This document provides background on trademark law and examines inconsistencies in determining whether a trademark contains immoral, disparaging, or scandalous matter under Section 1052(a) of the Lanham Act. It discusses how cultural groups have sought to reclaim offensive terms to empower themselves, but trademark registrations of such terms have been denied or allowed inconsistently. The document analyzes current legal standards for making these determinations and how they can negatively impact underrepresented groups and intersect with First Amendment rights.

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Introduction to Intellectual Property Note:
An Examination of the Best Practices For Determining Immoral, Disparaging, or
Scandalous Matter Under §1052(a) of the Lanham Act and Whether These Practices
Negatively Impact Under-represented Groups Seeking Empowerment.
By Michelle Vescio Evenson
March 20, 2013
Edited April 26, 2015
Trademarks have been around since the dawn of commercialism, yet their protection was
not one the framers of the Constitution intuitively sought to include. The problem with trademark
could be, that in the earliest form, all butchers, bakers, and candlestick makers had essentially the
same mark, making infringement a natural byproduct.
It follows, that in America the first trademark laws developed in the 1800’s were spurred
by manufacturers’ desire to protect against infringement and attempt to distinguish their mark
from the rest of those within their trade.1
With patent and copyright protections included in the
Constitution, it is natural trademark laws historically tried to echo the protections found there for
other intellectual property; however, because trademark is not one of the protections
Constitutionally guaranteed, its development and application have been less then consistent.
An area where there is inconsistent application of trademark concerns three specific
words in §1052(a): immoral, scandalous, or disparaging.2
The inconsistent interpretation of this
section, in conjunction with trademark registration, has a negative impact on cultural groups who
attempt to empower themselves by reclaiming, for their use, the words, phrases, and images once
used to denigrate them. This note attempts to identify the current best practices for determining
1
See Michael Pulos, Comment, A Semiotic Solution to the Propertization Problem of Trademark,
53 UCLA L. Rev. 833 (2006).
2
See 15 U.S.C. §1052.
3
See Michael Grynberg, Article, Things Are Worse than We Think: Trademark Defenses in a
"Formalist" Age, 24 Berkeley Tech. L.J. 897 (2009).
4
Id.
5
15 USCS § 1052 §§2 (a).
6
Protection of Commercial Speech Under First Amendment, Supreme Court Cases, 164 A.L.R.
Fed. 1.
7
Id.
8
2
See 15 U.S.C. §1052.

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whether a trademark is immoral, disparaging, or scandalous and whether the application of these
standards may interfere with a person’s First Amendment Rights.
BACKGROUND
All the way back to ancient times, tradespeople identified their shops by using distinct
marks. Then, there were likely only one of each type of tradesperson per village, and the marks
were mostly a utilitarian function to help consumers find the shop they were looking for quickly.
With the expansion of the human race came the expansion of the competitive commercial
market. Where there used to be only one cobbler with her shoe hanging above her door, now
there might be three. In an attempt to distinguish herself from the others, the cobbler created a
unique mark in an attempt to convey their quality, personality, value, and efficiency. Soon
distinguishable trademarks told consumers much more than just what product they could expect
from a shop.3
Thus, trademarks encompassed not only the product a consumer could expect to get in,
but also the quality, value, and efficiency, or what the world now understands to be a company’s
“good will,” expected from the product and maker as well. It is understandable that one cobbler
would create a trademark that would set her apart from the rest of the cobblers in town. She
might incorporate her name or a crest, anything that would suggest to the buyer she was the
individual who made the shoe. Once the cobbler established her mark, consumers in town would
grow to know that mark could be trusted to provide a certain level of quality shoes that were
provided in an efficient manner for a price the consumer would be satisfied with.4
However, with the success of one cobbler comes competition from others. Another
cobbler down the street, hoping to increase his business flow designs a mark of his own.
3
See Michael Grynberg, Article, Things Are Worse than We Think: Trademark Defenses in a
"Formalist" Age, 24 Berkeley Tech. L.J. 897 (2009).
4
Id.

