Feature
By Perry J Viscounty, Jennifer L Barry,
David D Troutman and Tim B Henderson
Watch your mark –
navigating the prohibitions
on immoral, scandalous and
disparaging trademarks
While a cheeky double entendre might once have been
allowed registration, a recent Federal Circuit decision
appears to signal that such days are over. Applicants
for borderline marks should consider all potential
interpretations, as well as the context in which their
marks might appear
What do you get when you combine a gamecock and a lollipop? An
unregistrable trademark. This was the punch line delivered by the
Federal Circuit in In re Fox (702 F 3d 633 (Fed Cir 2012)), which sounds
a warning to all would-be cheeky trademark applicants: beware the
Lanham Act’s prohibition against registering immoral, scandalous or
disparaging marks.
To put it into context, Fox is merely a recent addition to
(and, perhaps, a particularly irreverent example of) a growing
number of judicial and administrative decisions embracing an
increasingly restrictive reading of the Lanham Act’s prohibition
against such marks. Thus, while a cheeky double entendre might
once have casually passed muster, those days appear to be over.
An unsuccessful applicant can continue marketing lollipops under
its clever (or not) rooster-related moniker – but it will have to do
so without the blessing of the US Patent and Trademark Office
(USPTO) and the accompanying protections that federal trademark
registration affords.
While it is clear, in light of Fox and its predecessors, that
obviously vulgar marks are unlikely to be registered, this area of
trademark law is fraught with grey areas and close calls. Thus, an
applicant with a potentially borderline mark would be well advised
to do its pre-application homework by carefully considering all
potential interpretations of, and public reaction to, its mark,
giving special consideration to the context in which the mark
will be used. In the case of a double entendre or a mark otherwise
susceptible to multiple interpretations (one of which may be
offensive or risqué), an applicant should also consider whether it is
possible to add new, unobjectionable words or material to its mark
to direct attention away from an unfavourable interpretation and
increase the odds of registration.
The Lanham Act prohibition
The statutory prohibition against immoral, scandalous or
deceptive marks is found in Section 2(a) of the Lanham Act, 15
USC §1052(a), which provides: “No trademark by which the goods
56 World Trademark Review December/January 2014
of the 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 comprises 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.”
Two distinct, if somewhat imprecisely defined, categories of mark
are subject to the Lanham Act prohibition:
• marks that are found to be “immoral” or “scandalous”; and
• marks that are deemed “disparaging”.
Immoral or scandalous marks
Immoral or scandalous marks are “shocking to the sense of truth,
decency, or propriety; disgraceful; offensive; disreputable;…
giving offense to the conscience or moral feelings;… [or] calling
[for] condemnation” (Fox, 702 F 3d at 635 (alteration in original)
(internal citations and quotations omitted)). Vulgar marks, or
designs depicting a vulgar gesture, also fall into this prohibited
category (Fox, 702 F 3d at 635; In re Boulevard Entm’t, Inc, 334 F 3d
1336, 1340 (Fed Cir 2003); In re Luxuria, sro, 100 USPQ 2d (BNA) 1146,
1149 (TTAB 2011) – rejecting a “vulgar” mark consisting of “product
packaging, namely, a bottle in the shape of a hand with middle
finger extended upwards”).
These definitions of ‘immoral’ and ‘scandalous’ do little more
than beg the question: what is vulgar, indecent or offensive? The
answer is unclear and, indeed, can change over time, since as the
Federal Circuit has stated, “[t]oday’s scandal can be tomorrow’s
vogue” (In re Mavety Media Grp Ltd, 33 F 3d 1367, 1371 (Fed Cir 1994)
– Mavety provides a partial list of marks found scandalous, or not,
for the adventurous reader interested in some of the off-colour
marks sought in the past)). It appears well established that the bar
for ‘scandalous’ is set at a lower level than that for obscenity (In re
McGinley, 660 F 2d 481, 485-86 & n9 (CCPA 1981)).
The Federal Circuit has attempted to anchor the scandalousness
analysis in something more concrete, requiring that the determination
“be made ‘in the context of contemporary attitudes,’ ‘in the context
of the marketplace as applied to only the goods described in [the]
application,’ and ‘from the standpoint of not necessarily a majority,
but a substantial composite of the general public’” (Fox, 702 F 3d at 635
(alteration in original) (citing Mavety, 33 F 3d at 1371)).
