October 2009
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Immoral or Scandalous Matter?

One of the "peculiarities" of U.S. trademark law is that the government has a stick up its collective ass about recognizing trademarks that may be suggestive of dick-and-fart humor.  Section 2 of the Lanham Act (the federal statute that creates trademark rights) provides:

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 . . . .

15 U.S.C. § 1052 (2008).


Presumably, you can decide for yourself whether the above image is offensive or (as I did) worthy of a snicker or three.  It looks like, from the license plate and unfamiliar make/model of the van, this company is doing business overseas, but rest assured this mark would never appear on the principal register of trademarks in this country.  Now, don’t misunderstand me; if this business opened up an office on this side of pond, they could likely prevent others from using the same mark, based on any common law rights that could be established, but our federal government would never give them the benefits of a federal registration for the mark.

Now, you may be asking yourself, "Wait; isn’t that the whole point of trademark law — preventing others from using your mark?"  That is true, but the game gets much, MUCH easier when you have a federal registration.  Establishing common law rights is generally an extremely lengthy and expensive evidentiary process, which involves paying your attorney to prepare and file a phone-book-sized amount of paperwork in any infringement suit.  Compare that with the single sheet that must be presented by the owner of a federally registered trademark, and you begin to see some of the benefits of registration.

Lots of hardcore civil libertarians that I know pound the table and froth at the mouth while denouncing the puritanical nature of our trademark regime.  Even though I don’t get as worked up, personally, I do happen to agree.  What difference does it make that someone wants to call their business "Butt Drilling"?  Do we really need the federal government to discourage that guy from doing what he wants with his entrepreneurial humor?  Should we be shielded from this "attack of immorality" at the expense of his freedom?  Trust me, plenty has already been written on whether there is even a rational basis for Section 2(a), by people way smarter than I — enough that I won’t bore you with any more.  Suffice it to say, it is something that must be given careful consideration when choosing your brand.

This story was originally published on The Legal Satyricon.

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