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!

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Monday, December 28, 2009

Suggestive Marks


One of our amazing researchers, Heather Roberts, took some time to write this article, which I'm extremely thankful as time has been limited as of late. Heather wrote a few more great articles that I'll be sharing during the rest of the week. Thanks Heather!

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

What is a Suggestive Mark?

Here’s what the USPTO says: “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services...(SNO-RAKE held not merely descriptive of a snow-removal hand tool)...(QUIK-PRINT held merely descriptive of printing services)...(BUG MIST held merely descriptive of insecticide).

Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.”
Basically, suggestive trademarks contain words or words that are seen as suggesting the product or service being offered but are not directly descriptive.

Should I Choose a Suggestive Mark?

While suggestive marks can walk the fine line of descriptive, it is certainly possible to find a suggestive mark that will lead your consumer to a certain conclusion of what product or service you offer by merely looking at the name.

While keeping in mind the issues of descriptive marks and making a conscious lean toward a suggestive mark, it will be something you’ll need to decide in terms of your industry, your customers, your competitors, your customers and your overall plans. Some of our clients really WANT to find a name that does the explaining for them in terms of what the service or product is at a glance at the name. Other times, our clients want something very unique without suggestion to the service or product within the name.


While Suggestive marks don’t necessarily “tell” a person what the product or service is, they do tend to make a very strong impression of what it might be. This may help cut down on explaining what the product or service is in the way or marketing, website content and advertising space.

What to Avoid When I Create a Mark:

Creative a suggestive mark is similar to that of creating a business name. You'll have to keep in mind all of the issues outlined above (industry, customers, plans, etc.). But when it comes to suggestive marks, don’t rely simply on spelling variations of a descriptive word or words associated with your product or service.

Because the USPTO will assign what is called a PSEUDOMARK when presented with a trademark application with unconventional spelling, this can be a curse to the success of your suggestive mark. We’ll explore PSEUDOMARKS in more detail another time, but what it means in laymen’s terms is that the USPTO is recognizing an unconventional spelling to mean a very conventional word or words.


As with the example shown above, the trademark Sno-Rake for a snow-removal hand tool is registrable on the Principal Registrar, however, if that description had read: “snow-removal rake” then the mark would likely be refused for being merely descriptive.


Here is a good rule of thumb:


* If any word or words of the suggestive mark also appear in the description of the product or service, even if spelled unconventionally, it is likely that the mark will be deemed descriptive.


If you want a suggestive mark, my suggestion (pun intended) is to put on your thinking cap, find variations on the name you’ve got in mind using a thesaurus and/or dictionary and play with variations of 2 or 3 word-combos. Always be sure to check your competition! If your competition has a variation on a suggestive mark that is similar to what you want to register, take heed as you don’t want your customers going to them on accident. Be creative, try out your choices on your friends and family, use them as your focus group and by all means, have fun with it! Happy suggestive mark hunting!

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Friday, December 04, 2009

Arbitrary Trademarks


The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

Arbitrary marks are not as strong as fanciful marks but they are still strong in terms of trademarks. Choosing an arbitrary mark certainly makes the trademark filing process easier, provided, of course, that the mark is legally available.

What is an Arbitrary Mark?

Here’s what the USPTO says:

“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.”

This is an area that confuses folks a bit. I know that’s a question we get a lot – I can’t trademark a name that’s in the dictionary, right? Well, like anything with trademarks, it’s a gray area. If the product is apple juice then, no, the name APPLE cannot be filed for a trademark as it’s descriptive of the goods. However, if the product is a line of computers then, yes, APPLE can be filed for a trademark.


As long as your arbitrary word is just that – arbitrary – in relation to your goods/services AND the name is legally available, you’ve got a strong mark on your hands!

How do I Choose an Arbitrary Mark?

Choosing an arbitrary mark is similar to that of creating a business name. When it comes to arbitrary marks, your imagination is really needed. Here are some helpful guidelines:

1) Write down all of the adjectives that you want your customer to associate with your product or service.


2) Research your competitors - how often are arbitrary words used? Do most of your competitors use descriptive terms? What kind of keywords/keyphrases are used when searching for your product or service online?


3) What's the personality of your business? Is it serious and formal? Is it fun and funky? Describe your business as if it were a friend of yours.


Those are just some ways to go about finding the "feeling" that you want your product or service to convey. Once you’ve got that set, start thinking about all the different words that convey that feeling.


For instance, if your business is fun and funky words/phrases like Grave Concerns or Staid are probably not a good idea. Conversely, if your business is serious and formal, you’ll probably want to stay away from words like Bubbles or Poodles. Most of all, have fun with it!

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Thursday, December 03, 2009

Fanciful Trademarks


The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

On the very left of that continuum are fanciful marks, which arguably are the strongest sort of marks to file. Filing these types of marks increase the likelihood of trademark registration (provided, of course, that the mark is legally available).

What is a Fanciful Mark?

Here’s what the USPTO says: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) or are completely out of common usage (e.g., FLIVVER).”

Basically, fanciful trademarks are either made up words or words that are seen as archaic.

Should I Choose a Fanciful Mark?


While fanciful marks are certainly the strongest types of trademarks, does it necessarily mean you should choose a fanciful word for your service or product? This is something you’ll need to decide in terms of your industry, your customers, your competitors, your customers and your overall plans.


Fanciful marks don’t necessarily “tell” a person what the product or service is so informing the public of that might require extensive work on your end. For a fantastic article about this very subject, I suggest reading Monster Amazon Crocs - Why Creative Brand Names Work Best by Phillip Davis.

How do I Create a Fanciful Mark?

Creative a fanciful mark is similar to that of creating a business name. You'll have to keep in mind all of the issues outlined above (industry, customers, plans, etc.). But when it comes to fanciful marks, your imagination is really needed. Here are some helpful guidelines:

1) Write down all of the adjectives that you want your customer to associate with your product or service.

2) Research your competitors - how often are fanciful words used? Do most of your competitors use descriptive terms? What kind of keywords/keyphrases are used when searching for your product or service online?

3) What's the personality of your business? Is it serious and formal? Is it fun and funky? Describe your business as if it were a friend of yours.

Those are just some ways to go about finding the "feeling" that you want your product or service to convey. Now when it comes to actually creating the fanciful mark, you can peruse through dictionaries of archaic words should you want to go that route.

If you want a completely made-up word, think about words and letters in terms of appearance and sound. For instance, many pharmaceutical companies employ common sounds (e.g. Vs, Xs and Zs are often used). Start with two or three letter combos and most of all, have fun with it!

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