For decades the U.S. Patent and Trademark Office (“USPTO”) has refused to register trademarks consisting of words or symbols deemed “immoral’ or ‘scandalous’, in accordance with Section 2(a) of The Lanham Act. In recent weeks, however, the Supreme Court of the United States struck down this long-held prohibition when it ruled that the refusal to register such trademarks violates the First Amendment to the U.S. Constitution, namely free speech of the trademark owner. For additional information on this ruling, see this National Law Journal article.
What exactly is an “immoral’ or ‘scandalous’ trademark?
Generally speaking, trademarks are used by an individual or business to brand and sell goods or services. Trademarks create identity, brand recognition and goodwill to the consumer. The previously banned scandalous or immoral trademarks typically contain profanity, are lewd, sexually explicit, or relate to drug use, religion or terrorism. So, why would a business owner want to brand their goods or services with a trademark that is “immoral’ or ‘scandalous’? The answer to this question depends on the individual trademark owner, what goods or services they are selling, and most importantly, who their target market is. For example, a business who wishes to market their product to a younger group of consumers may use profanity to appeal to the rebellious side of their target consumer, which may shock most other groups of people, but the shock factor can be a very useful marketing tool.
Undoubtedly, there are individuals who are wholly unoffended by what the USPTO constitutes ‘immoral’ or scandalous’. In fact, there are many generations of consumers who even resonate with the “offensive” terms or message. Apparel and related goods is an industry often heavily impacted by the prior “immoral’ or ‘scandalous’ trademark ban. Many apparel businesses have attempted to create brands consisting of terms that violate Section 2(a), only to have their applications rejected. An example consists of four-letter word trademarks or logos depicting of drug paraphernalia or sexuality used on clothing, hats or handbags. Indeed, we have counseled many clients in the past seeking to trademark such brands. The Court’s ruling allows businesses to move forward with these trademarks and seek federal protection.
What does this mean?
This 180 degree change in the law is likely to open the floodgates of applicants seeking to register trademarks once banned. In fact, there have been hundreds of recent filings at the USPTO and this will continue to grow. How will this affect businesses and consumers? Businesses are now free to create and define a brand that best represents their message, profane or not, and they will be able to seek the broadest protection in their trademark with a U.S. registration. On the other hand, consumers will be exposed to bold trademarks and branding that appeals to some and which is highly offensive to others. There is no doubt that this ruling will affect branding on a whole new level.
Gehres Law Library can provide assistance with determining if your creative work is eligible to be trademarked or if you should use an alternate approach, such as filing a patent or copyrighting your work product. Our legal team will also guide you through the formal process of applying to register your trademark, which can be a difficult process that begins with choosing the correct application. Just give us a call at 858-964-2314 or contact us online to find out how we can help; we offer free consultations for new clients. Learn more about our trademark flat fee packages here.