Tuesday, December 29, 2009

What is Immoral or Scandalous Matter?

Some may think this is a very subjective definition, but I assure you, the USPTO sees it differently. Here is what they have to say about it:

“Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

Although the words “immoral” and “scandalous” may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter.

In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined “scandalous” as, inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. McGinley, 660 F.2d at 486, 211 USPQ at 673 (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and interpersonal relationship topics” and for “social club services,” held scandalous). The statutory language “scandalous” has also been considered to encompass matter that is “vulgar,” defined as “lacking in taste, indelicate, morally crude.” In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971).

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word...(1-800-JACK-OFF and JACK OFF held scandalous, where all dictionary definitions of “jack-off” were considered vulgar) ...(Board sustained opposition finding that SEX ROD was immoral and scandalous under §2(a) based on dictionary definitions designating the term “ROD” as being vulgar, and applicant’s admission that SEX ROD had a sexual connotation)...(multiple dictionary definitions indicating BULLSHIT is “obscene,” “vulgar,” “usually vulgar,” “vulgar slang,” or “rude slang” constitute a prima facie showing that the term is offensive to the conscience of a substantial composite of the general public).”

A lot of verbiage to read in an attempt to get a feel for “scandalous” or “obscene”, I know, but the USPTO is pretty strict on their definition. And it’s no use using your creative spelling variations such as FUK or SH*T, the USPTO isn’t going to be fooled or lenient. Both of those variations are Abandoned marks after the USPTO had this to say:

Refusal: Immoral or Scandalous Matter

Registration is refused because the proposed mark consists of or comprises immoral or scandalous matter:

Certain commonly “scandalous”, or at least questionable words or phrases, may be allowed depending on the connotation and/or industry. For example, DICK, a series of hand tools, is a registered trademark. Since no evidence of a refusal for scandalous matter is recorded, I can only attribute this to the fact that Dick is a common nickname for Richard and that the product is nothing at all to be perceived as immoral or scandalous. I am sure it would be a different outcome if the product was, for example, a line of adult toys.

On the same token, we must consider that an application is at the mercy of the Examining Attorney at the USPTO that receives the application. An example is the mark YOU [heart] COCK, refused and now abandoned on the basis of immoral and scandalous matter, while COCK BRACELET, sporting a logo inclusion of a rooster, is registered for jewelry, namely bracelets.

So, you see, there is a small window of gray area, again depending primarily on connotation, but also on the subjective opinions of the specific Examining Attorney. A good rule of thumb, however: don’t expect to get a registered trademark and make a million bucks on your favorite, crude, insulting cuss rant that you coined over a couple of drinks with your buddies. Have fun, but keep it clean, folks!

- Mention our blog & receive $25 off of our Premium Package -
- Put BLOG in the Contact Name field -

No comments: