uniforms starting the following year. This logo has existed in various forms for over 70 years, and the decision has been watched closely by news outlets such as the New York Times, which called the logo “a grinning, red-faced caricature . . . that some consider racist.”⁶⁰ While no cancellation actions have yet been lodged against the trademark registrations, people have protested—not only at the team’s stadium in Cleveland, Ohio, but also at the Nike headquarters in Beaverton, Oregon.

In 2014, Nike, as a provider of team merchandise, was the subject of a protest by Eradicating Offensive Native Mascotry, an organization cofounded by Navajo/Yankton Dakota Sioux writer Jacqueline Keeler.⁶¹ The hashtag #DeChief circulated on Twitter and social media. News reports indicate about a dozen people attended, but the resulting press attracted national attention and led Nike to issue a statement in response.⁶²

Today, Nike’s online MLB shop no longer offers merchandise featuring Chief Wahoo,⁶³ though such gear remains available at MLBshop.com as of this writing.⁶⁴ By voluntarily announcing its on-field move away from the mascot, the team may limit negative publicity, even though Tam has prevented a possible trademark battle like that faced by the Redskins.

Preemptive Actions

Several other companies have also taken nonlegal actions that help fend off criticism related to potentially disparaging or scandalous marks.

Warner Bros.

In 2015, Warner Bros. announced it would cease selling merchandise featuring the confederate flag.⁶⁵ The flag was prominently featured in its hit 1979–1985 television series The Dukes of Hazzard, including on the protagonists’ trusty car named General Lee. However, many churches, universities, and government bodies had begun recognizing the controversial nature of the flag and removing it from their grounds.⁶⁶ The hashtag #TakeItDown began to trend on social media. Major online retailers including Walmart, eBay, Amazon, and Etsy announced that they would cease to carry any items featuring the flag. Warner Bros. adapted to a changing marketplace and voluntarily stopped selling the offending toy car.

Adidas

Also in 2015, Adidas participated in the White House Tribal Nations Conference and announced an initiative for high schools to change mascot names and identities away from potential harmful Native American imagery (in the form of design resources and financial assistance).⁶⁷ The announcement positioned the company in a way that showcased its commitment to community affairs and CSR.

Uncle Ben’s

The image of an African American domestic servant named “Ben” has long been used in connection with the Uncle Ben’s brand of rice and related food products; but Mars Inc. took steps to modernize this long-standing brand. In 2007, with the help of a leading advertising agency, “Ben” was promoted to chairman of the board, and visitors to the Uncle Ben’s website could take a virtual tour of his office.⁶⁸

Darlie Toothpaste

As the result of a 1985 corporate acquisition, Colgate-Palmolive inherited a brand whose logo featured a character in blackface. DARKIE toothpaste goods originated in 1933 and, following public outcry, its English name was rebranded as DARLIE.⁶⁹ Colgate did not market the brand in the United States and allowed several trademark registrations to lapse, but the brand remains available in Asia.

Outside Counsel

Outside counsel can play an important role in helping clients with potentially disparaging or scandalous marks, particularly where they support the client’s mission.

According to Daniel I. Ackerman of Brownstein Hyatt Farber Schreck LLP, advising a high-profile client on the PUSSY RIOT mark came about because of his firm’s roots in advocacy of civil liberties and freedom of expression. It was important to clarify to his client that the USPTO could not stop her from continuing to use the mark. Ackerman believes it is an “important aspect of free speech for the band to use the name it selected . . . [and we will] fight the fight so free speech continues to be protected across all platforms, including registrability of trademarks.”⁷⁰ Clearly, finding the right advocate who understands not only the legal issues involved but also the nonlegal repercussions is key. The mark remains suspended after receiving a scandalous advisory refusal pending the Brunetti outcome. If the Supreme Court knocks out the scandalous prohibition in its forthcoming decision, then PUSSY RIOT and other similarly suspended marks will be allowed to proceed to registration.

Conclusion

Despite the evolving status of section 2(a), brand owners must deal with the consequences of adopting offensive or vulgar trademarks. Trademark practitioners must be attuned to PR concerns and will benefit from a well-rounded approach to managing brand assets and public perception. For in-house counsel, this could mean prioritizing relationships with marketing and PR colleagues to help meet business objectives. For outside counsel, it is important to understand their clients’ goals and their legal and business interests, which do not always align. A disparaging mark is still disparaging—and a scandalous mark is still scandalous—whether or not the Supreme Court says it can be registered.

Endnotes

1. 15 U.S.C. § 1052(a).

2. Trade-Marks: Hearing on H.R. 9041 Before the Subcomm. on Trade-Marks of the H. Comm. on Patents, 75th Cong. 79 (1938).

3. Trade-Marks: Hearing on H.R. 4744 Before the Subcomm. on Trade-Marks of the H. Comm. on Patents, 76th Cong. 19 (1939) [hereinafter Hearing on H.R. 4744].

