Did you know that the Lanham Act prohibits registration of scandalous, deceptive, disparaging or immoral trademarks? This means that trademarks that contain expletives, demean a group, misrepresent their origin or otherwise cause mayhem are not supposed to be given the full trademark protection that other trademarks might get. Thanks to a recent Supreme Court decision, however, that may be changing.
What Are Immoral Trademarks?
The issue of immoral trademarks was recently in the Supreme Court in a case involving a band named The Slants. Basically, federal trademark law is what allows you to register and protect your brands, but § 2(a) of the Lanham Act prohibits registration of “scandalous, immoral, or disparaging marks.” As a result, the United States Patent and Trademark Office (USPTO) determined that the name “The Slants” was offensive to Asian-Americans (the band is composed entirely of Asian-American members) and denied the band’s trademark application.
The band argued that they weren’t disparaging anybody, but were instead reclaiming a racial slur, and took the issue to the Supreme Court to figure out just how far the USPTO’s power to prevent offensive trademarks goes. The Court agreed with The Slants, finding that the Lanham Act’s disparagement clause “violates the First Amendment’s Free Speech Clause.” The ruling is likely to have a significant impact on how the USPTO handles future controversial trademark applications that implicate First Amendment issues.
Five Immoral Trademarks
In light of all that, let’s take a look at some other trademarks that had trouble getting registered:
- Redskins: The Washington Redskins had six of their trademarks cancelled after a finding that the mark was offensive. When a trademark is cancelled in this way, it means that the owners can’t get certain remedies that are generally available to trademark owners (for instance, triple damages and attorney fees). That means that others have less to lose by infringing a mark without federal protection. Following the Supreme Court’s decision regarding The Slants case, however, it’s very possible we’ll be hearing about this again.
- The Slants: Already discussed it above, but figure that it can be included in the Hall of Immoral Trademarks, just to make sure that the list is complete. Discussion of the ability of the USPTO to cancel or refuse to issue disparaging or immoral trademarks often runs up against free speech issues.
- Cannabis Trademarks: This one is interesting because many states have legalized cannabis for either medical or recreational use. But since cannabis is till prohibited federally, applicants attempting to register cannabis-related trademarks may encounter trouble. Also interestingly, here it’s not so much that the marks are scandalous or immoral but that owners may not be able to show that the mark is legally used in commerce (a requirement for trademark registration).
- LMFAO: The band LMFAO had a trademark application denied because of what the F allegedly stood for. Apparently, that had been sufficient for the USPTO to justify denying the trademark on the grounds that it was a scandalous or immoral trademarks.
- Cocaine Soft Drinks: Apparently, “Cocaine” soft drinks didn’t go over very well with the USPTO, either. They don’t include cocaine as an actual ingredient, but the name itself suggests an association to the drug. People (including the USPTO) found it to be offensive.
“Cocaine” soft drinks had trouble getting registered.
Part of building a strong brand is finding a trademark that you can register with the USPTO, or at least being aware of the risks involved with certain choices so that you can be prepared for them.
We love talking about brands and trademarks. Simply email us or give us a call and we can discuss the many services we offer that can help you build a strong brand and get your trademarks registered.
*Note: This post was updated in June 2017 from an earlier version published in January 2017.