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Unfortunately, he may also think cashing in on the first cobbler’s good name will help him bring
in more customers. He might look at the first cobbler’s mark for inspiration, or he might copy it
outright. The effect: drawing consumers in to his shop by perpetuating a misunderstanding in
consumers that they would be able to buy the shoe of the first cobbler. Consumers are wise, thus
they soon found out the two cobblers were not one in the same. This type of infringement might
harm the good name of the first cobbler as well as put the second cobblers motivation and
character in question, leaving no one in a good place.
Enter common law trademark standards. Under common law, the first cobbler might only
have to show the second cobbler was “passing off” her shoes as his own by using her trademark.
While modern trademark law has come a long way from its original intent to protect consumers
from being duped by phonies, it might not all be for the best protection of the trademark holder
or the consumers. Today, the goal of the Lanham Act encompasses the original intent of the
common law, which was consumer protection; however it ads layers that suggests an imposition
on First Amendment Rights, as well as an imposition on the rights of underserved cultural groups
who wish to reclaim words, phrase, and images for their own empowerment.
The Lanham Act essentially states that a trademark for goods that are distinguishable
from all other goods of that kind will be registered unless it is determined to be comprised of or
contain immoral, deceptive, or scandalous matter, or disparages people, institutions, and the like
by bringing the reputations of these people or institutions into a negative light.5
This note
examines the intersection between refusing a mark under § 1052(a) for a determination of
immorality or being scandalous and the conflict with a mark holder’s First Amendment Rights.
5
15 USCS § 1052 §§2 (a).

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The First Amendment dictates that Congress “shall make no law . . . abridging the
freedom of speech.”6
Additionally, the First Amendment protects commercial speech from
unwarranted governmental regulation.7
Because commercial expression serves both the interest
of the speaker, as well as consumers, it achieves a societal goal to fully inform consumers.8
The
Supreme Court has consistently invalidated First Amendment restrictions against commercial
speech that deprive consumers of all accurate information about products and services legally
offered for sale. 9
Thus, the question becomes what standard should be used to determine what is immoral,
scandalous, or disparaging? Who decides which standards are used and for how long? With the
passage of time, attitudes and sensibilities change. What is considered immoral, scandalous, or
disparaging one day may not be considered so fifteen years later. Even within the past thirty
years the use of words and images considered immoral or scandalous have become less ridged.
For example, until 1972 the National Association of Broadcaster placed a ban on the advertising
of women’s menstrual products on television.10
It was not until advertisers pushed the
boundaries, placed feminine hygiene products advertisements on stations that did not ascribe to
the association’s code, and went unchallenged that the association lifted the ban.11
Today, not
only are these ads prevalent, they have gone from merely suggesting the product’s general use to
using visual representations of the menstrual flow with simulated drops of blood.
6
Protection of Commercial Speech Under First Amendment, Supreme Court Cases, 164 A.L.R.
Fed. 1.
7
Id.
8
Id.
9
Id.
10
Janice DeLaney, Mary Jane Luton, and Emily Toth, The Curse: A Cultural History of
Menstruation. First University of Illini Press, 134 (1988).
11
Id.