4. In re McGinley, 660 F.2d 481, 485 (C.C.P.A. 1981).

5. Hearing on H.R. 4744, supra note 3, at 19.

6. In re Riverbank Canning Co., 95 F.2d 327 (C.C.P.A. 1938) (refusing registration of MADONNA for wine).

7. In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215, 1217 (T.T.A.B. 2010) (affirming refusal to register KHORAN for alcoholic beverages).

8. See, e.g., In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003) (“A showing that a mark is vulgar is sufficient to establish that it ‘consists of or comprises immoral . . . or scandalous matter’ within the meaning of section 1052(a).”).

9. Lebanese Arak, 94 U.S.P.Q.2d at 1217.

10. Boulevard Entm’t, 334 F.3d at 1340 (citation omitted).

11. In re Geller, 751 F.3d 1355, 1358 (Fed. Cir. 2014).

12. In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071, 1074 (T.T.A.B. 2008).

13. Id. at 1077; see USPTO, Trademark Manual of Examining Procedure (TMEP) § 1203.03(b)(i) (Jan. 2015), https://tmep.uspto.gov/RDMS/TMEP/Jan2015#/Jan2015/TMEP-1200d1e3042.html.

14. Boulevard Entm’t, 334 F.3d 1336.

15. In re Tinseltown, Inc., 212 U.S.P.Q. 863 (T.T.A.B. 1981).

16. In re Michalko, 110 U.S.P.Q.2d 1949 (T.T.A.B. 2014).

17. In re Jones, No. 85855449, 2013 WL 6858020, at *1 (T.T.A.B. Dec. 13, 2013) (nonprecedential).

18. In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215 (T.T.A.B. 2010).

19. In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071 (T.T.A.B. 2008).

20. In re Squaw Valley Dev. Co., 80 U.S.P.Q.2d 1264 (T.T.A.B. 2006).

21. Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014). This case, discussed infra, generated considerable headlines in the news and sports media.

22. 660 F.2d 481 (C.C.P.A. 1981).

23. Id. at 484.

24. Id. at 486.

25. Id. at 485.

26. See In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003) (“[T]he refusal to register a mark does not proscribe any conduct or suppress any form of expression because it does not affect the applicant’s right to use the mark in question.”); In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994); Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 455 (E.D. Va. 2015); Boswell v. Mavety Media Grp. Ltd., 52 U.S.P.Q.2d 1600, 1609 (T.T.A.B. 1999).

27. 137 S. Ct. 1744 (2017).

28. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015).

29. Id. at 1333–34.

30. Tam, 137 S. Ct. at 1765.

31. Id. at 1751.

32. Id. at 1763.

33. Id. at 1758 (“If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”).

34. See Johanns v. Livestock Mktg. Ass’n, 544 U.S. 550 (2005).

35. See Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015). In Walker, the Court emphasized three factors: (1) license plates have long been used to convey government messages; (2) license plates “are often closely identified in the public mind” with the State, since they are manufactured and owned by the State, generally designed by the State, and serve as a form of government ID; and (3) Texas maintained “direct control” over the messages conveyed on its specialty plates. Id. at 2248–49.

36. Tam, 137 S. Ct. at 1761.

37. USPTO, Trademark Manual of Examining Procedure (TMEP) § 1203.03(b) (Oct. 2018), https://tmep.uspto.gov/RDMS/TMEP/Oct2018#/current/TMEP-1200d1e3042.html.

38. U.S. Trademark Application Serial No. 85310960 (filed May 3, 2011).

39. In re Brunetti, No. 85310960, 2014 WL 3976439, at *1 (T.T.A.B. Aug. 1, 2014).

40. Id. at *5, *8.

41. Letter Brief of U.S. Dep’t of Justice at 7–8, In re Brunetti, No. 15-1109 (Fed. Cir. July 20, 2017), ECF No. 60.

42. In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017).

43. Id. at 1342.

44. Id. at 1344 (quoting Matal v. Tam, 137 S. Ct. 1744, 1761 (2017)).

45. Id. at 1348.

46. 438 U.S. 726 (1978).

47. Brunetti, 877 F.3d at 1353.

48. Id. at 1353–54. In a concurring opinion, Judge Dyk suggested narrowly construing the immoral/scandalous clause only to bar registration of obscene marks, in order to preserve its constitutionality. The majority, however, responded that “[w]hile the legislature could rewrite the status to adopt such a standard, we cannot.” Id. at 1355.

49. Iancu v. Brunetti, SCOTUSblog, https://www.scotusblog.com/case-files/cases/iancu-v-brunetti/ (last visited June 12, 2019).

