Knowledge Library

“When a thing ceases to be a subject of controversy, it ceases to be a subject of interest.”
– William Hazlitt, English literary critic and essayist

Absent provocation, reasonable people try not to give offense.  In fact, a large majority of individuals try to conform to social mores and “do the right thing.” However, there is no absolute barometer for appropriate behavior and speech.  Utterances and expletives that upset one person will have little to no effect on another.   Trademark offices around the world have been confronted with the fact that certain marks offend portions of their citizenry, and have therefore implemented prohibitions on the registration of scandalous and immoral trademarks.   This paper takes a look at the laws and recent decisions from various jurisdictions in an attempt to understand if there is international agreement over what exactly makes a mark too outrageous for registered rights. ¹

United States

The U.S. Code specifies that a trademark can be refused registration on the Principal Register if it “consists of or comprises immoral, deceptive, or scandalous matter…” 15 USC § 1052(a).  The United States Patent and Trademark Office’s (USPTO) Trademark Manual of Examining Procedure (TMEP) holds that the above section, Section 2(a), is an absolute bar to the registration of immoral or scandalous matter on the Principal and Supplemental Registers.  Although the words “immoral” and “scandalous” may have somewhat different connotations, U.S. case law has included immoral matter in the same category as scandalous matter. See In re McGinley, 211 USPQ 668, 673 (C.C.P.A. 1981), aff’d 206 USPQ 753 (TTAB 1979).

The First Amendment to the U.S. Constitution guarantees that Congress will make no law abridging the freedom of speech.  By and large, the United States is a nation that prides itself on this freedom.  Criticism of government and propagation of unpopular – even distasteful – ideas are almost always permitted (of course, certain exceptions do apply).  Although refusing to register a proposed scandalous or immoral trademark is a denial of certain rights, it has not been held not to abridge the First Amendment because no conduct is proscribed and no tangible form of expression is suppressed. TMEP § 1203.01.  Practically speaking, a refusal to register does not preclude an applicant from selling merchandise or rendering services under a proposed mark, nor from uttering the proposed mark aloud in a public forum.  A refusal simply means that an applicant is unable “to call upon the resources of the federal government in order to enforce [its] mark.”  In re Fox, 105 USPQ2d 1247, 1250 (Fed. Cir. 2012).

The 2013 Trademark Trial and Appeal Board (the Board) decision in the case In re Star Belly Stitcher, Inc. centers on the USPTO’s refusal to register an application for the mark AWSHIT WORKS for various clothing and headgear items.  107 USPQ2d 2059 (TTAB 2013).  The Examining Attorney refused registration under Section 2(a) on the ground that the mark, when used in connection with the goods, comprises immoral or scandalous matter.  Applicant argued that the proposed mark is a coined, fanciful term, and that the word SHIT is not used or emphasized separate and apart from the complete mark.  The Examining Attorney maintained that the term is offensive, and that AWSHIT is a combination that is “vulgar slang” for use as an interjection to express surprise, anger or extreme displeasure.

In reviewing the arguments, the Board observed that “[w]hat constitutes “immoral” or “scandalous matter” has evolved over time”² and that the Federal Circuit has acknowledged that “we must be mindful of ever-changing social attitudes and sensitivities.”  Star Belly, 107 USPQ2d at 2060, citing In re Mavety Media Grp. Ltd., 31 USPQ2d 1923 (Fed. Cir. 1994).  As the Federal Circuit stated, “[t]oday’s scandal can be tomorrow’s vogue.  Proof abounds in nearly every quarter, with the news and entertainment media today vividly portraying degrees of violence and sexual activity that, while popular today, would have left the average audience of a generation ago aghast.” Id.

However, the Board notes that despite these changing mores, the basic legal framework remains consistent.  In order to refuse a mark under this portion of Section 2(a), the USPTO “must demonstrate that the mark 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.”  Star Belly, citing Mavety, 31 USPQ2d at 1926.  Importantly, the U.S. Court of Appeals for the Federal Circuit has also held that the USPTO may prove scandalousness by establishing that a mark is “vulgar.”  Fox, 105 USPQ2d at 1250.  The record in the Star Belly case included numerous dictionary entries demonstrating that the term “shit” is defined in terms of being “vulgar” or “offensive.”  Star Belly, citing In re Boulevard Entm’t Inc., 67 USPQ2d 1475, 1478 (Fed. Cir. 2003).

