Monday, October 31, 2011

Recommended Reading: Lalonde and Gilson, "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral"

There is no more troublesome area of TTAB jurisprudence than its determinations of whether a mark is "immoral" or "scandalous" under Section 2(a). The Trademark Act requires the USPTO to make these decisions but provides no standards or guidelines for doing so. The resulting case law is a muddle. In their article in the latest issue of The Trademark Reporter, Ann Gilson Lalonde and Jerome Gilson provide an extensive review of the law and offer some suggestions for handling these cases in a more consistent and acceptable way: "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral," 101 Trademark Reporter 1476 (September-October 2011). [pdf here].

The United States Patent and Trademark Office (USPTO) is faced with an impossible task: It is legally required to make such determinations. Section 2(a) of the Lanham Act, The United States Trademark Act of 1946, bars registration in the United States of trademarks that consist of or comprise “immoral, deceptive, or scandalous matter.” ***

The difficulties with the USPTO deciding whether marks are “scandalous” and “immoral” are manifest, and consistency is topmost. The Office has no independent standards that apply to such determinations, which are made by dozens of different individuals of varying political, religious, geographic and family backgrounds. Further, it compounds the issue by refusing to acknowledge previous registrations of similar marks as precedential.

Another intractable problem is whether there is in fact a general public view about the offensiveness, or not, of any given trademark, and if there is, whether such a view can be determined by the USPTO under its current procedures. The Office has tremendous expertise in many areas of trademark law, but none in discerning the temperature of the public’s moral outrage.

TTABlog bonus: In this podcast (here), Anne Gilson LaLonde discusses these issues.

TTABlog note to email subscribers: In order to see comments and download the article, please surf to the blog.

TTABlog acknowledgement: Thanks again to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2011 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 101 TMR 1476 (September-October 2011).

Text Copyright John L. Welch 2011.


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