The Fox case, while applying the above-referenced contextual
analysis, seems to represent a shift towards a much stricter
view of potentially immoral or scandalous marks. Before Fox, a
dirty double entendre did not preclude registration. Compare
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In re Hershey (6 USPQ 2d (BNA) 1470, 1472 (TTAB 1988), which
allowed the registration of a mark with an expressly recognised
“double entendre,” one meaning of which may refer to a
large woodpecker) to Fox (702 F 3d at 634, which upheld the
determination that the mark describing a rooster-shaped lollipop
was unregistrable because “where it is clear from dictionary
evidence that the mark as used by the applicant in connection
with the products described in the application invokes a vulgar
meaning to a substantial composite of the general public, the
mark is unregistrable” (alterations omitted) (internal citations and
quotations omitted)).
Disparaging marks
While immoral or scandalous marks risk offending the public at
large and are thus unregistrable, the Lanham Act’s prohibition
also extends to marks that risk offending more discrete subsets
of the populace (ie, marks that are disparaging). Two different
tests are used to determine whether a mark is disparaging,
depending on the nature and number of the candidate or
candidates for disparagement.
First, for marks that potentially disparage a group of people
(typically an ethnic or religious group), the relevant test asks the
following questions:
•
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, and the manner in which
the mark is used in the marketplace in connection with the
goods or services?
•If that meaning is found to refer to identifiable persons,
institutions, beliefs or national symbols, might that meaning be
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disparaging to a substantial composite of the referenced group?
(In re Squaw Valley Dev Co (80 USPQ 2d (BNA) 1264, 1267 (TTAB
2006) (citation omitted).)
With regard to the second prong, vocal opposition to a mark
may doom it as disparaging, notwithstanding vocal supporters
within the referenced group. For example, in In re Heeb the
applicants sought to register the term HEEB for clothing,
but were met with significant opposition from other Jewish
individuals and organisations, which felt that the word was
disparaging (89 USPQ 2d 1071, 1072-73, 1077 (TTAB 2008)). The
Trademark Trial and Appeal Board (TTAB) found it irrelevant
that the mark had support within the Jewish community and
the applicant claimed to be attempting to reclaim a previously
derogatory term and recast it as a term of Jewish empowerment,
because a substantial composite of the public (including a vocal
opposition within the Jewish community) found it disparaging
(id at 1072-73, 1077). The TTAB noted that “[w]hile applicant
may intend to transform this word, the best that can be said
is that it is still in transition” (id at 1077). By so noting, the
TTAB recognised that a mark that is deemed disparaging at
present may not necessarily be prohibited forever. Accordingly,
applicants should consider whether the time is right to reclaim
or otherwise register a previously offensive phrase or term,
carefully considering the likely contemporary reaction of
potentially offended groups.
Second, if a mark is potentially disparaging to an individual or
commercial entity, it will be unregistrable under the Lanham Act
prohibition on disparaging marks if:
•the mark “reasonably would be understood as referring to the
plaintiff”; and
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57
Feature: Watch your mark
•
t he mark “would be considered offensive or objectionable by a
reasonable person of ordinary sensibilities” (Bos Red Sox Baseball
Club, Ltd P’ship v Sherman, 88 USPQ 2d (BNA) 1581, 1589 & n7 (TTAB
2008) (citations omitted)) (finding the mark SEX ROD an offensive
and disparaging distortion of the Red Sox baseball team’s marks).
In other words, unlike the test for disparaging a group of
people, the question for individuals and commercial entities is
whether a reasonable person would be offended by the mark or
find it objectionable, rather than a substantial composite of the
referenced group.
USPTO’s initial burden of proof regarding unregistrability
Although the initial burden in an ex parte case rests with the
USPTO to prove that the subject mark is not registrable, that
burden is not particularly heavy in many cases (see Mavety, 33 F
3d at 1371). Courts have stated that because the USPTO has limited
resources, it typically need only present “more than a scintilla of
evidence” of unregistrability to shift the burden to the applicant
to present “competent evidence” in rebuttal (see Squaw Valley,
80 USPQ 2d at 1271 (citations omitted)). The USPTO’s burden may
differ slightly case by case, as “the amount of proof required to
support the [PTO’s] rejection depends upon the nature of the
mark, with less evidence being required in those cases involving
the more egregious marks” (In re Wilcher Corp, 40 USPQ2d (BNA)
1929, 1934 (TTAB 1996)).