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Moreover, within the past fifty years, underserved cultural groups have had success in the
realms of obtaining equal rights and societal acceptance. Now, members of underserved groups
want to empower themselves by reclaiming words, phrases, and images once used to subjugate
the minority group they are a part of. Words such as Queer and Dyke are just two examples of
words included in requests for trademark registration. Sometimes the trademark is successful and
sometimes it is not. By what standard does the law determine which words, phrases, and images
once used to denigrate a group decide what can now be used to lift this same group up in its use
as part of a trademark? Additionally, at what point does the First Amendment intersect with the
determination of what can or cannot be trademarked?
It is helpful to keep in mind the original goal of trademark law while delving into the
realm of immoral, disparaging, and scandalous matter: to allow a monopoly right on a specific
mark with the intent of keeping consumers from being confused about products they might be
purchasing.12
This goal does not seem to mesh with the Lanham Act as written and applied.
How does the determination of whether a mark is comprised of immoral, disparaging, or
scandalous matter and the consequent banning of that mark because an examining attorney has
determined it is comprised of such matter further the goal of keeping consumers from being
confused?
If the United States Patent and Trademark Office (USPTO) is keeping the goal of The
Lanham Act in mind, it follows that it should consider allowing marks comprised of immoral,
disparaging, or scandalous matter. After all, immoral, disparaging, or scandalous trademarks are
currently registered under this standard, and this allowance can help consumers who want to
12
Christine Haight Farley, Symposium, Why We Are Confused about the Trademark Dilution
Law, 16 Fordham Intell. Prop. Media & Ent. L.J. 1175 (2006).

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understand the product they are buying to fully appreciate its nature.13
For example, because the
trademark Pink Taco was registered with the USPTO and is allowed for use on a chain of
restaurants, and there is an understanding of the meaning of pink taco to be a woman’s vagina, it
follows that a woman who knows this information is able to avoid entering an establishment she
finds offensive or unappealing. But helping people make fully informed decisions about the
product they are consuming is not the ultimate goal of the USPTO in allowing marks. The
standard is whether or not the mark is immoral, disparaging, or scandalous, and under that
standard using an urban euphemism for vagina as a trademark seems to fail this test.
CURRENT LAW
The standards for determining what matter is immoral, disparaging, or scandalous are
similar to the inquiry into whether a mark is likely to create confusion under § 1052(d).14
The
burden of proof is on the USPT to show the mark is "shocking to the sense of truth, decency, or
propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral
feelings; . . . [or] calling out [for] condemnation."15
The mark must be considered in the context
of the marketplace as applied to only the goods described in the application for registration.16
Where there is only one pertinent meaning for a word, the standard dictionary meaning
alone is sufficient evidence to conclude the word is immoral, disparaging, or scandalous.17
In all
other cases, whether a mark, including innuendo, comprises scandalous matter is to be
13
Jasmine Abdel-Khalik, Article, To Live In In-"Fame"-Y: Reconceiving Scandalous Marks as
Analogous to Famous Marks, 25 Cardozo Arts & Ent LJ 173, 175 (2007). (Pink Taco trademark
registered in 2000 for a chain of restaurants. The term is a vulgar, slang phrase for female genitalia).
14
In re Mavety Media Group, 33 F.3d 1367, 1371, (1994) (citing, Frederick Gash, Inc. v. Mayo
Clinic, 461 F.2d 1395 (C.C.P.A. 1972) (confusion over Mayo clinic and diet mayonnaise).
15
In re Riverbank Canning Co., 95 F.2d 327 (C.C.P.A. 1938) (use of the name Madonna for
wine).
16
In re McGinley, 660 F.2d 481 (C.C.P.A. 1981) (use of nude photo of man and woman
embracing that exposed male genitalia for a “Social Club” newsletter).
17
In re Mavety Media Group, 33 F.3d 1367 at 1371.

