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.