50. Public Relations, Dictionary.com, https://www.dictionary.com/browse/public-relations (last visited June 12, 2019).

51. Tim Nudd, Netflix Sent the Best Cease-and-Desist Letter to This Unauthorized Stranger Things Bar, Adweek (Sept. 20, 2017), https://www.adweek.com/creativity/netflix-sent-the-best-cease-and-desist-letter-to-this-unauthorized-stranger-things-bar/; Tim Nudd, TGI Fridays Sent Its Own Exceedingly Friendly Cease-and-Desist Letter to a Chicago Bar, Adweek (Oct. 31, 2017), https://www.adweek.com/creativity/tgi-fridays-sent-its-own-exceedingly-friendly-cease-and-desist-letter-to-a-chicago-bar/.

52. Myriah Habeeb, Suspension Notice for Trademark Application Serial No. 87499736 (Feb. 28, 2018).

53. Derrick Feldmann, Millennials Are Engaging in Political Action Now More Than Ever, Vice Impact (Oct. 11, 2017), https://www.vice.com/en_us/article/gy57km/millennials-are-engaging-in-political-action-now-more-than-ever.

54. Ella Nilsen, The Women, People of Color, and LGBTQ Candidates Who Made History in the 2017 Election, Vox (Nov. 8, 2017), https://www.vox.com/policy-and-politics/2017/11/8/16622884/women-minorities-lgbtq-candidates-made-history.

55. Race Becomes More Central to TV Advertising, NBCNews.com (Mar. 1, 2009), http://www.nbcnews.com/id/29453960/ns/business-us_business/t/race-becomes-more-central-tv-advertising/.

56. Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014). Native Americans had previously sought cancellation of the REDSKINS registrations under section 2(a) and succeeded in the TTAB. Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999). That decision was reversed by the courts, ultimately due to laches. Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009).

57. Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 483 (E.D. Va. 2015) (emphasis omitted).

58. Ian Shapira, Federal Judge Orders Cancellation of Redskins’ Trademark Registrations, Wash. Post (July 8, 2015), https://www.washingtonpost.com/local/judge-upholds-cancellation-of-redskins-trademarks-in-a-legal-and-symbolic-setback-for-team/2015/07/08/5a65424e-1e6e-11e5-aeb9-a411a84c9d55_story.html.

59. Erik Brady, Appeals Court Vacates Decisions That Canceled Redskins Trademark Registrations, USA Today (Jan. 18, 2018), https://www.usatoday.com/story/sports/nfl/2018/01/18/appeals-court-vacates-decisions-canceled-redskins-trademark-registrations/1046758001/.

60. Matt Stevens & David Waldstein, As Cleveland Indians Prepare to Part with Chief Wahoo, Tensions Reignite, N.Y. Times (Apr. 9, 2018), https://www.nytimes.com/2018/04/09/sports/baseball/cleveland-indians-chief-wahoo-protests.html.

61. Cliff Pinckard, Nike Should Cease Sales of Cleveland Indians Chief Wahoo Apparel, Native American Groups Says, Cleveland.com (May 2, 2014), https://www.cleveland.com/tribe/index.ssf/2014/05/nike_should_cease_sales_of_cle.html.

62. Matthew Kish, Nike Responds to Chief Wahoo Protest, Portland Bus. J. (May 2, 2014), https://www.bizjournals.com/portland/blog/threads_and_laces/2014/05/nike-responds-to-chief-wahoo-protest.html.

63. Cleveland Indians Apparel & Gear, Nike, https://store.nike.com/us/en_us/pw/cleveland-indians/8qkZ9i9 (last visited May 15, 2019).

64. Cleveland Indians, MLB Shop.com, https://www.mlbshop.com/cleveland-indians/ (last visited May 15, 2019).

65. Daniel Kreps, Warner Bros. Bans “Dukes of Hazzard” Car with Confederate Flag, Rolling Stone (June 24, 2015), https://www.rollingstone.com/tv/tv-news/warner-bros-bans-dukes-of-hazzard-car-with-confederate-flag-58510/.

66. Modern Display of the Confederate Battle Flag, Wikipedia, https://en.wikipedia.org/wiki/Modern_display_of_the_Confederate_flag (last modified June 12, 2019).

67. Anne M. Peterson, Adidas Offers to Help Eliminate Native American Mascots, Bus. Insider (Nov. 5, 2015), https://www.businessinsider.com/ap-adidas-offers-to-help-eliminate-native-american-mascots-2015-11.

68. Stuart Elliott, Uncle Ben, Board Chairman, N.Y. Times (Mar. 30, 2007), https://www.nytimes.com/2007/03/30/business/media/30adco.html.

69. See Isaac Stone Fish, Back to the Days of Blackface, Newsweek (Nov. 30, 2010), https://www.newsweek.com/back-days-blackface-69715.

70. Interview with Daniel I. Ackerman, Brownstein Hyatt Farber Schreck LLP (Sept. 18, 2018).