What do an Asian-American rock band and a professional football team from Washington D.C. have in common? Both lost, or were refused, trademark registrations under Section 2(a) of the Lanham Act, which requires a trademark to be refused if it “[c]onsists of or comprises immoral,…, or scandalous matter; or matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols.” Since 2014, several trademarks owned by the Washington Redskins were cancelled for being disparaging to Native Americans, and when a mark for THE SLANTS was filed by an all Asian-American rock band, it was refused for being “[a] racial slur referencing the eyes of those of Asian descent.” This refusal has since been appealed all the way to the Supreme Court of the United States, where the fate of the disparagement portion of Section 2(a) will soon be decided.
Meanwhile, Section 2(a) remains an active part of trademark law, and is important to understand for anyone thinking about getting a registration for something risque. Before we go any farther, it is important to note that Section 2(a) contains two separate grounds for refusal of naughty marks (it actually contains additional grounds for refusing marks that are “deceptive” or create a “false association,” but that is outside the scope of this entry.) The first such ground is refusal of “disparaging” marks, which was the ground applied to both the Redskins and The Slants.
(1) DISPARAGING
In testing to see if a mark is disparaging, the Examining Attorney must ask two questions:
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What is the likely meaning of the mark, taking into account both the literal definition of the term(s) of the mark, but also possible slang meanings, as well as the meaning within the context of the goods and services covered by the mark.
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If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, might that meaning be disparaging to a substantial (but not necessarily majority) composite of the reference group? See In re Squaw Valley Dev Co. (80 USPQ 2d (BNA) 1264, 1267 (TTAB 2006).
Most trivially, this covers various disparaging terms/slurs for races, ethnic groups, religions, national symbols, etc.
It is not limited to slurs, however, but to any term that refers to an identifiable group and would be considered disparaging by a substantial subset of that group. For example, the mark KHORAN was refused for wine under Section 2(a) based on the fact that the Muslim holy book, the Koran, forbids the consumption of alcohol. As wine is an alcoholic beverage, and KHORAN was considered a reference to the Koran, the mark was refused as disparaging.
(2) SCANDALOUS
The second ground for refusal covers “scandalous marks” defined as marks that are “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable;… giving offense to the conscience or moral feelings;…[or] calling [for] condemnation.” In Re Fox, 702 F.3d 633 (Fed. Cir. 2012).
This covers slurs, but also words that are considered offensive without being references to any group or belief system. For example, a mark for COCAINE for “carbonated and non-carbonated soft drinks and energy drinks” was refused because, (in part) the USPTO argued that a substantial number of people would consider it scandalous that a product bearing the name of an illegal drug would be sold to children.
On the other hand, the USPTO recently allowed a mark for CAJUN COCAINE for seasonings to proceed to registration without issuing a Section 2(a) refusal, and merely requiring the applicant to clarify that the seasonings did not in fact contain the drug. So, the USPTO is inconsistent at best in how zealously it prevents the registration of references to illicit drugs.
The USPTO is quite a bit more consistent in refusing marks that are references to sex organs, or sex acts, at least as long as it is clear that the reference is sexual. As a rule of thumb, marks that contain the words COCK and PUSSY tend to receive refusals, unless it is clear that the words refers to other meanings of the words. For example, the mark COCK N’ BULL for ginger beer was allowed to register, perhaps because advertising for this famous brand of Ginger Beer (sometimes considered the only “correct” type of Ginger Beer to feature in the Moscow Mule cocktail) features an image of a rooster and a bull, making it clear that the word COCK refers to a rooster.
A logo mark for COCK BLOCK for plush toys featuring an image of a cube shaped rooster was refused for being a reference to “someone who prevents a male from having sex.” It should be noted though, that while this may seem inconsistent with the USPTO allowing the COCK N’ BULL mark, the USPTO did point out in their refusal of COCK BLOCK that while the logo was indeed literally a rooster and not anything sexual, the applicant described their product at the digital point of sale as follows: “You went out last night and your best bro didn’t wingman for you, and instead, stole the girl you met at the bar. What do you do? If you’re the passive aggressive type who likes stuffed animals, you buy him this. Cockblock is a hand-sewn, 5″ cube chicken plush that is ever so cute. Also available, are Brown Cockblock and Huge Fat Cockblock. We’re still talking about chickens here, son.” Unfortunately for the applicant, he was not talking about chickens, and the USPTO caught on.
On a final note, for whatever reason, the USPTO seems to have no issue with the word PORN; with marks ranging from GOTPORN to MY WIFE IS MY PORNSTAR registering freely for various adult entertainment media and services. So, feel free to register all of the PORN marks that your heart desires, just keep your mark free of any cube shaped chickens; there may be children browsing the Federal trademark register.
ANTON LEONOV, is an Associate Trademark Attorney with LegalForce RAPC. From an early age, he has been experimenting with (others may call it “breaking”) computer hardware, in an effort to get the most out of every slice of silicon. Although his “just to see what happens” overclocking days are behind him, he is still a sucker for all things tech, and loves the opportunities that his IP legal career gives him to live at the crossroads of creation and the law. He holds a BA in Economics from UC Irvine, and a JD with honors from the Sandra Day O’Connor College of Law at Arizona State University. He is admitted to practice law in Arizona.