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ascertained (1) from "the standpoint of not necessarily a majority, but a substantial composite of
the general public,"18
and (2) "in the context of contemporary attitudes.”19
Individual examiners
must use more than personal feelings and dictionary definitions alone to measure what is or is
not scandalous; an awareness and appreciation of changing social mores is also necessary.20
Additionally, surveys and marketing strategies based on shock value can also be used to
determine the scandalous nature of matter.21
Finally, because a trademark is denied registration
does not suggest the applicant does not have a right to use it. An applicant can still freely use a
trademark without a federal registration; therefore, there is no form of suppressed expression and
no violation of the First Amendment.22
The idea that a trademark might be denied registration if found immoral, disparaging, or
scandalous might seem reasonable in theory, but as indicated by the Pink Taco trademark, a
conforming standard of application does not exist. Whether a mark contains or is comprised of
immoral, disparaging, or scandalous matter is determined by whether a substantial number of
members of the general public find it to be immoral, disparaging, or scandalous; however
upholding this standard is not done in a uniform way.23
Using a standard dictionary is one of several methods a term or word can be defined, but
what if the term or word is so new to the popular vernacular that it has yet to be included in an
urban dictionary, let alone a standard one? Trademark law suggests denying registration of a
18
In re McGinley, 660 F.2d 481.
19
In re Old Glory Condom Corp., 26 U.S.P.Q.2D ( BNA) 1216 , 26 U.S.P.Q.2D (BNA) 1216
(Trademark Trial & App. Bd. Mar. 3, 1993) (red, white, and blue condoms meant to represent the
American flag.)
20
In re Mavety Media Group, 33 F.3d 1367 at 1371.
21
Regan Smith, Note, Trademark Law and Free Speech: Protection for Scandalous and
Disparaging Marks, 42 Harv. C.R.-C.L. L. Rev. 451 at 461 (2007).
22
Id. at 1374.
23
Jasmine Abdel-Khalik, Article: To Live In In-"Fame"-Y: Reconceiving Scandalous Marks as
Analogous to Famous Marks, 25 Cardozo Arts & Ent LJ 173, 175 (2007). (Citing Lesley Wright, Council
Becomes Equal Opportunity Offender, Ariz. Republic, May 1, 2006, at 2).

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mark does not violate First Amendment rights because the applicant is still allowed to use the
mark; however the mark cannot be registered and allowed the full protection of the monopoly
rights of other trademark holders.
But what happens when the societal mores shift and the use of an afore determined
immoral, disparaging, or scandalous mark, which has been used even though it is not a registered
and protected mark, becomes widely accepted and others try to register it for their use? What
happens when a group of people who have been historically oppressed gain acceptance and
equality in their communities? Can they take back those words, phrases, and images once used to
oppress and denigrate them?
INCONSISTENT APPLICATION
By looking at the history of denied as well as registered trademarks with the USPTO, the
answer seems to depends on where, when, and which group wants to reclaim these words for
trademark use. Take Dykes on Bikes, a motorcycling contingent of lesbians using the same name
and operating since 1976.24
The group applied for trademark registration to protect their name in
2003 when an unaffiliated, for profit organization tried to register it.25
It took the USPTO seven
months to determine that the word the women’s organization had been using to describe
themselves for more than twenty-five years was disparaging to lesbians, so they denied the
registration.26
But the women were referring to themselves in a positive, empowering manner with a
reclaimed slur once used to denigrate lesbians. One of the members has even been quoted as
saying that if she must be called some other word than person, human, or woman, she chose
24
Jessica M Kiser, Article: How Dykes on Bikes Got It Right: Procedural Inequities Inherent in
the Trademark Office’s Review of Disparaging Trademarks, 46 U.S.F. L. Rev. 1 (2011).
25
Id.
26
Id.

