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Summer 7-1-2011

Calling Bulls**t on the Lanham Act: The 2(a) Bar for Immoral,
Scandalous, and Disparaging Marks
Megan M. Carpenter
University of New Hampshire School of Law, [email protected]

Kathryn T. Murphy

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Part of the Graphic Communications Commons, Intellectual Property Law Commons, Marketing
Commons, and the Marketing Law Commons

Recommended Citation
Megan M. Carpenter & Kathryn T. Murphy, Calling Bulls**t on the Lanham Act: The 2(a) Bar for Immoral,
Scandalous, and Disparaging Marks, 49 Louisville L. Rev. 465 (2011).

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 CALLING BULLS**T ON THE LANHAM ACT: THE 2(a)
BAR FOR IMMORAL, SCANDALOUS, AND
DISPARAGING MARKS

Megan M Carpenter and Kathryn T Murphy-

I. INTRODUCTION

As the Lanham Act approaches the age of sixty-five, it is a good time to

take stock of its application to, and place within, the object and purpose of
trademark law. The consumer-search theory of trademarks posits that the
purpose of trademark law is to promote fair competition by reducing
consumer search costs and preventing confusion in the minds of consumers
as to the source of goods and services.' However, section 2(a) of the
Lanham Act expands trademark law well beyond its basic goals by
preventing registration of marks that are "immoral," "scandalous," or
"disparaging."2
There are two primary questions raised by this issue: First, should the
Lanham Act proscribe trademark registration for marks that are scandalous,
immoral, or disparaging? Second, can (and does) the Lanham Act do so
effectively? The former question will be the focus of a subsequent article;
the latter is the central inquiry of this piece, which discusses some of the
practical problems with the interpretation and application of 2(a). Part II
begins with a brief discussion of the purpose of trademark law as it has
evolved over time and the expansion of trademark law into areas unrelated
to its original purpose. Part III examines the meaning and application of
the section 2(a) bars for immoral, scandalous, and disparaging marks, and

' Associate Professor of Law and Director, Center for Law and Intellectual Property (CLIP), Texas
Wesleyan School ofLaw.
"J.D. Candidate, May 2011, Texas Wesleyan School of Law, BA Texas Christian University, December
2004.
' See, e.g., David W. Barnes, Trademark Extenalitie, 10 YALEJ.L & TECH. 1, 10-11 (2007); Mark A.
Lemley & Mark P. McKenna, Ownuing Mark(et)s, 109 MICH. L. REV. 137, 142 (2010); Philip Nelson,
Infomation and ConswnerBehwior, 78J. POL. EcoN. 311, 313 (1970); see also Mark McKenna, The Nomative
Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839, 1844-45 (2007), reprinted in 97
TRADEMARK REP. 1126, 1129-30 (2007).
2See 15 U.S.C. § 1052(a) (2006). In section 2(a), the Lanham Act also prevents registration ofmarks that are
deceptive or create a false association with persons, groups, or beliefs. See id. While a bar to registration for marks
that are deceptive or create a false association is related to the overall object and purpose of trademark law, the
bar to registration for marks that are immoral, scandalous, or disparaging is not A thorough explication of the
2(a) bars in light of trademark policy will be forthcoming in a later piece.

465

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466 UNIVERSITF OF LOUISVILLE IAWREVIEW [Vol. 49:465

examines how the two doctrines have been interpreted by courts. We argue
that the standards are unclear, and, to the extent they do exist, are often
erroneously interpreted. Part IV discusses the high degree of inconsistency
inherent in interpretation of these particular 2(a) bars and argues that the
content-based determinations are so highly subjective that application of the
standards fails to take into account contextually relevant information. Part
V looks at the registration process itself as a central situs of the application
of the 2(a) bars and discusses the inadequacy of evidence available to
trademark examiners at the United States Patent and Trademark Office
(USPTO). Finally, we conclude that the section 2(a) bar for immoral,
scandalous, and disparaging marks is problematic in both interpretation and
application.

II. THE PRIMARY PURPOSE OF TRADEMARK LAw Is To PROTECT

CONSUMERS FROM DECEPTIVE PRACTICES.

The original purpose of trademark law was to indicate ownership of

goods.3 With advancements in transportation and increases in trade, the
trademark took on an important second function of identifying the source of
the goods that were being offered for sale in the marketplace, enabling
consumers to make selections based upon the reputation and quality of the
goods.4 The purpose of trademark law was, thus, "to protect the interests of
consumers in not being misled by the unauthorised use of others' marks."5
The function of trademarks is two-fold, including the lessening of consumer
search costs and encouraging producers of goods and services "to invest in
quality by ensuring that they, and not their competitors, reap the
reputation-related rewards of that investment,"6 thereby protecting
consumers from deceptive practices.'

3 Sm RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9 cmt. b (1995), as repriled in JANE C.

GINSBURG ET AL, TRADEMARK AND UNFAIR CoMPEITION IAW 43 (4th ed. 2007). For a more
comprehensive explication of the history and development of trademark law, see also Megan M. Carpenter,
Tradenarks and Hoan Rig/ht- O1 and Water? Or Gcolate and Pau Buter?, 99 TRADEMARK REP. 892, 905-06
(2009).
4 Se RESTATEMENT (THIRD) OFUNFAIR COMPITION §9 cmt. b.
5 C6sar Ramirez-Montes, Faging Scholrs Ssier A Re-aamnatwion of the OriginalFoundaions ofAnglo-Amecan
TradnarkLAw, 14 MARQ INTELL PROP. L REV. 91, 92 (2010). There are relevant policy debates about the
proper scope and foundation of trademark law, however, which are outside the scope of this paper.
6 Barton Beebe, The Samic Ana ysis of Tradonmk Law, 51 UCIA L REV. 621, 623 (2004) (suggesting that
while a secondary consideration of trademark law is the legal means to protect the rights of the trademark owner,
the primary purpose was and continues to be consumer protection frm deceptive practices on goods and
services).
7 Se IJ. THOMAs McCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETTON §2:4 (4th
ed. 2010).

