No immoral or scandalous trademarks

A client of mine recently asked to register a trademark that included what one would consider a "bad word." The word in question rhymes with "duck."* I advised my client that there is no way to register such a word through the United States Patent and Trademark Office. U.S. law forbids the registration of marks that consist of "immoral or scandalous matter." Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §1203.01.

To be considered “scandalous,” a mark must comprise something that is “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … [or] calling out for condemnation,” in the context of the marketplace as applied to goods or services described in the application. In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994). Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, … and in the context of contemporary attitudes.” Id.

One might consider that today, when "bad words" are more prevalent in common parlance, that such standards would be lower- and thus more words no longer qualify as "immoral or scandalous." That is not the case. Basically any bad word, such as "f*ck," "sh!t," and "a$$hole," cannot be registered in the U.S.

That does not stop a lot of people from trying to register such marks. This is one reason for consulting a trademark attorney before filing a trademark application, as they can assist you from essentially donating your filing fees to the USPTO. There's no way you'll be able to argue around this rejection. A quick search of the USPTO records indicate 39 rejected applications comprising the f-word, 60 rejected applications comprising the s-word, and 8 rejected applications with the the a-hole word. The results of these searches are below.

F_ck Trademark Applications
Sh_t Trademark Applications
A_shole Trademark Applications

I have also seen marks such as sh!t being rejected, because the USPTO states that everyone knows that it actually means the word for poop. The only way this will change, and we'll be able to see registered trademarks that comprise "dirty words" will be to change the laws. For now you'll need to use the "TM" symbol, other common law rights, and perhaps state trademark systems to protect your more racy trademarks.

* I myself am no stranger to dirty words, and occasionally use them in my more colloquial speech. I see no need to censor these words on TV or elsewhere. However, to ensure this site is not blocked by filters at work and school, I am using the abbreviations of these words.

Mary Carey trademark update

I earlier wrote about the trademark issues between Mary Carey and Mariah Carey. Mary Carey (the porn star, not to be confused with Mariah the singer) appeared on the Howard Stern Show on Sirius (yes, I am a subscriber). The issue of the trademark dispute came up, and everyone wondered how the dispute could actually exist- in that they sound different, do different types of entertainment, etc. All of which agrees with my earlier article. A "patent attorney from Pittsburgh" called in and said that under a likelihood of confusing test, where the marks are compared, they are confusingly similar.

It appears that our esteemed patent attorney missed the doctrine of laches. That basically states if you wait too long to bring a claim, you lose the right to do so. IMHO, Mariah Carey has waited too long to lodge any complaints. Mary Carey has been really big in the news for at least 3-4 years, in porn as well as the gubernatorial elections here in California. I even recall seeing a picture of Mary Carey promoting the re-election of President Bush in 2004, using her porn name.

Mary, who may have been drinking a little for the show, also claimed that she got the name "Carey" because of her crazy antics- like that of Jim Carey. I'm not sure if that argument will fly, but they point out many porn star names that are similar to those of other famous people- such as Arnold Schwartzenpecker- so Mariah may be a little late getting to the "stop Mary Carey" party.

More details as this case develops....

Police to reunite? Check the USPTO

I'm a big fan the the band The Police, and have been reading a bunch of stories recently about how they may perform at the Grammys, which is just a prelude to them reuniting for a tour. Today it was confirmed by the Grammys that yes, the Police will perform at the Grammys.

My guess is that they will also go on tour afterwards. My reason? They filed a nice trademark application on January 4, 2007, covering a wide range of goods and services. Tellingly, part of the goods/services are for "use in commerce," since the early 80s, such records and clothing-- whereas other goods/services are "intent to use," such as tour programs and live musical performances. The full listing is:

Class 9:
Records, audio tapes, video tapes, compact discs, and DVDs, all containing music.
FIRST USE: 19770600. FIRST USE IN COMMERCE: 19790000

Class 25:
Clothing, namely, t-shirts;; Clothing and footwear, namely, bandanas, caps, hats, belts, headbands, jackets, jerseys, sweatshirts, shirts, pants, shorts, shoes.
FIRST USE: 19791200. FIRST USE IN COMMERCE: 19810200

Class 14:
Decorative pins, jewelry, watches
Intent to use

Class 16:
Tour programs, posters, stickers, pens, stationery
Intent to use

Class 21:
Coffee mugs, glasses, beverageware
Intent to use

Class 41:
Entertainment services, namely, live musical performances
Intent to use

The full trademark application is online at:

THE POLICE

Now it is entirely possible that the Police filed this to protect their existing marks, but at $325 per class filing fee, that's a bunch of money to spend on covering tours and promotion if you're not planning on using it. While this is not proof positive that they're going to tour, I'm certainly optimistic. Hopefully they do tour, and I get to see them here in LA.