Scandalous or Immoral, Disparaging, or Deceptive Marks: Can They Be Registered?

Scandalous or Immoral

Every once in a while the U. S. Patent and Trademark Office is faced with an application that could potentially be deemed “scandalous or immoral.” Denial of marks that are scandalous comes from Section 2(a) of the Lanham Act which states,

No trademark by which the goods of applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a) consists of or compromises immoral… or scandalous matter; or matter which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.

Immoral or scandalous marks are defined as “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable;… giving offense to the conscience or moral feelings;…[or] calling [for] condemnation.” In Re Fox, 702 F.3d 633 (Fed. Cir. 2012).

Take the case of the Chinatown dance rock band, The Slants. The band felt that they would have no problem registering the name of the band because they were the only ones that used it. However the USPTO found that the term “slant” was a derogatory term for someone of Asian descent and therefore the application was rejected. The Slants were surprised to say the least especially because according to their press release regarding this issue they are “widely known as an advocate for Asian American rights, being involved with numerous API [Asian and Pacific Islander] organizations and charities. The Slants have traveled throughout North America representing racial justice workshops, inspiring youth to reconsider stereotypes of Asian Americans, to take pride in their cultural heritage.” They filed an appeal on April 21, 2014.

Other examples of initially rejected trademarks for scandal or immoral reasons are “LMFAO” for the Los Angeles-based dance-pop duo, “COCAINE” for soft drinks, and “KHORAN” for wine.

Disparaging Marks

Under §2(a) of the Lanham Act it states that if a mark might disparage a person living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute the mark may not be registered.

Two tests are used to decide whether a mark is in fact disparaging. First, with marks that disparage a subset of people, such as a racial or religious group, the following questions are asked:

  1. What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services in the manner in which the mark is used in the marketplace in connection with the goods or services?
  2. If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, might that meaning be disparaging to a substantial composite of the reference group? In re Squaw Valley Dev Co (80 USPQ 2d (BNA) 1264, 1267 (TTAB 2006).

Second, a mark that is potentially disparaging to an individual or commercial entity is unable to be registered if:

  1. The mark “reasonably would be understood as referring to the plaintiff;” and
  2. The mark “would be considered offensive or objectionable by reasonable person of ordinary sensibilities.”Bos Red Sox Baseball Club, Ltd P’ship v. Sherman, 88 UPSQ 2d (BNA) 1581, 1589 & n7 (TTAB 2008).

The main difference between these two tests is that the first test considers how the disparaged group views the mark and the second test is based on how a reasonable person would view the mark.

The most publicized “disparaging” mark controversy in recent years is the cancellation of the Redskin football team’s trademark registration because it considers the name and logo disparaging to Native Americans. In issuing its decision, the Trademark Trial and Appeal Board found the evidence “overwhelmingly supports the determination” that the team’s name is disparaging. The Appeal Board noted that some in the Native American community do not find the term disparaging, but those opinions did not negate the feelings of others within the community who found it disparaging. The Redskins filed an appeal on August 14, 2014.

Marks that Wrongly Suggest Connection with Persons, Institutions, Beliefs or National Symbols

The Lanham Act also prohibits registration of marks that falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols. Marks that make these types of suggestions are prohibited from doing so because the Court of Appeals for the Federal Circuit held that the Lanham Act § 2(a) was intended to protect privacy interests.

An examiner of the trademark must prove the following if he or she believes that the mark falsely suggests a connection with persons, institutions, beliefs or national symbols:

  1. The trademark is the same as or close approximation of the name or identity previously used by another person or institution;
  2. The applicant’s trademark is recognized as uniquely pointing to the other person;
  3. There must be no connection with the other person or institution and the applicant’s goods or services; and
  4. The person’s name or likeness must be sufficiently famous that the connection would be apparent by the consumer.

Some recent examples of rejected marks for their false connection is an attempt to register the mark “BLUE IVY CARTER NYC” for a clothing line. The examiner showed evidence that Blue Ivy Carter is the child of famous musicians Beyoncé and Jay-Z and held that the purchasing public would presume that there is a connection between the famous Blue Ivy Carter and the applicant’s clothing line.

Deceptive Marks

A mark is considered deceptive if:

  1. It falsely indicates that the good or service has the characteristic;
  2. Prospective purchasers are likely to believe that the mis-description correctly describes the good or service; and
  3. The misrepresented facts would be material to reasonable consumer in deciding whether or not to purchase the good or service. Lanham Act §2(a).

An example of a deceptive mark is the proposed mark “Lovee Lamb” for an all synthetic automobile seat cover. The Court of Appeals for the Federal Circuit held that this mark was deceptive in that it falsely suggested that the seat covers contained wool and therefore prospective consumers would likely believe that using the word “Lamb” in the mark was an accurate description of the material used to construct the seat covers, especially since sheepskin seat covers were available in the marketplace. In re Budge Manufacturing Co., Inc., 857 F.2d 773 (Fed. Cir. 1988).

Leave a Public Comment