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2011] CALLING BULLS"T ON THE LANHAMACT 467

The 1905 Trade-Mark Act was the first federal statute to forbid directly
and explicitly registration of scandalous and immoral trademarks,8 a
prohibition that was later "reenacted as section 2(a) of the [Lanham] Act of
July 5, 1946."9 The Lanham Act was enacted in a post-World War II
political and social environment, when the Hays Code banned "excessively
lustful" kissing in movies, and Senator Joseph McCarthy spearheaded
aggressive investigations of artists for communist associations and beliefs.' 0
In that context, "it is [of] little surprise that Congress chose to refuse
trademark registration to material that '[c]onsists of or comprises immoral,
deceptive, or scandalous matter.""' Though no justifications for the 2(a)
bars can be found in the statute or its legislative history, scholars have
posited that the purpose behind this provision was that "the government
should not waste its resources on protecting unseemly marks," 2 suggesting
conformance with social and cultural practices of the time. Barring
registration for marks that are immoral, scandalous, or disparaging,
however, expands trademark law well beyond the basic purpose of
consumer protection from confusion as to the source and quality of goods
and services, and into protection from salacious material. That is, the
consumer protection at the base of trademark policy is one of source
quality, not moral quality.' 3
Because the legislative history of the Lanham Act contains a dearth of
information about the intent behind the section 2(a) bars to registration,

8See Trade-Mark Act of 1905 §5(a), 15 U.S.C. §85(a) (1946) (repealed 1946) (current version at 15 U.S.C.
§ 1052 (2006)) ("That no mark by which the goods of the owner of the mark may be distinguished from other
goods of the same class shall be refused registration as a trade-mark on account of the nature of such mark unless
such mark [c]onsists ofor comprises immoral or scandalous matter.").
9In re McGinley, 660 F.2d 481, 485 n.10 (C.C.P.A. 1981).
1oSee Christopher T. McDavid, Note, IKnow It Whm I See t Obscey, Copyng4 ad the Cauony Tale ofie
lmhar Act, 47 U. LOUISVIUL L REV. 561, 575 (2009) (citing The Moon IturePodctiaon Code of 1930 (Hays Code),
ARTSREFORMATION.cOM, http://www.artsreformation.com/aOO1/hays-code.html (last visited Feb. 15, 2011));
Dara L Schottenfeld, Comment, Kiches andCommunists andIntemne Sex Offders Oh My Wy It is Tme to Call ofte
Hunt, 20 ST. THOMAS L REV. 359,365 (2008); see also 15 U.S.C. § 1052(a).
" McDavid, spra note 10, at 575 (citing 15 U.S.C. § 1052(a)); see also 15 U.S.C. § 1052(a); Schottenfeld,
supra note 10, at 365.
" Jack A. Guggenheim, The Indians' Oziflroblen: Chif Wahoo as State SporDisimninatonand a Disparging
Mark, 46 CLEv. ST. L REV. 211, 229 (1998); see In re Mcnly, 660 F.2d at 486 ("We do not see [the refusal to
register such marks] as an attempt to legislate morality, but, rather, ajudgment by the Congress that such marks
not occupy the time, services, and use of funds of the federal government."); Stephen R. Baird, Moral Intoventon in
the Tradanar Arma: Beamng te Rgisbraion ofScandalow and Inmoral Tradenarks, 83 TRADEMARK REP. 661, 674-75
(1993); Theodore H. Davis, Jr., Rqeisration of Scandalous, Inmora and Dispoarging Matter Under Swlian 2(a) of de
Lamham Act Can One Man's Vulgari;y BeAnoier's Rqistant Tradeark?,83 TRADEMARK REP. 801, 807 (1993);Jendi
B. Reiter, Raitsmis and Scarlet Letst Wh "Immoral" and "Sandalous" TradnarkrS'ioul Be IFrally Rqisfrable, 6 FED.
CU. BJ. 191,193 (1996).
SSee Baird, spra note 12, at 666 (stating that ban for scandalous, immoral, or disparaging marks, on the
other hand, are "designed to regulate not only society's moral values, but [are] also designed to discourage the
commercial use of offensive subject matter that may not directly implicate principles of morality or virtue").
468 UNIVERSITY OFLOUISVILLE LAW REVIEW [Vol. 49:465

courts are forced to "speculate as to Congress's intent based on the text" of

the statute.' 4 Scholars generally agree, however, that there are four
common justifications for the 2(a) bars: The federal government (1) "should
not create the appearance that it favors or approves the use of scandalous,
immoral and disparaging trademarks"; (2) "should not squander its precious
time and resources" on such marks; (3) "should promote the public health,
welfare, and morals by discouraging the use" of them; and (4) "should
protect the sensitivities of those in public who might be offended" by
them. 15

IHl. THE SECTION 2(a) BAR FOR MARKS THAT ARE IMMORAL,
SCANDALOUS, OR DISPARAGING Is NOT EFFECTIVE BECAUSE THE
STANDARDS ARE UNCLEAR.

The Lanham Act does not define "scandalous," "immoral," or

"disparaging," yet it prohibits trademark registration for marks that fall into
any one of these categories.' 6 The Trademark Trial and Appeal Board
(TTAB) has acknowledged problems in making these content-based
determinations, calling the guidelines "somewhat vague" and "highly
subjective." 7 Additionally, there is not enough published precedent to
provide meaningful guidance to courts attempting to apply these
standards.' 8
In the first case to consider what a "scandalous" mark might look like,
the court in In re Riverbank Canning Co. noted that, in light of the dearth of
stated intent or guidance in the legislative history, the word "scandalous"
should be interpreted through "its ordinary and common meaning," which
was "[c]ausing or tending to cause scandal; . . . shocking to the sense of
truth, decency, or propriety; disgraceful; offensive; disreputable, . . . [g]iving
offense to the conscience or moral feelings; . . . [or] calling out [for]
condemnation."19 When considering whose sense of truth, decency, or

' DewellynJ. Gibbons, Samoia ofthe &adalous and the Immoral and the Dipming Secdon 2(a) Tradonar Law
Afer Lawrence v. Texas, 9 MARQ. INTEIL PROP. L REV. 187, 233 ("Because there is little legislative history
explaining Congress's intention in enacting section 2(a), courts will have to speculate as to Congress's intent based
on the test and purpose of the statute.").
IsSw Baird, supranote 12, at 788.
16Sm 15 U.S.C. § 1052(a).
" In reIn Over Our Heads Inc., 16 U.S.P.Q.2d (BNA) 1653, 1654 (T.TAB. 1990) (quoting In re Hershey,
6 U.S.P.Q.2d 1470, 1471 (T.TAB. 1988)).
18 See In re Old Glory Condom Corp., 26 U.S.P.Q2d (BNA) 1216, 1218 (T.TAB. 1993).
1 In re Riverbank Canning Co., 95 F.2d 327, 328 (C.C.PA 1938) (citation onitted). Interestingly, despite
the separate existence of each tem in the Lanham Act, the analysis for "scandalous" and "immoral" is typically
collapsed, and separate standards do not exist.
2011] CALLING BULLS**T ON THE LANHAM ACT 469

