By: Suzan Hixon and Brittany Riley
Trademark law is a heavily regulated field. Those wishing to register a mark must file an application and respond to an Office Action detailing certain issues with their mark that may prevent registration. However, regulation of trademarks extends far beyond the process of registration in that Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), is an absolute bar to the registration of immoral or scandalous matter. Case law has defined such matter as that which is shocking to the sense of propriety and offensive to the conscience or moral feelings or calling out for condemnation. For instance, immoral or scandalous matter is that which would be regarded as vulgar by a substantial component of the general public. This analysis includes consideration of who the likely viewers. If an applicant seeks registration of mark that will be in viewed in grocery stores, then the USPTO examining attorney may consider whether parents shopping with their children would find it inappropriate to expose their children to such a mark.
A number of applicants have been found to be in violation of this provision. Most notable are the musical group, LMFAO, and lesbian motorcycle club, “Dykes of Bikes.” In 2003, the San Francisco Women’s Motorcycle Contingent filed an application for the mark DYKES ON BIKES. The group was sent numerous Office Actions and filed responses to each. In 2006, the organization won the battle to trademark DYKES ON BIKES,” having struggled for 3 years to persuade the PTO that the element “dyke” was not offensive to the lesbian community. This success was achieved after a prolonged court battle involving testimony on the word’s changing role in the lesbian community, thus the Trademark Trial and Appeal Board permitted the group to register its name. In the same manner and more recently, the electronic pop group, LMFAO, struggled to trademark its moniker. In 2008, the band originally attempted to obtain federal trademark registration its name. However, the USPTO examining attorney, who claimed that the trademark consisted of “immoral, deceptive, or scandalous matter”, refused the group’s application. LMFAO has since filed four applications attempting to trademark their name. This time, they have taken note that they are more likely to be successful in registering their mark if it does not contain an alleged curse word. The applications reveal that the term LFMAO stands for “laughing my freaking ass off” rather than the other “F word” that would lead to the denial of their applications.
The prosecution history of the trademarks DYKES ON BIKES and LMFAO leads to important questions regarding government regulation. If an examining attorney refuses a mark based on it being immoral or scandalous, he/she must provide support of that refusal through evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. Still the question remains, whether the USPTO should be defining the general public’s moral compass? This question is important when one considers that other portions of intellectual property are not subject to the same amount of policing. For instance, LMFAO could file a patent for certain items, such as sex toys, that the general public may consider equally as scandalous. In a society filled with people of different religions, political affiliations, and beliefs, it is difficult to form a correct answer. What may be immoral to some can be perfectly normal and acceptable to others.
United States trademark law recognizes a “spectrum of distinctiveness,” a sliding scale of protectability, where the more distinct and unique the term, the easier it is for the owner to claim and be granted exclusive trademark rights for that term. Trademarks fall somewhere on this scale of distinctiveness, ranging from “coined”, which is the strongest, to “generic”, which is worthless:
COINED – Very Strong/Valuable (invented/made up words such as STARBUCKS and KODAK)
ARBITRARY – Strong/Valuable (words/images without connection to THE goods or services, such as APPLE and BLACKBERRY)
SUGGESTIVE – Good Value (words/images that allude to the goods or services but do not describe them such as GREYHOUND and PUP-PERONI, my personal favorite!)
DESCRIPTIVE – Weak/Low Value (words/images that refer to the character or quality of the goods or services, or an ingredient or aspect of them, such as JUICY STEAK)
GENERIC – Worthless (words/images that are names of the goods or services in any language)
The mark you choose should be strong, not just for registration purposes, but for the purposes of value and enforcement. Even a registered mark, if descriptive, may not be sufficient to prevent others from using the mark in association with those services because it will be difficult to enforce “fair use” of the mark for other purposes. Initially, you may be tempted to use a descriptive mark. However, keep in mind that the most valuable marks in the world reside on the upper end of the scale (i.e., “coined” and “arbitrary”). Coined and arbitrary marks are generally the easiest to register because there is no connection between the mark and the goods or services (as is the case with descriptive and generic marks), but they may present a marketing challenge when trying to educate the public about your company, goods or services.
Companies may choose a descriptive trademark even though it is a weak mark because there are marketing benefits to using a mark that describes the product. The USPTO generally hesitates to allow registration of a descriptive trademark because it describes all other competing products too. While descriptive trademarks have an initial marketing ease, there are many disadvantages to using them. These include increased costs of trying to register descriptive trademarks, which are routinely rejected by trademark offices worldwide. In the event that the owner of a descriptive trademark is not able to develop secondary meaning in the trademark (consider the now-registered mark HONEY BAKED HAM COMPANY), the mark is not protectable and consequently the owner will not be able to prevent others, even competitors, from using the same or similar terms.
Suggestive trademarks often strike the perfect balance, protectable as trademarks while still suggesting characteristics of the company, goods or services.
When creating your trademark, it is important to avoid marks which are the full name or a surname of an individual living or who has died in the last 30 years. In certain circumstances, it is possible to obtain registration of a surname as a trademark, particularly with permission of the individual (Taylor Swift owns the mark TAYLOR SWIFT). If you file to register a mark which appears to be someone’s name, you may be required to swear under oath that no such person exists, that the person is long dead, or to supply a written permission from the person named.
Avoid names that include a geographic area. Besides being easy to forget, and difficult to protect under trademark law, a geographical name may no longer fit if your business expands its sales or service area. Especially if you plan to sell products on the Internet, you should think twice about giving your business a geographic identifier.
Also, don’t limit expanded product lines, and don’t choose a name that might not be representative of future products or services. Also, consider choosing a mark which lends itself to becoming a “family” of marks. For example, MCDONALD’S, MCMUFFIN, MCRIB, etc.
Believe it or not, the USPTO has been granted the subjective task of deciding what is scandalous or disparaging material. Obsenities and racial or ethnic epithets are often rejected by the USPTO, and, due to it’s subjective nature, many marks actually get registered which are arguably scandalous or disparaging.
Avoid insignia of a government agency, or of certain organizations protected by law, such as the insignia or name of the FBI, Olympics, etc.
“Clever” Misspellings of Otherwise Unusable Marks.
I have a lot of clients ask if they can use fun spellings and iterations of marks that would otherwise not be available. Please keep in mind that this does not avoid the original problem with the mark. You probably could not get a registration for “DISNEE”, as it is too close to the famous mark DISNEY. Also, descriptive mark like “speedy” for a fast car is not registrable if you write it “spee-dee”. Similarly, if “Tomato” is generic for tomato, then so is “Toomatoe”.
Conduct a Search
After you’ve chosen one or more marks that seem possible, and before settling on a trademark and commencing any marketing efforts or spending any marketing dollars, make sure you do a cursory trademark search, by seaching Google and the USPTO website. You may also want to search WHOIS, for purposes of domain name availability. Because so many domain names are now unavailable (at least for a reasonable cost), then you may want to check what is available before settling on a trademark.
Keep in mind that searching on your own has its inherent limitations, and it’s wise, should the cursory search be “clear,” to utilize a third party search firm to search for marks that could be listed in business databases and used at common law. Such a comprehensive search will also check state databases for use of the mark as corporations or LLCs, for example.