Dirty, Naughty, and Four-Letter Words: Where Trademarks End and Scandalous Matter Begins

[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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