Immoral, Scandalous and Deceptive Marks Refused TM Registration

Recent refusal of the USPTO, upheld by the Trademark Trial and Appeal Board “TTAB” and affirmed by Court of Appeals Federal Circuit “CAFC”, to register a mark branding a rooster lollipop suggests that an arcane bit of trademark law still holds sway. Ms. Fox sought a two word trademark consisting of the common slang term for a rooster along with the term commonly applied to lollipops to describe her rooster shaped chocolate lollipops. The words together also describe the sexual act of fellatio. See In Re Fox for more specific details. Section 1052 of the United States Code, as amended, provides that 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, deceptive, or scandalous matter.”

The CAFC indicated that what constitutes “immoral or scandalous matter” has evolved over time, but that in order to refuse a mark, “the USPTO must demonstrate that the mark is ‘shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; or calling out for condemnation.” More concisely, the PTO may prove scandalous nature by establishing that a mark is “vulgar.” This demonstration must be made “in the context of contemporary attitudes,” “in the context of the marketplace as applied to only the goods described in TM application,” and “from the standpoint of not necessarily a majority, but a substantial composite of the general public.”

Where the meaning of a mark is ambiguous, mere dictionary evidence of a possible vulgar meaning may be insufficient to establish the vulgarity of the mark. But where it is clear from dictionary evidence that the mark invokes a vulgar meaning to a substantial composite of the general public, the mark shall not be registered. That the two word mark was not permitted its literal interpretation as a humorous double entendré shows the Court’s unwillingness even in these shockproof times to allow registration of a vulgarity. For an interesting read of marks refused on similar grounds, see Saunders and Rymsza’s 2004 Southern Law Journal Article.