propriety matters, the analysis focuses on a substantial composite of the

general public.20 The court sought to determine whether the use of
MADONNA on wine not limited to religious use would be shocking or give
offense to the conscience or moral feelings of the consuming public. 21 While
the Court of Customs and Patent Appeals (CCPA) noted numerous
references to wine in the Bible, it also noted that "the evils growing out of
the excessive use of intoxicating beverages are probably much greater today
than they were 1900 years ago." 22 While courts are not supposed to
consider the morality of the goods or services in question, the likely meaning
of the mark is determined "in the context of the marketplace as applied to
only the goods described in [the] application for registration." 23 The CCPA
sought to consider the viewpoint of wine drinkers, as well as people who do
not drink wine.24 It also considered the fact that the mark would be
displayed in such places as barrooms. 25 The trademark owner had
submitted affidavits indicating that wine drinkers would not object to the
use of the mark on wine, but the court held that the proper scope of inquiry
should be broadened to include people who do not "use" wine as a
beverage.26
In this type of assessment, USPTO examining attorneys often rely on
dictionary definitions of words because they "represent an effort to distill the
collective understanding of the community with respect to language and
thus clearly constitute more than a reflection of the individual views of
either the examining attorney or the dictionary editors." 27 Because
meaning can be inferred from dictionary definitions, the existence of
alternate definitions can imply that the trademark is nonscandalous. 2 8
However, while the focus on an ordinary and common meaning potentially
implies a sort of logical baseline, the appropriate focus is not simply the
meaning of the word or phrase, but the way that word or phrase is
perceived by a substantial composite of consumers. A centralized focus on
dictionary definitions fails to inquire as to the degree of perceived scandal,
shock, or offense to consumers in the marketplace.

20 Se
EiparteParfum L'Ode, Inc., 93 U.S.P.Q (BNA) 481, 482 (Pat, Office Exam'r-in-Chief 1952).
2
' Se In re Riverbnk Camnig Co, 95 F.2d at 328.
22Id at 329.
2 In re Mavety Media Group Led., 33 F.3d 1367, 1371 (Fed. Cir. 1994) (citing In re McGinley, 660 F.2d
481, 485 (C.C.PA 1981)).
24See In re Rirbank Cmimg Co., 95 F.2d at 329.
25S, jd
26 SM id
2 In re Boulevard
Entm't, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003).
8
2 Sln re Mavey Meda Group Ld, 33 F.3d at 1373-74.
470 UNIVERSITY OFLOUISVILLE IAWREVIEW [Vol. 49:465

Although section 2(a) forbids the registration of disparaging marks, the

Lanham Act does not define the term "disparaging", and examining
attorneys and courts alike have noted the existence of little precedent on its
meaning. 29 Many TTAB decisions and court opinions have found that
something just is disparaging with little supporting analysis. In Doughboy
Industries, Inc. v. Reese Chemical Co., for example, the court held that the mark
DOUGH-BOY for medication to treat sexually transmitted diseases
"obviously" disparaged American soldiers because American soldiers were
often referred to colloquially as "dough-boys" during World War 1.30 In
another case, concluding that a large red "X" atop a hammer and sickle
was not registrable by the Anti-Communist World Freedom Congress, the
TTAB noted conclusively that "there can be no question" that such mark
disparaged the Communist Party.3 '
In 1999, a formal definition of "disparage" was solidified in Hado v. Pro-
Football, Inc.,32 based on the "ordinary and common" definition of the word
in 1946, the year that Congress adopted the Lanham Act.33 Something is
thus disparaging, for the purposes of the 2(a) bar, if it "may dishonor by
comparison with what is inferior, slight, deprecate, degrade, or affect or
injure by unjust comparison."3 4 Additionally, the court confirmed that "in
deciding whether the matter may be disparaging, we look, not to American
society as a whole . . . but to the views of the referenced group."35 The
court crafted a two-step test for determining whether a mark is disparaging:
(1) Would the mark be understood in its context as referring to an
identifiable group of people? (2) May that reference be perceived as
disparaging to a "substantial composite" of that group?3 6 However, the
court did not define what a "group" is for purposes of the test, again leaving
the definition open to interpretation with very little precedent to guide.
The question arises whether the terms are "sufficiently precise to enable
the PTO and the courts to apply the law fairly and to notify a would-be
registrant that the mark he adopts will not be granted a federal

9 SeeIn re Old Glory Condom Corp., 26 U.S.P.Q2d (BNA) 1216,1221 & n.4 (T.TAB. 1993).
0 Se Doughboy Indus., Inc. v. Reese Chem. Co., 88 U.S.P.Q (BNA) 227, 228 (Pat. Office Comm'r-in-
Chief 1951).
1SeIn re Anti-Communist Wodld Freedom Cong., Inc., 161 U.S.P.Q (BNA) 304, 305 (T.TAB. 1969).
32 S Harjo v. Pro-Football, Inc., 50 U.S.P.Q2d (BNA) 1705, 1738 ([.TAB. 1999), rw'd, 284 F. Supp. 2d

96 (D.D.C. 2003).
3 Sm id at 1737-38; sw alw Pm-Football, Inc. v. Haijo, 284 F. Supp. 2d 96, 124 (D.D.C. 2003) (adopting
the TTAB's definition as oorrect).
- Ha, 50 U.S.P.Q.2d (BNA) at 1738.
5Id at 1739.
36 S& id at 1739-40.
2011] CALLNG BULLS" t TON THE LAHAMACT 471

registration."3 7 Scholars have widely discredited the content-based

determinations as ineffective and highly arbitrary, going so far as to posit
that "[a] Section 2(a) proceeding is even less democratic than an obscenity
trail [sic]: the decision is made by judges and administrative agencies on a
national level and a minority of hypothetically offended people can override
the community standard of taste."38

A. To the Extent There Are Standards, 77uy Are Ofjen Erroneously Conjlated.

An examining attorney who believes a mark is both scandalous and

disparaging must provide separate analysis for each, using the two separate
tests: "[]t is critical for the tribunal to distinguish between allegations that a
mark is scandalous and allegations that a mark is disparaging, for these two
categories implicate very different interests and are resolved through
different tests." 39 However, exanmnig attorneys routinely collapse the two
analyses, which "does a disservice to the statutory language, leads to
injustice in the individual case without any gains in the predictability of
outcomes, and makes for bad public policy. "4
In In re Hines, the applicant was denied registration for the mark
BUDDHA on casual clothing,41 and on appeal the TTAB noted that the
examining attorney "appear[ed] to lump all of these different concepts in
Section 2(a) together, using [scandalous and disparaging]
42
interchangeably." The court went on to note that "[a] thorough reading
of the cases reveals that the lines separating each distinct bar have been
blurred." 43 Similarly, in In re Old Gloy Condom Corp., the board stated that
"the examining attorney's refusal of registration on the grounds that
applicant's mark is scandalous was based, in large part, on her finding that

1In re McGinley, 660 F.2d 481, 484 (C.C.PA 1981).

