Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to federal trademark registration of immoral or scandalous matter. The ban on scandalous and immoral trademark registrations is not new. It first came into federal law in the Trade-Mark Act of 1905 and reaffirmed as part of §2(a) of the Act of 1946.
There is little legislative history concerning the intent of Congress with regard to the provision. Therefore, the USPTO directs its examiners to is interpret the term “scandalous” by looking to “its ordinary and common meaning.” Case law has given a little more guidance by saying that in order to prove that a mark is scandalous, the USPTO must demonstrate that the mark is “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable, giving offense to the conscience or moral feelings or calling out for condemnation” or is “vulgar,” defined as “lacking in taste, indelicate, morally crude.”
There is no requirement that a mark’s vulgar meaning be the only relevant meaning, or even the most relevant meaning. That means, an examining attorney need only prove the existence of one vulgar meaning to justify a refusal that the mark is scandalous.
One looks at both the relevant marketplace for the goods or services identified in the application, and t a “substantial composite of the general public” in the context of contemporary attitudes. This is not necessarily how the majority of the public feels, but simply a substantial composite, at this time, not 20 years ago or 10 years from now. “Whether applicant intended the mark to be humorous, or even whether some people would actually find it to be humorous, is immaterial.” In re Luxuria, s.r.o., 100 USPQ2d at 1149 (quoting Boston Red Sox Baseball Club, 88 USPQ2d at 1588).
So what does that all look like in practice? (WARNING – Somewhat edited swearing ahead!)
|Scandalous||Not so Scandalous|
|AW SH*T (and pretty much any variation of “sh*t” you can think of with 165 applications and counting)
1-800-JACK-OFF and JACK OFF
A photograph of a nude, reclining man and woman, kissing and embracing
A bottle in the shape of a hand with middle finger extended upwards
DICK HEADS positioned directly underneath caricature of a human head composed primarily of graphic and readily recognizable representation of male genitalia
A graphic design of a dog defecating
OLD GLORY CONDOM CORP and design comprising the representation of a condom decorated with stars and stripes in a manner to suggest the American flag
ACAPULCO GOLD when used as a mark for suntan lotion
So if you are looking at capturing a certain market with an off-color (or worse mark), be aware that not only will you likely ruffle a few feathers and collect some disapproving glances and social media mentions, but federal trademark protection may not be available.