Moreover, for scandalous marks, dictionary evidence alone
can be used to establish vulgarity (Fox, 702 F 3d at 635 (citing
Mavety, 33 F 3d at 1373-74; Boulevard, 334 F 3d at 1341)). As the
Federal Circuit has said, “dictionary definitions represent an effort
to distill the collective understanding of the community with
respect to language” (Boulevard, 334 F 3d 1340). In closer cases,
the Federal Circuit has suggested passing the mark to publication
to allow offended individuals to bring an opposition and prove
why a substantial composite of the population finds the mark
scandalous (id at 1373). Accordingly, for potentially scandalous and
disparaging marks, prospective applicants should be well versed
in the various dictionary definitions of their mark (including
online and slang dictionaries) (eg, see In re Heeb Media, LLC, 89
USPQ 2d at 1072 n 2).
If the mark is published, standing is broadly construed to allow
oppositions
Surviving the USPTO’s review of a mark is no guarantee that it will
win a registration. Anyone with a “real interest” in the mark and a
reasonable belief they will be damaged has standing to oppose a
mark (15 USC §1063; Ritchie v Simpson, 170 F 3d 1092, 1095 (Fed Cir
1999)). Indeed, Ritchie demonstrates just how broadly standing can
be granted in opposition proceedings, when the Federal Circuit held
that a self-described “family man” had standing to oppose marks
for the name and nicknames of the former professional football
player OJ Simpson (Ritchie, 170 F 3d at 1097, 1099). The opposer’s
claim to standing was based on his allegation that the registration
of the marks would disparage his values because the marks were
“synonymous with wife-beater and wife-murderer” and would
justify violence towards women (id at 1093, 1097). The court found
that the opposer’s belief that he would be damaged was reasonable
because he alleged that he had petitions demonstrating that other
individuals shared his beliefs (id at 1098).
While Ritchie demonstrates that standing to oppose a published
mark is broadly permitted, other cases make clear that there are,
in fact, limits. In McDermott v SF Women’s Motorcycle Contingent
58 World Trademark Review December/January 2014
the Federal Circuit held that a male opposer lacked standing to
challenge a mark that he alleged was disparaging to lesbians (240
F App’x 865, 866 (Fed Cir 2007) (unpublished)). The applicant, a
female motorcycle club, sought to register a mark for educational
and entertainment services (id). Fans of rhymes and flood prevention
techniques can fill in the blank: “_____ ON BIKES”. Applying the
reasonable belief element of the Ritchie test, the court found that
the opposer – a man – did not possess a characteristic likely to be
“implicated” by the proposed mark; nor did he allege a reasonable
belief of damage because there was no evidence that anyone else
shared his beliefs (id at 867).
While McDermott shows there are some limits to standing to oppose,
other cases such as Ritchie demonstrate that the USPTO’s publication of
an applicant’s edgy mark is certainly no guarantee of registration.
Context is key
In analysing the registrability of a potentially immoral,
scandalous or disparaging mark, context is key. Whether a mark
invokes cultural sensitivities or is incongruous with the products
on which it is used, courts are cognisant of context, so applicants
must be as well.
Even well-meaning applicants must carefully evaluate possible
disparaging meanings
No matter what an applicant intends its mark to mean or signify,
it is imperative to consider carefully how the mark will likely
be interpreted by consumers because the intended meaning
may be irrelevant. For example, in In re Lebanese Arak Corp the
court found that using the mark KHORAN in connection with
wine was disparaging to Muslims because the mark was likely to
be understood as a “variation or misspelling” of the Koran, the
Muslim holy book, which prohibits the consumption of alcohol
(94 USPQ 2d (BNA) 1215, 1218-19, 1221 (TTAB 2010)). The applicant
attempted to downplay the relationship between the Koran
and its mark KHORAN, arguing that the mark referred to an
Armenian word for ‘altar’ (id at 1218). The TTAB was unconvinced,
in particular noting that consumers were unlikely to know the
applicant’s intended meaning and would instead interpret the
mark as a reference to the Koran (id at 1220). While the applicant’s
sample trade dress included the phrase “Armenian wine”, the
court noted that there was no requirement that the mark be used
on Armenian wines or be identified as such (id). However, this
suggestion raises the possibility that altering the mark to include
this additional material (ie, KHORAN ARMENIAN WINE) could
potentially have changed the analysis by rendering the applicant’s
non-disparaging meaning more likely.