38See Gibbons, supra note 14, at 237 (citing Reiter, wpra note 12, at 195); see also Baird,.pra note 12, at 681.
9
3 LyndaJ. Oswald, GalngingtheRegirftram of &andaloW andfDiporagingMar Uuer theLa Act W Has
Standing To &?, 41 AM. BUS. LJ. 251, 290 (2004) (footnote omitted); see In re Hines, 31 U.S.P.Q.2d (BNA) 1685,
1686 n.2 (T.T.AB. 1994) ("Mhe fact that the disparagement language was added after more than forty years of
employing the scandalous and immoral language under the 1905 Act, suggests that Congress believed there was
a gap that needed to be filled and that Congress must have intended for the standards to be distinct." (quoting
Baird, supra note 12, at 667)).
4e Ethan G. Zlotchew, "&2nddous" or 'Disparagng'?It Sould Make a Dfffmce in Oppanidon ad Cacellaiiont
Actions las on de Lmhamn Act's Saton 2(a) Pdhibitzs Using the Etmwnpe ofNahe Ameian .mboksm m Aedics, 22
COLUM.-VIAJ.L & ARTS 217, 230 (1998) (footnote omitted); see Todd Anten, Note, Sdf4isaragingTradnarks
and Socia Gange Factong the Reoppropriatim ofSlurs into Section 2(a) ofthe LmmnAct, 106 COLUM. L REV. 388, 409-
10 (2006).
41In reHianes, 31 U.S.P.Q2d (BNA) at 1685-86.
*2Id at 1686 n.2.
43Id (quoting Baird, spra note 12, at 666 n 14).
472 UNIVERSITY OFLOUISVILLE LAW REVIEW [Vol. 49:465

the mark disparages." 44 And again in In re In Over Our Heads Inc., the TTAB
noted that "[i]t is not entirely clear whether the Examining Attorney has
rejected the mark (1) on the basis that it 'consists of or comprises . . .
scandalous matter' or (2) on the basis that it 'consists of or comprises ...
matter which may disparage . . . institutions [or] beliefs.'" 4 5 When these
terms are used interchangeably without regard to their already imprecise
standards under the Lanham Act, they "confuse the very foundations of
Section 2(a)'s statutory bars to registration." 46

B. Ascertaining the Relevant Group Is an Essential Partof the Analysis, and Yet It Is
Ambiguous Under Existing Normative Practice.

When a mark is alleged to be disparaging, the "relevant group" changes

depending upon the target of the possible disparagement. When a
trademark targets a particular ethnic or religious group, for example, the
analysis is understood to focus on a substantial composite of that group;
conversely, where the mark is alleged to be disparaging to consumers as a
whole, the focus expands accordingly.4 7 However, a precise determination
of the parameters of the relevant group has proved to be difficult in
individual cases, which is problematic particularly because the relevant
group is often determinative of the conclusion. The creation of a standard
that requires a content-based consideration of a "substantial composite of
the general public" is difficult to define and changes with each highly
subjective case. 48
In In re Heeb Media, LLC, in affirming the denial of registration of the
mark HEEB for a Jewish-owned, Jewish-targeted magazine, the TTAB
noted that "[w] hile case law does not provide a fixed number or percentage,
it is well established that a 'substantial composite' is not necessarily a
majority." 49 In response to applicant's argument that a mark should not be
denied based on minority opinion, the TTAB listed the sources that the
examiner cited condemning registration of HEEB for a magazine, including

4 In reOld Glory Condom Corp., 26 U.S.P.Q2d (BNA) 1216, 1221 (T.TAB. 1993).
45
In re In Over Our Heads Inc., 16 U.S.P.Q2d (BNA) 1653, 1654 n.2 (T.TAB. 1990).
46
47
Oswald, szpra note 39, at 290.
f Greyhound Corp. v. Both Worlds, Inc., 6 U.S.P.Q2d (BNA) 1635 (T.TAB. 1998).
SSe In re Mavety Media Group Ld, 33 F.3d 1367, 1371 (Fed. Cir. 1994) ("Although constantly at odds,
progressive views and conservative or traditional thinking participate alike in the formation of the composite of
the general public. While we recognize the inherent difficulty in fashion a single objective measure like a
substantial composite of the general public frm the myriad of subjective viewpoints, we are duty bound to apply
the standard set forth by our predecessor court.").
9
4 In re Heeb Media, LLC, 89 U.S.P.Q.2d (BNA) 1071, 1077 (r.TAB. 2008) (citing In re McGinley, 660
F.2d 481, 485 (C.C.PA 1981)).
2011] CALLNG BULLS**T ON THE LANHAMACT 473

statements from the Anti-Defamation League, rabbis, a university professor,

a talk-show host, and members of the general public.5 o This small subset of
the composite seemed to trump the evidence in the record that the
applicant submitted, including letters from various individuals representing
prominent Jewish organizations (UJA Federation and Hillel) and notable
Jewish leaders (Charles Bronfman, Steven Spielberg), as well as monetary
support from a variety of Jewish advertisers (American Jewish World
Service, Birthright Israel, Jewish Fund for Justice, Museum of Jewish
Heritage, New Israel Fund, and University ofJudaism).51 To what degree
and by what standards one group is deemed more "substantial" than
another, however, was entirely unclear.

IV. DETERMINATIONS UNDER SECTION 2(a) ARE CONTENT BASED AND

So HIGHLY SUBJECTIVE THAT APPLICATION OF THE STANDARDS ARE
INCONSISTENT AND VARY WITH TIME, CONTEXT, AND TRIBUNAL.

