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A Scandalous Trademark?

What’s scandalous these days? Donald Sterling’s comments? Or does anyone even remember him anymore? I can’t keep up with the number of scandals that shock the world (at least online) and then quickly fade away.

Fortunately, we can look to the hardworking folks at the US Patent and Trademark Office’s Trademark Trial and Appeal Board. They are charged with the solemn duty of refusing to register scandalous trademarks. Truly, they are America’s last line of defense against, um, attaching an ® symbol to a product or service name that involves a slightly rude word, I guess.

So, gather your wits and read on to find out about yet another word that was Too Hot for the USPTO…

OK, the word is “asshole.” Are you shocked? Scandalized? Me neither, so let’s move on.

I’ve written about immoral and scandalous trademarks before, but the subject is just too much fun not to revisit from time to time.

Anthony Michalko applied to register ASSHOLE REPELLENT as a trademark for “Amusement device, namely, a can with a spray top used as a gag gift and sold as a unit.”

Asshole Repellent

The USPTO examining attorney refused, writing:

…the applied-for mark consists of or comprises immoral or scandalous matter…the term ASSHOLE in the applied-for mark is a vulgar and offensive term meaning a stupid, mean, contemptible person…internet evidence from www.slangsearch.com shows that the term asshole is an offensive slang insult. [Editorial note: any 3rd grader could have told you that.]

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…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.”…

Evidence that a mark is vulgar is sufficient to establish that it is scandalous or immoral…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…

The fact that profane words may be uttered more freely in contemporary American society than in the past does not render such words any less profane…

The last part is one of my favorite bits. If a word was not acceptable for the citizens of Plymouth Colony, should that bar registration in 2014?

This went on and on. The applicant replied that, among other things, the word has been used on broadcast television. That went nowhere.

In another filing, the examining attorney wrote:

Applicant asserts that mark is used on a gag gift for amusement.   The fact that something is funny does not mean that it cannot be “scandalous.”…Thus, “whether applicant intended the mark to be humorous, or even whether some people would actually find it to be humorous, is immaterial.”…In fact, it is the applicant’s intention to be humorous, combined with the applicant’s non-functional, “gag” goods that limits the meaning of the applicant’s mark to only a vulgar meaning. Specifically, the applicant’s specimen is a picture of the goods and written upon the goods, under the mark, is the statement “Guaranteed to repel a complete total repulsive asshole…Chronic cases of being an asshole may require the triple flubberblast [sic] (three short sprays).” Considering the context in which the mark is used on the goods, only the vulgar meaning would be perceived by the public. [Emphasis mine.]

So if the applicant intended for the word to be used in a serious, non-humorous way, it would be possibly less scandalous? I guess you could use that word in connection with a proctological product, but that use would most likely be descriptive and possibly generic, so now you’ve got a whole other set of problems.

The applicant, not to be deterred, took the matter up to the Trademark Trial and Appeal Board, which affirmed the judgment of the examining attorney in refusing registration.

It might seem like I’m having some fun at the expense of the USPTO here, but it’s really not their fault. Like all other problems in America, it’s Congress’ fault. 15 U.S. Code § 1052 reads, in part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) Consists of or comprises immoral, deceptive, or scandalous matter;…

So the folks at the USPTO are just doing their job as directed by the legislative branch. I’d argue that Congress should just get rid of the “immoral” and “scandalous” bits once and for all (the “deceptive” prohibition can stay, that’s good stuff), but where would that get me? Is there any political will to permit the USPTO to register immoral or scandalous marks? Should I solicit petitions and form a Super PAC? Who wants to contribute to that cause?

In summary, we now know that the USPTO considers humorous uses of the word “asshole” scandalous and thus ineligible for trademark registration. In case you were wondering, there you go.

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