The Board highlighted the fact that there is no requirement that a mark’s vulgar meaning be the only relevant meaning, or even the most relevant meaning.  Instead, as long as a “substantial composite of the general public” perceives that mark, in context, has a vulgar meaning, the mark as a whole consists or comprises scandalous matter.  Star Belly, citing Fox at 1248.  In its decision, the Board held that they had “no trouble” finding that Applicant’s proposed mark was scandalous, and therefore, affirmed the Examiner’s decision to refuse registration.

The Board has also refused registration of design marks under the Section 2(a) scandalous and immoral standard.  In the case In re Luxuria, s.r.o., the Board considered the Examining Attorney’s refusal to register a design mark consisting of a bottle in the shape of a hand with the middle finger extended upwards (depicted below), for various non-alcoholic beverages in Class 32 and alcoholic beverages except beers in Class 33.  100 USPQ2d 1146 (TTAB 2011).

Applicant acknowledged that its design mark is a representation commonly referred to as “giving the finger” or “giving the bird.”  The Examining Attorney made of record several dictionary and reference material listings and articles, which referred to the gesture as one that is obscene and offensive.

In its opinion, the Board noted that because the channels of trade for the goods include supermarkets, where goods are normally displayed on retail shelves, Applicant’s goods would “be visible to all consumers shopping in such places, including parents shopping with their children.”

With respect to Applicant’s argument that the Examiner failed to consider contemporary attitudes toward the “giving the finger” gesture, the Board stated that the dictionary definitions were sufficiently contemporaneous with the examination of the subject application that they represented contemporary viewpoints.  Further, two of the articles were printed within two years of the year that the notice of appeal was filed.   In view of this, registration was refused.

European Union

The Manual Concerning Proceedings Before the Office for Harmonization in the Internal Market (OHIM) (the Manual) covers scandalous subject matter in the section, Absolute Grounds for Refusal and Community Collective Marks.  Part B, Section 4, 1.2.1, entitled “Public policy or morality, Article 7(1)(f) CTMR,” states: “[this section] excludes from registration trade marks which are contrary to public policy or to accepted principles of morality. The rationale of Article 7(1)(f) CTMR is to preclude trade marks from registration […] would be perceived by the relevant public as going  directly against the basic moral norms of society.”

The OHIM considers that ‘public policy’ and ‘accepted principles of morality’ are two different concepts, which often overlap.  A public policy objection, on the one hand, derives from an assessment that is based on objective criteria and not on perception of the relevant public. Public policy is the body of all legal rules that are necessary for the functioning of democratic society and the state of law.   An objection based on ‘accepted principles of morality’ concerns subjective values, although these must be applied as objectively as possible by the examiner. It excludes registration of “blasphemous, racist or discriminatory words or phrases, but only if that meaning is clearly conveyed by the mark applied for in an unambiguous manner; the standard to be applied is that of the reasonable consumer with average sensitivity and tolerance thresholds.”  The Manual recognizes that there is a clear risk that the wording of Article 7(1)(f) CTMR could be applied subjectively so as to exclude marks that are not to an examiner’s personal taste.

Similar to the U.S. TMEP, the Manual acknowledges that it is normally necessary to consider the goods and services for which registration of the mark is sought, since the relevant public may be different for different goods and services and, therefore, may have disparate thresholds with regard to what is unacceptably offensive.  However, the Manual states that there is no need under the law to establish that an applicant wants to shock or insult the public, the fact that the mark might be seen as a shock or insult is sufficient.

Notably, since the OHIM is responsible for managing the trademark registration process for all 28 Member-States of the European Union, the legislation and administrative practice of certain Member States can also be taken into account when assessing the registerability of marks (i.e. for assessing subjective values).  This will be discussed further, below.

With respect to the issue of whether this provision is in derogation of the principle of freedom of expression, as set forth in Article 10 of the European Convention on Human Rights⁴ , the Manual holds that it is not, “since the refusal to register only means that the sign is not granted protection under trade mark law and does not stop the sign being used – even in business.”

An important case in the E.U. regarding the concept of immorality involves an application for the mark SCREW YOU covering eyewear and accessories (Class 9); condoms, contraceptives, breast pumps, artificial breasts, and sex toys (Class 10); clothing, footwear and headgear (Class 25), sporting equipment (Class 28) and alcoholic beverages (Class 33).  Jebaraj Kenneth Trading as Screw You, R495/2005-G, [2007] ETMR 7.  The Examiner refused the application on the grounds that the mark is contrary to public policy or to accepted principles of morality.  In the opinion, the Examiner alleged that the expression SCREW YOU was a profane insult used to insult a person.

