Protecting Your Creativity: Is my Mark Immorally Disparaging?

To this point, I have covered what a trademark is, how the public policy rationale influences the need for trademark infringement protection, and the first of two major requirements for a mark to be registered. Today, I take up the second major requirement of registration. Namely, works that are not registerable because they are, among other things, functional, deceptive, scandalous, or disparaging.

A mark can be deemed functional if the mark: 1) is essential to the use or purpose of the device; 2) profoundly affects the cost/quality of the device; or 3) would place the competition at a significant non-reputation based disadvantage. For instance, the shapes of LEGO pieces are purely functional and are, therefore unregisterable, because the shape is essential to the use and purpose of the device.

A mark is deceptive if: 1) the mark is misdescriptive of the character, quality, function, composition or use of the goods or services; 2) prospective purchasers are likely to believe that the misdescription actually describes the goods or services; and 3) said misdescription is likely to affect the decision to purchase. For instance, a past court held that the mark LOVEE LAMB was deceptive for seat covers not made of lambskin.

A mark is considered scandalous or immoral if a substantial composite of the general public would regard it as offensive. Over recent history, the US Patent and Trademark Office and courts have used more relaxed standards. Previously, the mark MESSIAS on wine and liquor bottles, and QUEEN MARY on women’s underwear, were deemed scandalous. However, in 1999, a court found this mark to be permissible.

Lastly, a mark is disparaging if it disparages people, living or dead, institutions, beliefs, or national symbols, or brings them into contempt or disrepute. The most famous of cases on disparaging marks is the ongoing dispute over the NFL team from Washington D.C. known as the REDSKINS. A group of Native Americans petitioned the REDSKINS registration claiming that the mark is disparaging to Native American people. The case began back in 1994 and continues to this day!

Marks that are functional, deceptive, scandalous, or disparaging cannot obtain trademark registration. The next logical question is what the advantages of registration are. I will discuss that issue next.

Steve Rensch and Zach Price