Because of a lack of sufficient definitional standards, examining

attorneys must make determinations as to which marks will be deemed
scandalous, immoral, or disparaging with little more than subjective
guidance. As a result, "the trademark landscape is littered with
inconsistencies" and puzzling results. 52 For example, the mark,
TECHNODYKE, was registered in 2001 for a lesbian-oriented website,53
but the marks DYKESINTHECITY for clothing,54 DYKEDOLLS for
lesbian dolls,55 DYKE TV for lesbian-oriented television programming,56
and SUPERDYKE for clothing57 were rejected. Additionally, the mark
QUEER GEAR, for clothing, was registered,58 while the mark CLEARLY
QUEER, also for clothing, was not successfully registered.59 Whether a
mark is considered "scandalous" or "disparaging" can often change
drastically given the context of the mark. For example, in 1951, when the
Patent Office Commissioner-in-Chief denied registration of the mark
DOUGH BOY for an anti-venereal medication, he noted that DOUGH
BOY was not a per se disparaging mark, only becoming so when used in

5 Id
5' Sa id at 1073-74.
52Sw McDavid, mpra note 10, at 578.
5 TECHNODYKE, Registration No. 2,498,459.
54 U.S. Trademark Application Serial No. 76,627,653 (filedJan. 12, 2005).
55
U.S. Trademark Application Serial No. 78,497,352 (filed Oct. 10, 2004).
6 U.S. Trademark Application Serial No. 76,434,481 (filedJuly 24, 2002).
5 U.S. Trademark Application Serial No. 74,325,314 (filed Oct. 26,1992).
5 QUEER GEAR, Registration No. 1,828,351.
5 U.S. Trademark Application Serial No. 76,132,003 (filed Sept. 19, 2000).
474 UNIVERSITY OFLOUIS7LLE IAWREVIEW [Vol. 49:465

conjunction with those goods and services. 60 And while context is of great
importance in such determinations, the various factors considered by
individual examining attorneys without the benefit of a tribunal-including
the relationship between the disparaging term and other elements of the
mark, the type of product upon which the mark appears, and how the mark
will appear in the marketplace 6'-often yields inconsistent and
unpredictable results. For example, in In re In Over Our Heads Inc., the TTAB
allowed registration of the mark MOONIES for dolls who, upon squeezing
an attached collapsible bulb, dropped their pants to reveal their buttocks. 62
While the trademark examiner had primarily focused on the term "moonie"
as a reference to members of The Unification Church (whose leader is the
Reverend Sun Myung Moon), the TTAB felt that purchasers were more
likely to view the marks as an allusion to "mooning," given the context, than
as a reference to members of The Unification Church. 63 In reversing the
examining attorney's refusal, the TTAB opinion noted the substantial
composite that the examining attorney had relied on:
There is in the record a short article appearing in the April 24, 1989
edition of U.S.A. Today indicating that the term "Moonies" may be
viewed by some members of that religious group as being derogatory.
However, the record is also replete with articles taken from major
newspapers and magazines wherein the term "Moonies" is used to refer to
members of The Unification Church. These articles do not suggest that
the term "Moonies" is derogatory, and we doubt that such major
newspapers and magazines would have repeatedly used a term derogatory
of a particular religious group.64

While context is considered in some applications, such as the marks

listed above, other times marks have been found per se scandalous without
the consideration of context. In denying registration to the applicant's mark
BULLSHIT for high-end handbags, the TTAB rejected the argument that
in this particular context the applicant's mark was intended to be tongue-in-
cheek. 65 Applicant claimed to be commenting on and satirizing the
ludicrousness of the high-end handbag market and argued that "the word
'bullshit' is in such common usage in contemporary America that it is

o See Doughboy Indus., Inc. v. Reese Chem. Co., 88 U.S.P.Q (BNA) 227, 228 (Pat. Office Comm'r-in-
Chief 1951).
61 See Hajo v. Pro-Football Inc., 50 U.S.P.Q2d (BNA) 1705, 1739 (TTAB. 1999), ree'd, 284 F. Supp. 2d

96 (D.D.C. 2003).
62
See In re In Over Our Heads Inc., 16 U.S.P.Q2d (BNA) 1653,1654 (T.TAB. 1990).
63 S, id
64 Id at 1654 n.4.
as See In re Tinseltown, Inc., 212 U.S.P.Q (BNA) 863,864,866 (T.TAB. 1981).
2011] CALLlNG BULlS**T ON THE LANHAMACT 475

defined in modern dictionaries as having the meaning of nonsense...

rather than the feces of a bull." 66 The TTAB refused this contextual
consideration, instead holding the public in general would be scandalized by
such a mark. 67 However, on the other end of the spectrum, the mark
BADASS for stringed instrument bridges was registered without issue, in
part because the mark was alleged to be an acronym for "Bettencourt
Acoustically Designed Audio Sound Systems" rather than as a word having
any apparent profane connotation.68 In a further example confounding
both ends of the spectrum, the mark BIG PECKER BRAND was initially
denied registration for T-shirts on the grounds that "pecker" was a vulgar
expression for "penis."69 The TTAB reversed the refusal, finding that the
T-shirts had a design of a bird in conjunction with the word mark and
concluding that, in view of the context of the mark's use, the mark neither
offended morality nor raised a scandal. 70 Thus, "[t]here seems to be no
clear way to identify the bounds of the context of the meaning of a
trademark." 7'

A. The Identity ofthe Trademark Owner Is Not Separately Consideredin the

DisparagementAnalysis and Yet Is a Relevant Contextual Inquiy.

A self-disparaging trademark may become empowering when it is used

by a particular oppressed group. Such trademark "contains a term that is
usually considered to be a slur toward a particular group, yet the applicant
is a member of that group, suggesting that the slur has lost its disparaging
potency."72 If a trademark applicant is a member of a traditionally
disparaged group and is reappropriating a particular term toward the ends
of social justice and empowerment, the applicant's identity may be relevant
to an evaluation of disparagement." A mark may become very powerful in
these circumstances. 74 Many of these terms are not scandalous or
derogatory per se; rather, "[i]t is the use of the term in its specific context

66
67
Id at 864; see also HARRY G. FRANKFURT, ON BULSHIT 41 (2005).
Sw In re TselWm, Inc., 212 U.S.P.Q. (BNA) at 865.
68
69
Seln re Leo Quan Inc., 200 U.S.P.Q 370, 371 (T.TAB. 1978).
SIn re Hershey, 6 U.S.P.Q.2d 1470, 1470 (T.TAB. 1988).
7oSeid at 1471.
7Regan Smith, Tradnar*Law and Fre Spmh PtwdonforScmdalw andDisragigMarks,42 HARV. C.R.-
C.L L REV. 451,460 (2007).
2 Anten, .supranote 40, at 390.
n Se id at 390-94.
74Se In re Cadson, No. 78682282, 2007 T.TAB. LEXIS 651, at *2-3 (T.TAB. Aug. 28, 2007) (arguing
that the word "cum," while historically used to refer to degrading sexual acts involing women, can become a
mark ofempowerment when used by women).
476 UNIVERSITY OF LOUISVILLE IAW REVIEW [Vol. 49:465