Applicants must be aware of all potential interpretations of their
marks and consider whether their proposed use in the marketplace
conflicts with any of those interpretations. This is particularly true if
the mark raises issues that are culturally sensitive. Applicants must
then consider whether their preferred interpretation is sufficiently
well known to overcome potentially disparaging interpretations.
Adding additional material or designs to a mark to attempt to lead
consumers to view a mark’s non-offensive meaning might help, but
is no guarantee (see Fox, 702 F 3d at 639).
A sense of humour will not save a scandalous mark
Context is also key for allegedly scandalous marks. In Greyhound
Corp v Both Worlds Inc the applicant attempted to register a
picture of a dog defecating on the ground as a mark for shirts,
arguing, in part, that the mark was not scandalous because it is
perfectly natural for dogs to defecate on the ground (6 USPQ 2d
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Applicants must be aware of all potential interpretations of
their marks and consider whether their proposed use in the
marketplace conflicts with any of those interpretations. This is
particularly true if the mark raises issues that are culturally
sensitive
(BNA) 1635, 1636, 1638 (TTAB 1988)). However, in discussing the
context of the mark in a very literal sense, the TTAB stated that “[e]
ven assuming that people are not offended by the sight of a dog
defecating on the ground, applicant’s mark, used on its goods, is a
dog defecating on a shirt. This certainly produces a different effect
from the viewing of a dog defecating in its normal environment”
(id at 1638). The TTAB was further persuaded that the mark was
scandalous because it would be included on goods that would be
seen by “people of all ages and convictions” (id at 1639). By taking
the context of the mark in the public marketplace (too?) seriously,
this TTAB opinion shows that applicants cannot expect the TTAB
to share their sense of humour (see also Fox, 702 F 3d at 639 –
“We recognize that there are ‘whimsical’ and humorous aspect to
[applicant’s] mark… But the fact that something is funny does not
mean that it cannot be ‘scandalous’”).
Possible tactics
Obtaining (or keeping) a registration for a potentially immoral,
scandalous or disparaging trademark is not getting any easier.
Applicants hoping to register obviously vulgar marks are unlikely
to succeed. The courts do not appear amused by recent attempts
to register such marks (or at least they keep their sniggering to
themselves). Nevertheless, there are a few steps that owners and
applicants can take to try to improve (or at least understand) their
chances of obtaining and keeping a registration. For example,
an applicant would be well advised, before applying for a mark’s
registration, to:
•investigate and analyse the mark’s possible meanings, including
any potentially offensive or risqué interpretations. This
analysis should include undertaking a survey review of relevant
definitions provided by dictionaries, including online and slang
dictionaries;
•consider adding additional words or designs to a mark that
suggest an acceptable interpretation. While this will not
guarantee that the applicant’s hoped-for interpretation will
actually be adopted, it may increase the odds of registration.
Of course, the applicant should consider whether this strategy
would render the mark less desirable or profitable, by stripping it
of its edge;
•be aware of cultural sensitivities or marks that are offensive in
the context of their related goods or services. Marks that are
going to be seen by a wide variety of people are more likely to be
offensive to a subset of that larger group;
•gauge the reaction of potentially offended groups. Vocal
opposition can doom a registration, even if there is support for
the mark as well; and
•consider whether a laches defence may be available in any
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subsequent cancellation proceedings due to the potentially
disparaged group resting on their rights for too long (Harjo
v Pro Football Inc, 565 F 3d 880, 881 (DC Cir 2009)). In this
analysis, the applicant or rights holder should bear in mind
that the relevant question in a cancellation proceeding will
be whether the mark was disparaging at the time it was
registered, which can be a much more difficult case to make
(id at 885).
For those with unregistrable marks, all is not lost. Owners of
marks retain their common law rights and the ability to attempt to
register some non-disparaging or scandalous matter. As the court
in Fox stated, “Nothing in this decision precludes [the applicant]
from continuing to sell her merchandise under the mark at issue,
or from seeking trademark protection for some other, otherwise
registrable element of her product’s design, dress, or labeling” (Fox,
702 F 3d at 639). WTR
Perry J Viscounty and Jennifer L Barry are partners, and David D
Troutman and Tim B Henderson are associates, at Latham & Watkins
[email protected]
[email protected]
[email protected]
[email protected]
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