According to Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register is prohibited. What might cause a trademark to be considered offensive or unregistrable?
Defining “Immoral” and “Scandalous”
The words “immoral” and “scandalous” may have somewhat different connotations, but according to case law, immoral matter is included in the same category as scandalous matter. Both dictionaries and statutory language define the word scandalous to mean anything that is “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation”.
Determining what is Immoral and Scandalous Matter
Trademark law states that “the meaning imparted by a mark must be determined in the context of the current attitudes of the day”, which means that full consideration is given to what contemporary society considers acceptable and appropriate.
Still, whether or not the mark is scandalous is ascertained, not necessarily from the standpoint of the vast majority, but, from the standpoint of a substantial composite of the general public. This means that if a substantial quantity of persons would perceive the mark, in the context of its marketplace, to have a scandalous or vulgar meaning, the mark in its entirety comprises scandalous material.
If a mark is refused on the grounds that it is immoral or scandalous, the examining attorney must prove that a substantial group of the general public would find the mark offensive or vulgar. The attorney’s evidence might include magazine or newspaper articles and/or dictionary definitions. Because times change, along with people’s attitudes and perspectives, examining attorneys may not rely solely on earlier court decisions where a term was considered scandalous.
It is also worth noting that, if a mark is determined to be scandalous or immoral, the fact that it was intended to be humorous and a substantial number of people would find it humorous, is immaterial.
If you are considering trademark registration, but are worried that your mark might be considered offensive and become unregistrable, or if your mark has already been refused as scandalous matter, please feel free to contact me for legal assistance.
Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida. She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.