LEGAL GUIDE
Written by attorney Charles E. Colman | Aug 24, 2011

Why businesses should avoid potentially "immoral," "scandalous," and "vulgar" trademarks

As Racked.com reported this morning, the successful stream-of-consciousness Tumblr Fuck Yeah Menswear has scored a book deal.

While congratulations are certainly in order, the blog's owner might also be deserving of our concern. (Longtime readers of my blog, http://lawoffashion.com, will recall that I've expressed anxiety about the intellectual property rights of people in the news before.) Why, you might wonder, am I worried about FYM?

When my firm, Charles Colman Law, PLLC, advises clients on choosing a brand name, the Lanham Act's "immoral . . . or scandalous" bar to trademark registration rarely comes into play. (At least as of 1979, there was a "dearth" of case law on the meaning of "immoral.") But the statutory bar preventing the registration of "scandalous" marks does rear its ugly head occasionally, so it's wise to keep it in mind when deciding on the name of your brand.

As the Trademark Manual of Examining Procedure ("TMEP") explains, the predecessor of the current Court of Appeals for the Federal Circuit has adopted following dictionary definition of "scandalous": "shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation." Courts have further interpreted the word "scandalous" to include proposed marks that are "vulgar," i.e., "lacking in taste, indelicate, [or] morally crude." Thus, the statutory bar has prevented the federal registration of such racy trademarks as:

  • BLACK TAIL (for adult magazine featuring women of color)
  • DICK HEADS (when positioned underneath caricature of a human head made to look like male genitalia)
  • 1-800-JACK-OFF (based solely on dictionary definitions)

The following marks, by contrast, were not ultimately barred from registration because of immoral or scandalous subject matter (though these registrants did have to fight for their registrations, which can be expensive):

  • ACAPULCO GOLD (for suntan lotion, even though some might understand term as a reference to marijuana)
  • WEEK-END SEX (for magazines whose content was not part of the evidentiary record)
  • BIG PECKER BRAND (when accompanied by the picture of a woodpecker, which would "make it less likely that purchasers would attribute any vulgar connotations to the work mark")

As for the good old F-word, a quick search in the U.S. Patent and Trademark Office's TESS database indicates that 68 applications to register marks containing the word "fuck" have been submitted -- but none reached registration. Daunting odds for Fuck Yeah Menswear.

Naturally, where the government puts itself in the position of making decisions about what is or isn't "scandalous," many people's internal First Amendment alarm will starting going off (as mine did here and here.) While the Supreme Court has never squarely addressed the intersection between the First Amendment and trademark law's "immoral or scandalous" prohibition, arguments about the law's improper abridgement of speech have been raised repeatedly -- and consistently rejected by the Federal Circuit and the Trademark Trial and Appeal Board, as noted in a 2008 case called In re Heeb Media LLC. In that case, the U.S. Patent and Trademark Office refused to register "HEEB" in connection with apparel and entertainment services, due to the derogatory connotation that the term continues to hold for many Jewish people (even if, as the court noted, younger Jews have reappropriated the term.) Conveniently, Heeb Media illustrates a rule related to the immoral/scandalous bar (and, in fact, codified in the same statutory provision): the USPTO will not register and/or will cancel marks that disparage identifiable groups of people. This is the central issue in a seemingly never-ending court battle between a group of Native Americans and the Washington Redskins, which you might well have read about in the news

What does all of this mean for Fuck Yeah Menswear? If FYM wants to register its mark (and there are numerous legal advantages to obtaining a registration, discussed repeatedly on Avvo), the outlook is grim. And the title of FYM's forthcoming book -- whatever it may be -- probably won't give the blog's owner much firepower on the trademark front, either. As I've written about before, titles of artistic works receive trademark protection only upon a showing of secondary meaning, and only the most well-known works are likely to carry such meaning for consumers.

Of course, unlike in the copyright context, one can sue for the infringement of an unregistered trademark, subject to certain caveats beyond the scope of this post. But just as a matter of common sense, a judge probably won't be inclined to grant relief to the owner of a mark that offends him. In litigation, where every piece of the case narrative matters, one doesn't want to face any unnecessary hudles to recovery. Thus, for legal reasons alone (not to mention marketing purposes) it's generally wise to start one's business off on the right foot by choosing a mark that isn't likely to offend anyone.

[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed herein are those of the writer on the particular date of this post, and should not necessarily be attributed to_ his law firm_or its clients.]

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