Applicant appealed the case to the Grand Board of Appeals (the GBA).  The GBA noted that the provisions of Article 7(1)(f) CTMR mirror that of Article 6quinquies(B)(3) of the Paris Convention, which provides for the refusal of trademark applications and the invalidation of registrations where trademarks are “contrary to morality or public order.”

The GBA acknowledged that Article 7(1)(f) imposes a duty on the OHIM to exercise a degree of moral judgment in assessing the suitability of marks to  be granted trademark protection.   However, the GBA also admitted that it can be extremely difficult to “ascertain when a sign crosses the boundary from being merely irreverent or distasteful to being seriously abusive and likely to cause deep offense.”  In deciding whether a trademark should be barred from registration on the grounds of public policy or morality, the GBA advised that the OHIM must apply “the standards of a reasonable person with normal levels of sensitivity and tolerance.”  It stated that is also necessary to consider the context in which the mark is likely to be encountered.

In the subject case, the GBA believed that the mark SCREW YOU fell “within the domain of vulgarity, insult and profanity” and opined that it was probable that a substantial number of citizens with a normal level of sensitivity and tolerance would “be upset by regular commercial exposure to the term.”⁵   It said that this is especially so for parents with young children, and for the elderly.

The GBA also discussed how the registerability of a trademark under Article 7(1)(f) is a separate inquiry from whether it can be used.  In differentiating between the two, the GBA noted that no provision of the CTMR (or of a Community law in general) says that a trademark that has been refused registration cannot be used.  However, it asserted that “the organs of government and public administration should not positively assist people who wish to further their business aims by means of trade marks that offend against certain basic values of civilised society.”

The goods listed in the SCREW YOU application under Classes 9, 25, 28 and 33 were considered to be ordinary items marketed in outlets used by the general public.  Therefore, the GBA held that use of the trademark in connection with these goods would inevitably cause a significant section of that public to be upset and affronted – and thus upheld the Examiner’s objection for these goods.  With respect to the Class 10 goods, the GBA held that the application was allowed for “condoms, contraceptives and sex toys” and the remaining items in the class – provided the identification was modified to cover only those items sold exclusively in sex shops.

Another noteworthy case, brought before the General Court of the European Union, involved an application to register a design mark that depicted the coat of arms of the former Union of  Soviet Socialist Republics (USSR) (depicted below). Couture Tech Ltd. v. OHIM, T-232/10, [2011] ECR 5.

The disputed application covered cosmetics, jewelry, bags, textiles, badges/buckles and hospitality and restaurant services. The Examiner refused the application on the ground that the mark was contrary to public policy or accepted principals of morality, holding that it alluded to the “Soviet totalitarian regime and its ideology which has tragically affected many countries, nations and individuals.”Further, “in view of the genocide and other crimes committed by the Soviet regime… it is clear that its official symbol may cause outrage in the minds of people in those Member States which have been directly affected.”⁶

In 2011, the Court, upholding the ruling by the Board of Appeal, stated that a mark must be refused registration if it is contrary to public policy or to accepted principals of morality in part of the European Union, and that part may, in some circumstances, by comprised of a single Member State.  The Court noted that it was apparent that, concerning Hungary, the “semantic content of the coat of arms of the former USSR has not been diffused or transformed to the point where it would no longer be perceived as a political symbol.”  In addition, the Court observed that the mark merely reproduced the USSR coat of arms, and did not include any additional elements.

Australia

Section 42(a) of the Australian Trade Marks Act of 1995 states that an application for the registration of a mark must be rejected if “the trade mark contains or consists of scandalous matter.”  The Australian Trade Marks Office (ATMO) Manual of Practice and Procedure (the Manual) refers to a dictionary entry in stating that the word ‘scandalous’ is defined as meaning: (1) disgraceful to reputation; shameful or shocking; (2) defamatory or libelous, as a speech or writing.  It goes on to state that the Registrar is obliged to decide, on behalf of the “ordinary” person, whether a trade mark should be regarded as shameful, offensive or shocking, and therefore rejected.