that imparts the value judgment of scandalous or immoral."75 When that

context involves reappropriation of language by a disadvantaged group in
empowering ways, it is particularly relevant. However, "[u]nder current
PTO practice, examining attorneys take no notice of an applicant's self-
identity," resulting in "inconsistent and contradictory evaluations of self-
disparaging marks." 76 For example, over the years, multiple applications
including the term "dyke," have been rejected because of the term's
significance in referring to lesbians, despite the fact that the trademark
owners were lesbian groups reappropriating the term in nonoffensive and
empowering ways.77
The confusion goes well beyond marks addressing sexual orientation.
In In re Heeb Media, LLC, discussed above, the applicant, in order to
overcome the initial refusal by the examining attorney, submitted evidence
that included letters from various prominent Jewish organizations,
advertisements from a wide range of Jewish organizations that wished to
advertise in his magazine, and testimony from prominent Jewish leaders
and scholars that found his appropriation of the slang term nonoffensive. 78
Applicant argued that "the context in which [we] use[] the term 'heeb' is
the exact opposite of derogatory and is rather as a symbol of pride and
progressive identity among today's Jews."79 In affirming the examiner's
refusal, however, the TTAB noted that the mark would not be "limited to
clothing and entertainment services offered by Jews and for Jews, once
registered, this registration could be assigned to anyone, and these goods
and services could be offered in all channels of trade to all classes of
consumers."80
Currently, there are many groups attempting to take once derogatory
terms and internalize them, make them their own, and in the process strip

75Id at *3.
6Anten, supra note 40, at 390-91.
77See id at 391 ("[E]xaminers have denied multiple applications to register marks containing the word
'dyke' in reference to lesbians, yet in 2001 the PTO registered the mark TECHNODYKE as applied to a
lesbian-oriented website."); see aso U.S. Trademark Application Serial No. 76,627,653 (filed Jan. 12, 2005)
(DYKESINTHECITY); U.S. Trademark Application Serial No. 78,497,352 (filed Oct. 9, 2004)
(DYKEDOLLS); U.S. Trademark Application Serial No. 78,448,110 (filed July 8, 2004) (VELVETPARK
DYKE CULTURE IN BLOOM); U.S. Trademark Application Serial No. 76,434,481 (filed July 24, 2002)
(DYKE TV); U.S. Trademark Application Serial No. 75,312,451 (filed June 20, 1997) (DYKE WEAR)
(approved for publication but abandoned before registered); U.S. Trademark Application Serial No. 75,121,779
(filedJune I1, 1996) (DYKE DISH).
'8 See Apra text accompanying notes 49-51.
79In re Heeb Media, LLC, 89 U.S.P.Q2d (BNA) 1071, 1075 (T.TAB. 2008).
8oId at 1075 n.5. It is arguable whether a trademark could be assigned to "anyone," and offered "in all
channels of trade to all classes of consumers." A thorough discussion of this issue is outside the scope of this paper,
but the law of assignments creates restictions that substantially constrain the rights ofassignors.
2011] CALLING BULIS*T ON THE LNHAMACT 477

them of hateful meaning. 81 As our society evolves socially and culturally,

disparaged groups will increasingly seek to "disarm the power of epithets by
actively transforming slurs into sources of pride."82 Accordingly, these
groups should have the freedom to confront and "transform these negative
representations of themselves,"8 3 which they are not able to do under the
current constructions of the 2(a) bar.

B. What Is Considered To Be Scandalous Changes with Evolving Social and Cultural

Context.

It is perhaps a basic truism that what was once considered scandalous

changes over time with the evolution of social attitudes. "[W]hat was
considered scandalous as a trademark or service mark twenty, thirty or fifty
years ago may no longer be considered so, given the changes in societal
attitudes."84 In 1938, for example, QUEEN MARY was held to be
scandalous for underwear,85 and in 1971, the TTAB affirmed an examiner's
refusal to register the mark BUBBY TRAP for brassieres because the mark
"would be offensive to public or individual sense of propriety or morality," 86
however, these results would be unlikely in a contemporary social context.87
Yet, while trademark law to some extent depends on the constantly moving
target of consumer opinion, evidence of changed social attitudes toward
certain words have had limited impact in litigation. In In re Boulevard
Entertainment, Inc.,88 for example, a trademark applicant was not allowed to
register 1-800-JACK-OFF for "entertainment in the nature of adult-
oriented conversations by telephone,"8 9 despite the submission of "a
substantial amount of evidence to establish that societal attitudes toward sex
and sexual talk in general have changed significantly over the last several

81 S; eg., U.S. Trademark Application Serial No. 76,082,591 (filed July 1, 2000) (SPIC SPANISH
PEOPLE IN CONTROL); U.S. Trademark Application Serial No. 75,002,364 (filed Oct. 6,1995) (N.I.G.GA
NATURALLY INTELLIGENT GOD GIFTED AFRICANS).
82 Anten, .Wpra note 40, at 392.
8 Reiter, supra note 12, at 208.
84 In re Old Glory Condom Corp., 26 U.S.P.Q2d (BNA) 1216, 1219 (T.TAB. 1993); see also M.
Christopher Bolen et al., Wha &adalBome Vqpu 7he Regisfrablh ofS ual Rqiraces in TradonmrkrandPottrlion of
Tradenaksfwn Tamidmnti Saal Contts, 39 IDEA 435, 439-31 (1999) (arguing that the boundaries of immoral
or scandalous have moved over time to correspond to contemporary mores as a pmeess of normalizing deviance).
- Erparte Matha Maid Mfg. Co., 37 U.S.P.Q. (BNA) 156,156 (Dec. Comm'r Pat. 1938).
86 In re Runsdorf, 171 U.S.P.Q (BNA) 443, 443 (T.TAB. 1971).
87
Seen re Old Glory Condan Corp., 26 U.S.P.Q2d (BNA) at 1219 ("Marks once thought scandalous may now
be thought merely humomus (or even quaint), as we suspect is the case with the marks held scandalous in Erpparte
Matha Mad Mfg Ca and In re Rioudoif' (citations omitted)).
88In re Boulevard Entm't, Inc., 334 F.3d 1336 (Fed. Cir. 2003).
8 Id at 1339.
478 UNIVERSITY OFLOUISVILLE IAWREVIEW [Vol. 49:465

decades." 90 While the board conceded that this might be true, it denied
registration based on three different dictionary definitions that labeled the
term vulgar.9 '

C. CancellationActions on the Basis ofDisparagementArtificially Freeze Time at

Registration andAre Particularly Vulnerable to a Laches Defense.

