Is LMFAO NSFT (Not Safe For Trademarking)?
Is LMFAO an Immoral or Scandalous Trademark?
LMFAO is a Los Angeles-based dance-pop duo. You may know them from such timeless classics as “Sexy and I Know It” and “Sorry For Party Rocking.” In 2008, they applied to register several trademarks with the United States Patent and Trademark Office (USPTO). The applications were refused, among other reasons, because the marks were found to consist of “immoral or scandalous matter.” They have now re-applied – how do they plan to get around this issue?
Who Says Scandalous or Immoral Marks Can’t be Registered?
As you all know, Section 2(a) of the U.S. Trademark Act allows the USPTO to refuse placement on the Principal Register of Trademarks if a mark doesn’t meet their standards of morality and decency. In their rejection of one of the 2008 applications, the USPTO illustrated the immoral/scandalous analysis – I’ll highlight the important points:
To be considered “scandalous,” a mark must be “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,” in the context of the marketplace as applied to goods and/or services described in the application. In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994) (quoting In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (C.C.P.A. 1938); In re Wilcher Corp., 40 USPQ2d 1929, 1930 (TTAB 1996); see TMEP §1203.01. Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, . . . and in the context of contemporary attitudes.” In re Mavety Media Group Ltd., 33 F.3d at 1371, 31 USPQ2d at 1925; see TMEP §1203.01.
Evidence that a mark is vulgar is sufficient to establish that it is scandalous or immoral. In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340, 67 USPQ2d 1475, 1477 (Fed. Cir. 2003). Dictionary evidence may be sufficient to show that a term is vulgar if multiple dictionaries, including at least one standard dictionary, uniformly indicate that the term’s meaning is vulgar, and the applicant’s use of the term is clearly limited to the vulgar meaning. TMEP §1203.01; see In re Boulevard Entm’t, Inc., 334 F.3d at 1336, 67USPQ2d at 1475…
They included links to a few online definitions of the term “LMFAO.” If you can’t guess what the “F” is assumed to stand for, you can go ahead and click here for a definition.
Trying to determine what the USPTO will find immoral or scandalous is difficult at best. In recent years, they have rejected COCAINE (for soft drinks) and KHORAN (for wine). On the other hand, DuetsBlog has pointed out that there are quite a few registered marks using the word “Ass.” Let’s just say this is a colorful area of trademark law that tends to upset civil libertarians, First Amendment fans, and various interest groups, no matter what the decision is in any particular case. I don’t think the Trademark Office is the entity that I want to decide what is and isn’t immoral or scandalous, but I don’t see Congress in any rush to remove that part of Section 2(a), so here we are.
Back to LMFAO. What did those party-rocking gentlemen do when their trademark applications were rejected? Simple: they have re-filed several more trademark applications (here’s 0ne), this time including the miscellaneous statement: “The term LMFAO stands for ‘laughing my freaking ass off’.”
As we’ve seen above, the USPTO doesn’t seem to have a problem with the word “ass,” so we’ll see if they buy the newly sanitized definition offered by LMFAO.