[Originally published 05/24/2011]
What if our
trademark system mirrored the ratings system of the Motion Picture Association
of America? Imagine an offensive logo followed by the trademark symbol, TM, and a ratings symbol - maybe NC-17
- to indicate the content. Under the imagined scenario, how might the
following fare?
-
WIFE BEATER for t-shirts
-
COCAINE
for soft drinks
-
AL-QAEDA for t-shirts
-
NUN STALKER for adult entertainment
Of course,
it's ridiculous to imagine a ratings system for words and images that are
accessible to nearly everyone. With movies, the offensive content generally requires
a ticket purchase. Similarly, offensive music (labelled with the "Parental
Advisory-Explicit Content" warning) requires purchase and playback. Logos
and marks lack the barriers of movies and music. Logos and marks are easily
seen.
Despite
being ridiculous, a trademark ratings system, or something akin thereto, might be
plausible if not for the Lanham Act's impediment to offensive trademarks. Section
2(a) of the Lanham Act, 15
USCS § 1052, bars
registration of trademarks that consist of or comprise "immoral,
deceptive, or scandalous matter." Most states track this language exactly,
and on an international level, Article 6quinquies of the Paris Convention
permits member states to refuse or invalidate registration of marks that are
"contrary to morality or public order."
Is it good policy to
bar immoral or scandalous trademarks? Do good reasons exist to deny a trademark
for CRAZY BITCH pajamas, AUDIOTURD for digital media, or a bottle of whiskey
shaped like a naked woman? Several reasons have been put forth to justify the Lanham
Act's ban. They include:
- preventing tax money expenditures on inappropriate trademarks
- preventing the government's approval of inappropriate trademarks
- protecting society's sensibilities
As with the
MPAA's ratings system, the Lanham Act's bar against "immoral,
deceptive, or scandalous matter" isn't without shortcomings. In the
commentary, Trademarks Laid Bare: Marks
that May Be Scandalous or Immoral, authors Anne Gilson LaLonde and Jerome
Gilson examine multiple "immoral,
deceptive, or scandalous" trademarks and analyze the USPTO's treatment
of such marks. In highlighting the USPTO's shortcomings, they note:
The difficulties with the USPTO deciding
whether marks are "scandalous" and "immoral" are manifest,
and consistency is topmost. The Office has no independent standards that apply
to such determinations, which are made by dozens of different individuals of
varying political, religious, geographic and family backgrounds. Further, it
compounds the issue by refusing to acknowledge previous registrations of
similar marks as precedential.
Another intractable problem is whether there is
in fact a general public view about the offensiveness, or not, of any given
trademark, and if there is, whether such a view can be determined by the USPTO
under its current procedures. The Office has tremendous expertise in many areas
of trademark law, but none in discerning the temperature of the public's moral
outrage.
Even if a majority would not be offended at
marks that disturb a minority, those could still be barred from registration
under a different provision of the Act. Racially offensive marks, for example,
could be considered disparaging of "persons, living or dead, institutions,
beliefs, or national symbols" and rejected to the same extent as scandalous
and immoral marks.
(footnotes
omitted)
Whatever the shortcomings, the Lanham Act's ban is probably
here to stay. Like the movie ratings, which have held strong since 1968,
the ban against "scandalous"
and "immoral" material has been in existence for over 100 years. The
ban first surfaced in U.S. federal law in the Trade-Mark Act of 1905 and, in
1946, was carried over to the Lanham Act in Section 2(a). History aside, the
ban does have problems, as mentioned by LaLonde and Gilson. To rectify these problems, LaLonde
and Gilson have offered several solutions, including:
- amending
or repealing the statutory language
- looking
to third-party registrations as precedent, though not binding
- providing
additional guidance to examining attorneys
- changing
the "scandalous" standard
from "the standpoint ... of the general public" to "actual or
potential purchasers"
- passing
all marks to publication
- setting
up a completely new procedure
Lexis.com subscribers can read Anne Gilson LaLonde and Jerome Gilson's entire commentary, Trademarks Laid Bare: Marks that May Be Scandalous or Immoral.
This 89 page article is a scholarly treatment of
scandalous and immoral trademarks in the United States. In order to address the
subject comprehensively, candidly and accurately, the authors have included
subject matter that may offend some readers.
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