For a mark to be held disparaging in a cancellation action, the standard

requires that it be found disparaging at the time of registration; that is,
contemporary attitudes and meanings are not considered: "If a trademark
was registered in a time of more virulent racism, it is conceivable that either
internalized racism or lack of hope for success prevented members of a
disparaged group from bringing a challenge within the five-year period."92
On the other hand, slang terms and nicknames that used to be socially
acceptable and are now disparaging may not be seen as such under the
relevant standard. This may be true even when a particular mark was
disparaging all along, but not perceived as such by a substantial composite
of the relevant group. Because of an evolving social and cultural climate,
disparaging marks will often face a laches defense. In the action brought by
a group of Native Americans challenging certain marks of the Washington
Redskins football franchise,9 3 the United States District Court for the
District of Columbia held that a finding of disparagement was not
supported by substantial evidence and that the doctrine of laches precluded
consideration of the case because "[t]he marks in question were registered
between 1967 and 1990, but the Petitioners did not file a complaint against
Pro-Football until 1992."

9 In re Boulevard Entm't, Inc., No. 75/414,435, 2002 WL 1258274, at *5 (T.TAB. Jan. 31, 2002), afd,
334 F.3d 1336; In reBoulardEnt Inc., 334 F.3d at 1341-42.
1SeeIn reBoudardEbn4Inc., F.3d at 1339; se also In reBoulaurdI&n4 Inc., 2002WL 1258274, at *5.
* Smith, supra note 71, at 481.
3 Se Pm-Football, Inc. v. Harjo, 284 F. Supp. 2d 96 (D.D.C 2003).

* Lynette Paczkowsi, The Bst Ofmse Is a Good Dfmse How the Waslangton Raistins Overcame Qulmges to Ther
Roistead Tradenarks, 2004 B.C. INTELL PROP. & TECH. F. 60803. The TTAB had found that the marks may be
disparaging to a substantial composite of Native Americans and ordered cancellation of the registrations. Se
Haijo v. Pm-Football, Inc., 50 U.S.P.Q.2d (BNA) 1705, 1749 (T.TAB. 1999), rn'd,284 F. Supp. 2d 96 (D.D.C.
2003).
2011] CALLING BULLS*T ON THE LANHAMACT 479

V. THE REGISTRATION PROCESS IS PARTICULARLY UNSUITABLE To

CONDUCT A SECTION 2(a) ANALYSIS DUE TO INCONSISTENCIES IN
REGISTRATION PRACTICE AND INADEQUATE EVIDENCE.

In the examination of trademark applications, examining attorneys are

not required to follow other registration decisions when considering whether
or not to register a mark, including decisions based on marks belonging to
the same applicant. After being denied registration for the mark TWATTY
GIRL for newspaper cartoon strips, for example, the applicant in In re Ava
Watkins95 pointed out that "two of her previously-filed applications for the
marks TWATTY (Ser. No. 75704979)"96 for cartoon strips and
"TWATTYTRAX (Ser. No. 76072967)"97 for cartoon soundtracks on tapes
and CDs, "were passed to publication without a Section 2(a) rejection by
the examining attorneys handling those applications." 98 But the court noted
"that the present examining attorney is not bound by the Office's actions
relative to applicant's prior applications."99
Additionally, there are also inconsistencies in how marks are
investigated during the examination process. Some examining attorneys
have taken it upon themselves to do a more advanced investigation as to
goods and services other than the ones included in the application. 0 0 Other
examining attorneys only consider the specimens in the application as an
indication of goods and services; through different processes, different
results arise.' 0' In In re Robert L McGinley, for example, the examiner denied,
and the CCPA affirmed the denial of, a mark which was a photograph of a
nude couple kissing that exposed the man's genitalia. 0 2 While the
specimens of use submitted with the application indicated that the mark
would be used for a .'Newsletter Devoted to Social and Interpersonal
Relationship Topics' and 'Social Club Services,"' the court seemed to base
its rejection of the mark after a thorough inquiry into the exact nature of the
social club services. 03 The TTAB determined that the social club was a

95In re Watkins, No. 76138675, 2005 TTAB LEXIS 66, at *4 (T.T.A.B. Feb. 8, 2005) ("The mark
TWATIY GIRL is derived fm the Applicant's name, Ava Watkins. Ms. Watkins has created a fictional
character, 'Eva Twatkins,'. . . and Twatty Girl' is Eva Twatkin's fictional alter ego.").
9 U.S. Trademark Application Serial No. 75,704,979 (filed May 13, 1999).
9 U.S. Trademark Application Serial No. 76,072,967 (filedJune 19, 2000).
98
In re Wabhrs, 2005 TTAB LEXIS 66, at *3.
99Id
1ooS eg., In reMcGinley, 660 F.2d 481,482 (C.C.PA 1981).
01
' See id at 485 ("[TWhe Lanham Act does not require, under the rubric of 'scandalous,' any inquiry into
the specific goods or services not shown in the application itself.").
' S&id at 482.
1o3SMid
480 UMVERSITY OFLOUISVILLE IAWREVIEW [Vol. 49:465

club for swingers, declaring "[s] uch activities are considered deviations from
the sexual norm of husband and wife relations. Such activities are immoral
or scandalous." 04 In his dissenting opinion, Judge Rich noted that the
court was "lacking in factual foundation on the main issue of whether the
picture sought to be registered . . . is 'scandalous' when used on the goods
and services named in the application," 0 5 and claimed that the examining
attorney and the court had instead made a subjective decision based on the
activities of the club. 06

A. Inadequate Evidence Is Used when Denying Registrations.

It is uncertain what degree of evidence is required-in both quantity

and quality-before an examining attorney can refuse a registration based
on section 2(a). 07 Examiners "look to the limited precedent of the courts
and the [TTAB] on the issue of disparagement, as well as to the previously
enunciated precedent on the related issue of scandalousness." 08 When
precedent is unavailable, there is often very little concrete evidence to
consider, and examiners are left without access to adequate evidence.
Examining attorneys may look to dictionary definitions and newspaper and
magazine articles' 0 9 when determining if a mark is scandalous, immoral, or
disparaging, but their assessment is little more than a prediction as
"consumer surveys are not a viable option for the Patent and Trademark
Office, due to its limited resources."" 0 While it is expected to make
decisions on trademark applications based on perceptions of a substantial
composite of the general public, the USPTO is limited as to the evidence it
can acquire related to consumer perception-"it cannot, for example, be
expected to conduct a survey of the marketplace or obtain consumer
affidavits."" Dictionary definitions are often the central evidence for
refusal of a mark on the basis of scandalousness or immorality. But
dictionary definitions change over time, can differ between sources, and do

1o5Id at 487 (Rich,J., dissenting) (emphasis added).

