By Debby Winters
There is an absolute bar to the registration of “immoral or scandalous matter” according to Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a). To the U.S. Patent and Trademark Office (USPTO) immoral or scandalous might mean something different from what it means to you or me. Additionally, although the two words “immoral” and “scandalous” may have somewhat different connotations, case-law has included immoral matter in the same category as scandalous matter.
“Scandalous” was defined as “shocking to the sense of propriety, offensive to the conscience or moral feelings, or calling out for condemnation” when used to describe a mark that was trying to obtain trademark protection. This mark consisted of a photograph of a nude, reclining man and woman, kissing, and embracing. The mark was used for a “newsletter devoted to social and interpersonal relationship topics and social club services.” The statutory language “scandalous” has also been considered to encompass matter that is “vulgar.” Vulgar matter has been defined as “lacking in taste, indelicate, morally crude.”
Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, especially 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, for example in the proposed marks 1-800-JACK-OFF and JACK OFF. These were held as scandalous simply based on their dictionary meanings. Folks have tried to get around that with creative spelling, but there is no use in trying, because marks such as FUK or SH*T have not passed the USPTO on the same vulgar/scandalous basis. The Trademark Office won’t be fooled and it will it be lenient.
How about a “nutty’ variation for a name of a beer? Does that sound vulgar or scandalous to you? Certainly not at first glance it doesn’t. After all, beer can sometimes be described as having a nutty flavor. Well, recently Engine 15 Brewing Co filed to register the name of one of a beer, NUT SACK DOUBLE BROWN ALE. Its trademark registration was initially refused based on the examiner’s determination that the mark was immoral or scandalous because “nut sack,” which the examiner equated the mark to is slang for a part of the male anatomy. The examiner found the mark NUT SACK DOUBLE BROWN ALE would be perceived as “offensive to a substantial composite of the general public.” Thus, the application was refused registration under Section 2(a) of the Trademark Act, the section that prohibits registration of immoral or scandalous marks. Engine 15 appealed that ruling and they won. The Trademark Trial and Appeal Board (TTAB) considered the prevalent use of the term “nut” and “nutty” in connection with beer flavor profiles and found that target consumers with “contemporary attitudes” would see the attempt at humor rather than being offended. The TTAB also threw in a “Christian Grey/50 Shades” reference, noting that determinations of whether marks are too scandalous to be registered “involve various shades of grey.” Witty of them, right? As an aside, the mark FIFTY SHADES OF GREY has been registered for adult sexual aids as well as other related products.
Background: In case you haven’t kept up with recent immoral or scandalous trademark issues, several marks owned by the Washington Redskins football team were ordered to be cancelled based on determinations that REDSKINS is an offensive and disparaging term to Native Americans. The Washington Redskins are appealing the decision to the United States Court of Appeals for the Fourth Circuit in Virginia. In a bold tactic, the appeal brief from the Redskins cites a slew of other registrations issued by the USPTO that contain terms that are racist or offensive but have been allowed to be registered. This tactic challenges the government’s ability to strip them of their registrations based on the free speech protections of the First Amendment to the Constitution.
Let me know in the comments if you think NUT SACK is immoral or scandalous.