In re McGinley

Opinion

 [***670]   [*482]  Before MARKEY, Chief Judge, RICH, BALDWIN, MILLER, and NIES, Associate Judges.

MILLER, Judge.

This appeal is from a decision of the Patent and Trademark Office ("PTO") Trademark Trial and Appeal Board ("board"), reported at 206 USPQ 753 (1979), affirming the examiner's rejection of appellant's applications to register a trademark and service mark on the basis that it comprises "immoral… or scandalous matter" within the meaning of section 2(a) of the Lanham Act. ¹ We affirm.

BACKGROUND

The involved mark comprises a photograph of a nude man and [**2]  woman kissing and embracing in a manner appearing to expose the male genitalia. ² According to the applications for registration, it is used for "Newsletter Devoted to Social and Interpersonal Relationship Topics" and "Social Club Services." The evidence shows that the newsletter has to do with discussions of sexual topics such as bisexuality, homosexuality, masturbation, and fornication; that the services include sponsoring and arranging parties for "swinging," which appears to be a form of group sex. ³ Initially, the PTO examiner refused registration under section 2(a) on the basis that "[t]he mark indicates that the newsletter deals with illicit sexual intercourse" and that "[t]he mark indicates that the services deal with illicit sexual intercourse." Later, the examiner requested that appellant submit additional evidence, saying: "From the specimens submitted it can not be determined, in exactitude, the services performed by applicant. The mark, in relation to the services, may or may not be immoral or scandalous." After considering the additional submissions, the examiner finally refused registration on the basis that  [***671]  appellant's services involve "various 'mini-affairs'  [**3]  between two unmarried people; sometimes two or more unmarried people." He declared: "Such activities are considered deviations from the sexual norm of husband and wife relations. Such activities are immoral or scandalous…. The mark graphically indicates the activity carried on in applicant's Club; sex not normally sanctioned by (even today's permissive) social standards." (Emphasis supplied.)

 [**4]  [*483]   The board affirmed the examiner's decision, but took two different approaches. First, it considered that the newsletter and services (as broadly described in the applications) ⁴ --

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