Echoing sentiments found in US case law, the Manual observes that “the words and images fitting this description have changed with the passage of time, and it is quite likely, in the 21st century, that words which would have caused major offence in earlier times are now acceptable as trade marks in certain markets.”  See also Cosmetic, Toiletry and Fragrances Association Foundation v Fanni Barns Pty Ltd, [2003] ATMO 10 (10 February 2003) (stating that there can be “little argument that contemporary language, both spoken and written, is more robust than it was even 10 years ago”).  Conversely, the ATMO also recognizes that words which were once innocuous may have developed different connotations and may now be regarded as offensive under certain circumstances.

The Manual goes on to state that examiners “faced with trade marks incorporating elements of obscenity, violence or profanity need to decide whether the mark is ‘scandalous’ or only in bad taste.  A consideration of the ultimate market for the goods is required here.  Words considered as ‘bad language’, while most likely acceptable on adult surf clothing or party plan goods designed for adults, are unlikely to be acceptable on children’s toys or clothing.”

The threshold for rejecting an Australian trademark application under Section 42(a) is considered relatively high.  See Ashurst Newsletter: “World focus: Scandalous trade marks – an Australian perspective (IP/IT newsletter, January 2013),” (link).  The Manual states that the scandalous element has to be something that is “obvious and up front” in the mark.  Moreover, “[a] mere suggestion within the mark or a vague possibility that someone might find it offensive in certain circumstances is not sufficient.”  Indeed, marks such as UNFKNBLVBLE! and FARKOFF have been granted registration on the Australian trademark register.

An important Australian case involved a 2008 application for the mark POMMIEBASHER – a term that was historically understood to refer to someone who habitually criticizes England or English people – for clothing and beverages. Peter Hanlon [2011] ATMO 45 (31 May 2011). The Examiner held that the mark was not registrable on the basis of section 42(a) (which, it has been noted, had rarely been invoked by the Trade Marks Office). See Davies Collison Cave legal briefing: “Scandalous trade marks: did POMMIEBASHER cross the line?,” (link)

In reaching a decision, the Delegate noted that the focus of Australian legislation had shifted from conformity with moral codes, to a prohibition on registration of scandalous trademarks, a more subtle test.  This differs from both U.S. and E.U. law, which draw heavily on an immorality standard.

On appeal, the ATMO held that although POMMIEBASHER suggested a person who was “markedly and stridently biased in his/her view of the English,” the mark did not go so far as to suggest that such a person engages in racial vilification, or is prone to verbal abuse or one who literally bashes or assaults English people.  The Delegate concluded that the term was shown to be “part of ordinary and acceptable, if colourful and colloquial, language.”  It was therefore granted registration.

Another Australian case, one that has received a good deal of press, is that of the application for the mark NUCKIN FUTS, covering various snacks foods, including nuts. App. No. 1408134 in the name of Universal Trading Australia Pty Ltd as trustee for Basil and Groovy Trust.  Initially, the Examiner refused the application for the spoonerism⁷ on the ground that it was “scandalous and offensive” given that it sounded too similar to a commonly used obscene phrase.

However, in early 2012, the ATMO ultimately allowed the application to proceed to acceptance, subject to the following endorsement: “It is a condition of registration that the trade mark will not be marketed to children.” This mark may fall into a category of marks incorporating coarse language that has a requisite degree of invention or imagination for registerability purposes. See Davies Collison Cave legal briefing: “How scandalous is too scandalous for the Australian Trade Marks Office?” at www.davies.com.au/pub/detail/569/how-scandalous-is-too-scandalous- for-the-australian-trade-marks-office.

Recent court decisions regarding offensive trademarks in the U.S, E.U. and Australia appear to have much in common.  All jurisdictions recognize that attitudes are changing, and that trademark offices must be cognizant of this social and cultural evolution when evaluating marks. In addition, case law from all three regions considers the context in which a mark is to be used into consideration when determining whether the mark is eligible for registration.  However, the regions’ laws do not mirror one another.  The U.S. TMEP questions whether a mark is “scandalous or immoral,” the E.U.’s Manual considers whether a mark is “contrary to public policy or to accepted principles of morality” and Australian law asks whether the trademark consists of “scandalous matter.” In the end, however, the determination of whether a mark is scandalous or immoral is undoubtedly a subjective question, based largely on the subconscious notions and values held by the individual Examiner reviewing the application.⁸ Given this, the prospect of uniformity across jurisdictions might be the most outrageous prospect of all.