Registration of Immoral or Scandalous Marks in the U.S.

Just because you are using a mark in the course of trade does not automatically entitle it to federal registered trademark protection in the U.S.A.

There are many types of marks which are not eligible for registration.  If a mark is considered “immoral or scandalous” it is banned from registration under Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a).

Although the words “immoral” and “scandalous” may have slightly different meanings, case law has included immoral matter in the same category as scandalous matter.

“Scandalous” has been defined as “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation”. The term “scandalous” has also been considered to encompass matter that is “vulgar,” defined as “lacking in taste, indelicate, morally crude.”

The meaning of a mark must has tobe determined in the context of the current attitudes of the day.

Also, the determination of whether a mark is scandalous must be made in the context of the relevant marketplace for the goods or services identified in the application, and must be evaluated from the standpoint of not necessarily a majority, but a “substantial composite of the general public.” As long as a substantial composite of the general public would perceive the mark, in context, to have a vulgar meaning, “the mark as a whole ‘consists of or comprises . . . scandalous matter’” under §2(a).

Therefore, to support a refusal on the ground that a proposed mark is immoral or scandalous, the examining attorney must provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. This evidence could include dictionary definitions, newspaper articles, and magazine articles.

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word.

“Whether applicant intended the mark to be humorous, or even whether some people would actually find it to be humorous, is immaterial.” A refusal is proper if the evidence shows that “the term would be perceived and understood as vulgar by a substantial portion of the purchasing public.”

For more information about “immoral” or “scandalous” marks, please do not hesitate to contact us.