106Se id
1SoSe Baird, suWa note 12, at 774.
10 Hajo v. Pro-Football, Inc., 50 U.S.P.Q2d (BNA) 1705,1738 (T.TAB. 1999), rvd,284 F. Supp. 2d 96
(D.D.C. 2003).
M' Se U.S. PATENT AND TRADEMARK OIFICE, TRADEMARK MANUAL OF EXAMINING PROCEDURE
§ 1203.01 (4th ed. 2005).
110In re Wilcher Corp., 40 U.S.P.Q2d (BNA) 1929,1930 n.3 (T.TAB. 1996) (citing In re Budge Mfg. Co.,
857 F.2d 773, 775 (Fed. Cir. 1988)).
I In reBudgeMfg. C, 857 F.2d at 775.
2011] CALLING BULLS"T ON THE LANHAMACT 48 1

not indicate the perception of-or emotional effect on-particular

individuals, which is the central focus of the 2(a) inquiry." 2
In some cases, the TTAB only considers dictionary definitions of words
before denying registration of a mark. In In re Runsdorf the TTAB affirmed
the examiner's refusal, which was based solely on a dictionary definition of
"bubby" as "[b]reast, now often considered vulgar." 13 And in In re
Tinseltown, Inc., the TTAB affirmed the examiner's refusal to register the
mark BULLSHIT for women's handbags"l 4 based on the dictionary's
editorial label of "usu. considered vulgar" to the term, "bullshit."' 5
However, "vulgar" is not necessarily determinative of scandalousness or
immorality, as something that is vulgar may or may not cause "shock to the
conscience." In fact, precisely relevant to this issue, the Federal Circuit
Court of Appeals noted
the inherent fallibility in defining the substantial composite of the general
public based solely on dictionary references. While a standard dictionary
may indicate how the substantial composite of the general public defines a
particular word, the accompanying editorial label of vulgar usage is an
arguably less accurate reflection of whether the substantial composite
considers the word scandalous. Such labels are subject not only to
differences in opinion among the respective publication staffs of particular
dictionaries, but also to the potential anachronism of those opinions.' 1 6

In In re Mavety Media Group Ltd., the examining attorney denied

registration for the mark BLACK TAIL for an adult entertainment
magazine, relying "upon a dictionary reference defining 'tail' as 'SEXUAL
INTERCOURSE-usu. considered vulgar."" 7 While the court declined
to decide the larger issue, "whether a standard dictionary definition and its
accompanying editorial designation of vulgarity conclusively demonstrates
that a substantial composite of the general public considers [a] word
scandalous,"" 8 it did hold that the existence of an alternate, nonvulgar
definition of the term was enough to demonstrate that a substantial

112Se Gibbons, aspra note 14, at 208 ("Depending on the examining attorney's choice of dictionaries, the
cunent denotations of the questioned mark may not be adequately addressed. Some dictionaries are slower in
recognizing new meanings given to existing words." (footnote omitted)).
" Se In re Runsdorf 171 U.S.P.Q (BNA) 443, 443 (T.TAB. 1971) (citing WEBSTER'S THIRD NEW
INTERNATIONAL DIcnONARY 287 (1968)).
"1 Sm In re Tinseltown, Inc., 212 U.S.P.Q. (BNA) 863, 866 (T.TAB. 1981) (citing WEBrER'S THIRD
NEW INTERNATIONALDIcnONARY 294 (3rd ed. 1976)).
5
" Se In reMavety Media Group Ld., 33 F.3d 1367, 1372-73 (Fed. Cir. 1994).
116Id at 1373.
"' Id at 1369 (citingWEBsTER's NEW CoLEGATEDICIoNARY 1178 (1981)).
118 Id at 1373.
482 UMVERSITY OFLOUISVILLE IA WREVIEW [Vol. 49:465

composite of the general public would not necessarily attach a vulgar

meaning to the term "tail" in BLACK TAIL.'1
In In re Riverbank Canning Co., for example, in affirming the rejection of
MADONNA as a mark on wine, the CCPA took into consideration that,
despite prior registrations of the mark for a host of other goods, the court
looked at "the excessive use of wine" as "a great evil" and the existence of
the Virgin Mary as "the highest example of the purity of womanhood." 20
In In re Old Glory Condom Corp., the examining attorney argued that
registration for prophylactics that were colored red, white, and blue,
resembling the American flag, would surely offend a substantial composite
of the American public because the American flag was a "sacrosanct"
symbol. 121 She supported her refusal by alluding to an unsuccessfil
proposed amendment to the U.S. Constitution to prohibit flag burning and
the public outcry that followed rock star Madonna doing a TV commercial
scantily clad in the American flag.122 In denying the registration of the
aforementioned mark, MOONIES, for a doll that drops its pants, the
examining attorney cited an article appearing in U.S.A. Today which
indicated that the term "Moonies" may be viewed by some members of The
Unification Church as being derogatory. 23 Reversing the examining
attorney's refusal, the TTAB noted, among other things, that there were
many more articles that suggested the term "moonies" was not
derogatory.124

VI. CONCLUSION

When BULLSHIT for handbags will scandalize the public, but BIG
PECKER for T-shirts will not; when CLEARLY QUEER for clothing will
register, but QUEER GEAR, also for clothing, will not; when TWATTY
GIRL for cartoon strips is rejected, but TWATTY for cartoon strips is not,
it is time to reexamine the structure and implementation of the section 2(a)
bars. The bar to registration for marks that are scandalous, immoral, or
disparaging is simply not effective as applied. Section 2(a) not only expands
trademark law beyond its basic foundation-to promote fair competition, to

"' See id at 1374. It is an open question whether the appmpriate inquiry would be a substantial composite
of the general public, or the general public who might be likely to purchase (or encounter) adult-entertainment
magazines.
120Set In re Riverbank Canning Co., 95 F.2d 327, 329 (C.C.P.A. 1938).
1'2 Se In re Old Glory Condom Corp., 26 U.S.P.Q.2d (BNA) 1216, 1217,1220 (T.TAB. 1993).
122See id at 1220-21.
123
Set In re In Over Our Heads Inc., 16 U.S.P.Q2d (BNA) 1653, 1654 n.4 (T.TAB. 1990).
124 Said
2011] CALLING BULLS**T ON THE LANHAMACT 483

prevent consumer confusion, and to protect consumers' ability to distinguish

goods in the marketplace-but also it creates an unworkable standard that
is unclear and inconsistently applied, both at the examination level and the
appellate level. At the registration level, trademark examiners are forced to
make decisions based on inadequate evidence. In addition, application of
the standards across the board fails to take into account contextually
relevant information, including the reappropriation of words and phrases by
disadvantaged groups. These content-based determinations are highly
subjective and vary with time, context, and tribunal. By creating an
ambiguous normative framework with little predictive quality, the section
2(a) bars are unreasonable and ineffective.