121 Alhambra Plaza, Suite 1500 Coral Gables, FL 33134
+1 (305) 489 1901
Our office hour: Mon - Fri
09.00am - 05.00pm
Are you considering registering a trademark that “consists of or comprises immoral, deceptive,
or scandalous matter, or matter which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or
disrepute”? A landmark Supreme Court ruling now makes that possible.
On June 19, 2018, the Supreme Court of the United States struck down the disparagement
provision of Section 2(a) of the Trademark Act, ruling it unconstitutional because it violates the
Free Speech Clause of the First Amendment. Previously, Section 2(a) of the Lanham Act barred
the U.S. Patent and Trademark Office (USPTO) from registering trademarks deemed scandalous,
immoral, or disparaging (15 U.S.C. § 1052(a)).In the highly competitive landscape of digital marketing, it’s not uncommon for businesses to bid on their competitors’ brand names as keywords in Google Ads. It might seem like a clever strategy to capture traffic from users already searching for a similar product or service—but is it legal?
Let’s break down the legal and strategic implications of using competitor trademarks in your Google Ads campaigns.
The case centered around Simon Shiao Tam, the frontman of the Portland-based Asian
American rock band, THE SLANTS. Tam applied for a federal trademark for THE SLANTS under
the category “entertainment in the nature of live performances by a musical band.”
Tam deliberately chose the name The Slants to reclaim and take ownership of Asian
stereotypes. However, the USPTO denied his trademark application, arguing that the name was
likely to be perceived as disparaging to people of Asian descent under Section 2(a). The
Examining Attorney pointed out that “slants” had a long history of being used to mock a
physical feature of Asian individuals.
The Supreme Court unanimously ruled that the disparagement clause of the Lanham Act
violated the First Amendment. The Court held that:
• The government cannot penalize private speech simply because it disapproves of the
message.
• Trademark registration does not constitute government speech—rejecting the USPTO’s
argument that because trademarks are registered by the government, they fall outside First
Amendment protection.
• Denying trademark registration based on “offensiveness” constitutes viewpoint discrimination,
which fails both strict and intermediate scrutiny under First Amendment law.
To pass strict scrutiny, a law must:
1. Serve a compelling government interest
2. Be narrowly tailored to achieve that interest
3. Be the least restrictive means of achieving that interest
The Court found that Section 2(a) failed this test. Even under the less stringent “intermediate
scrutiny”—which requires a law to further an important government interest through
substantially related means—the USPTO’s argument still failed. The Court concluded that the
government had no legitimate interest in restricting trademark speech under Section 2(a).
This ruling had significant consequences, particularly in the long-standing dispute over the
Washington NFL team’s name, the “REDSKINS”.
For over 25 years, Native American tribes fought to cancel the team’s federal trademark
registrations, arguing the term was offensive and disparaging. However, following the Tam
decision, the U.S. Court of Appeals for the Fourth Circuit vacated previous rulings that had
canceled the Washington Redskins’ trademarks in January 2018.
The FUCT Case & The Fight Over “Scandalous” Trademarks
The Supreme Court’s decision in Tam paved the way for another case: Erik Brunetti v. USPTO.
Brunetti sought to trademark “FUCT” for his clothing brand. The USPTO rejected his application,
calling the mark “immoral” and “scandalous” under Section 2(a). However, the U.S. Court of
Appeals for the Federal Circuit ruled that while “FUCT” may be vulgar, it was still protected
speech under the First Amendment.
The USPTO appealed to the Supreme Court in Iancu v. Brunetti, seeking to reinstate the ban on
scandalous trademarks. The case’s outcome would determine the fate of all trademarks deemed
“immoral” or “scandalous” by the USPTO.
As we await the final decision in Brunetti, our firm is closely monitoring its impact on trademark
applications like that of our client, Slangology Apparel, LLC.
Slangology applied to trademark:
👉 “SWEET PWUSSY SATDAY” for use in commerce on:
• Bandanas
• Headgear (caps and hats)
• Jerseys
• T-shirts (short-sleeved and long-sleeved)
The USPTO initially rejected the application, citing Section 2(a)’s ban on “immoral or
scandalous” marks. However, after we presented legal arguments against the refusal, the
Examining Attorney suspended further action, pending the Supreme Court’s decision in Brunetti.
With the Tam decision striking down the disparagement clause and the Brunetti case challenging
the scandalous/immoral provision, we are witnessing a major shift in trademark law.
For now, the message is clear: the First Amendment protects free expression, even in trademark
law.
So, if you’re considering filing for a trademark that might be considered disparaging, immoral, or
scandalous—now is the time!
Need Help With Your Trademark?
At Augusto Perera, P.A., we specialize in trademark protection and intellectual property law.
Whether you’re fighting a trademark refusal or proactively registering your brand, we can help.
