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
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 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)).
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 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
- the 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 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
(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’”).
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 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)
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.