A Brave New World? Trademarks Containing the F-Bomb and Other Colorful Language
WARNING: The trademark world as we know it may be ending. We should all prepare ourselves for a flash flood of offensive registered trademarks containing the seven dirty words George Carlin could never say on TV, and any other allegedly immoral or scandalous word that young angry male junior high students with access to their parent’s credit cards decide to file with the USPTO.
In regard to the proposed title of this Blog, we think it’s a catchy name. And it is certainly one that we hope readers come to associate with this blog as an identification of source or origin for blogging and sports-related legal news. It is (hopefully), at least suggestive as to the content and quality of the materials readers will find here. Why then shouldn’t it be the subject of a trademark registration? If Fox Sports Net can obtain a federal registration for The Best Damn Sports Show Period (Registration No. 3,066,021 Canceled for failure to file a § 8 declaration), why can’t we secure a registration for The Best F*ing Sports Blog Period?
At least as of today, the answer is simple: The proposed trademark contains the “F-Bomb,” and under the TMEP § 1203.01, and 15 U.S.C. § 1052(a) “immoral [or] . . . scandalous” matter still is an absolute bar to registration on the principal and supplemental register.
The next logical question then is: what is “immoral” or “scandalous” material? Why does damn pass muster but f*ing does not? The answer of course is as vague as the statutory language that gives significant leeway to USPTO Trademark Examiners to decide what is “scandalous” or “immoral” during review of a pending trademark application. In In re Fox, 702 F.3d 633, 638 (Fed. Cir. 2012), the Federal Circuit upheld the refusal to register a drawing of a crowing rooster in conjunction with the words “c**k sucker” for use on rooster-shaped chocolate lollipops, even though the mark had a number of non-scandalous meanings. ¹ The Federal Circuit held that “as long as a substantial composite of the general public perceives the mark, in context, to have a vulgar meaning” the refusal was justified. Id. This is true even though the vulgar meaning was not “the only relevant meaning–or even the most relevant meaning.” Id. This currently binding set of instructions leaves a lot of room for leeway depending on the perspective of the examiner and just how creative his/her imagination can be.
Immoral and scandalous trademarks may still be forbidden, but after the Supreme Court’s decision in the recent case of Matal v. Tam, the Federal Circuit is now crying foul and may be on the verge of changing the United States trademark landscape forever. On August, 29, 2017, during oral argument for In re Brunetti, No. 15-1109, a Federal Circuit three judge panel noted that “[i]t was shocking, the level of inconsistency among the rejections versus acceptances of the same words” at the USPTO during trademark examinations. In an apparent revival of the c**k debate from In re Fox, Judge Moore raised the example of the rejection for the mark “God does not have a penis.” She wondered aloud if the government can reject the word “penis” every time it was used. Given the fact that it is an anatomical part that 50% of the population has, wouldn’t it be relevant to things like “a penile implant or something?”
In regard to disparaging trademarks, the Supreme Court held in Matal v. Tam that a trademark is not government speech, and that the “PTO has made it clear that registration does not constitute approval of a mark.” The rational that the Supreme Court applied to the prohibition against disparaging marks, while holding the prohibition unconstitutional, likely applies with equal weight to the ban on immoral or scandalous marks. The Supreme Court has said “time and time again that the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some hearers.”
Our expectation from the Federal Circuit’s intense questioning during the Brunetti oral hearing, and the Supreme Court’s broad statements in the published Matal v. Tam decision, is that “immoral” and “scandalous” marks will go the way of “disparaging,” and will no longer be incapable of registration by the USPTO.
And we will eventually have the right to secure a trademark registration for a scandalous Sports Blog title, should we choose to do so.
¹ In fact the lollipops were marketed to fans of the University of South Carolina and Jacksonville State University, both of which employ gamecocks as their athletic mascots.