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Dyke.27
Her rationale is that the word is strong and can be reclaimed by lesbians to make
themselves feel strong and proud about what they have accomplished.28
So how does the USPTO justify registering a term such as Pink Taco and denying one
such as Dykes on Bikes when the registrants of Dykes on Bikes are the group who would be
considered to be disparaged by the term, and the registrant of Pink Taco is a man who owns and
operates a restaurant alluding to a woman’s genitalia? In the case of Pink Taco, it seems that the
USPTO never even questioned the meaning of the phrase or whether they should register the
mark, it was registered without issue.29
On the other hand, the lesbians who had reclaimed use of the word Dyke to empower
themselves had to provide evidence from academics, linguistic experts, video tapes of
themselves at rallies highlighting the positive response they received, as well as a list of other
slurs that have also been reclaimed for use by a group they had formerly been used to
disparage.30
Even after the USPTO approved the registration, the trademark did not become
official until after 2007 because of a third-party challenge by a man who argued the word Dyke
denigrated men and harmed him.31 32
Dykes on Bikes and Pink Taco are both federally registered trademarks. The issue is that
one applicant filed its paperwork and received a registration for an arguably disparaging and
scandalous mark while the other went through a rigorous process to prove the use of words in its
trademark were not disparaging, immoral, or scandalous. Rather that applicant had to prove the
27
Jessica M Kiser, Article.
28
Id.
29
Jasmine Abdel-Khalik, Article at 175 (Citing Lesley Wright, Council Becomes Equal
Opportunity Offender, Ariz. Republic, May 1, 2006, at 2).
30
Jessica M Kiser, Article.
31
Bob Egelko, 'Dykes on Bikes' trademark OKd - challenger rebuffed by high court, Tuesday,
January 8, 2008 <http://www.sfgate.com/bayarea/article/Dykes-on-Bikes-trademark-OKd-challenger-
3233345.php#ixzz2P9wQnpox>.
32
McDermott v. San Francisco Women's Motorcycle Contingent, 240 Fed. Appx. 865 (2007).

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words in its mark were empowering to the group they had once disparaged. If any applicant is
challenged to prove its mark is not immoral, disparaging, or scandalous, then maybe all should
have to go to these lengths; because the system is not working the way it is supposed to.
The Washington Redskins is another example of a mark registered in the 1960’s where
groups have attempted, unsuccessfully until 2014, to have the registration voided. Here, an NFL
team formed in 1933 and named the Redskins, in the team’s commentary, as an attempt to honor
its first head coach who was Native American, sometime in 1937 became the Washington
Redskins.33
In the early 1960’s the team filed for their first federal trademark and have filed
others including variations for their cheerleaders.34
It was not until the late 1990’s that a group of
Native Americans challenged the team’s mark as disparaging.35
The Native American
challengers provided evidence from a linguistic expert indicating the nature of the word
Redskin36
and a survey that found that more than 46% of the general population and more than
36% of Native Americans were personally offended by the word Redskin.37
Still, the Washington Redskins were allowed to keep its trademark under the defense of
laches. At the same time, high schools and colleges around the country began changing Native
American nicknames in light of the pressure, while the NFL and USPTO allowed the Redskins to
keep its mark. Even the National Collegiate Athletic Association (NCAA) went so far as to
sanction and ban schools from post conference play if they did not change mascots from what are
considered to be disparaging Native American figures to something else. Alas, the NCAA seems
to have no rhyme or reason in its determination of what is allowable and what is not. For
example, in 2012, the NCAA told the University of North Dakota if it did not abandon its
33
Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 104 (D.D.C. 2003).
34
Id. at 107.
35
Id.
36
Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96 at 109.
37
Id. at 110

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Fighting Sioux nickname and mascot it would suffer sanctions; however there are at least four
major, money making universities who retain the use of their Native American nicknames and
mascots, including the Florida Seminoles.38
Thus, the cycle continues, and the questions remain. Based on the fact that the world at
large has an inconsistent view of what is and is not acceptable, what standards will be
consistently applied to determine what constitutes disparaging, immoral, or scandalous
trademarks and which underserved groups will be lifted up or continued to be disparaged by the
application of these standards seems to be something that will be in a constant state of flux. The
USPTO should require a more rigorous initial process in the determination under § 1052(d) of
the Lanham Act, requiring all applicants to show their marks are not immoral, disparaging, or
scandalous rather than allowing some marks and disallowing others inconsistently. Finally, the
attorneys at the USPTO may also need to rely more heavily on members of the supposed
“disparaged community” to help make that determination.
38
Author’s general knowledge of the University of North Dakota’s Native American nickname
controversy gained as a resident of Minnesota and publications like St. Cloud State University’s Insights
Magazine http://www.stcloudstate.edu/affirmativeaction/resources/insights/pdf/Insights-Vol3-Issue2.pdf
and The Minneapolis Star Tribune http://www.startribune.com/opinion/editorials/158967425.html.