Immoral or Scandalous Matter?

by Jason Fischer

One of the "peculiarities" of U.S. trademark law is that the government has a stick up its collective ass about recognizing trademarks that may be suggestive of dick-and-fart humor.  Section 2 of the Lanham Act (the federal statute that creates trademark rights) provides:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it –

  • (a) Consists of or comprises immoral, deceptive, or scandalous matter . . . .

15 U.S.C. ยง 1052 (2008).

epic-name-fail

Presumably, you can decide for yourself whether the above image is offensive or (as I did) worthy of a snicker or three.  It looks like, from the license plate and unfamiliar make/model of the van, this company is doing business overseas, but rest assured this mark would never appear on the principal register of trademarks in this country.  Now, don’t misunderstand me; if this business opened up an office on this side of pond, they could likely prevent others from using the same mark, based on any common law rights that could be established, but our federal government would never give them the benefits of a federal registration for the mark.

Now, you may be asking yourself, "Wait; isn’t that the whole point of trademark law — preventing others from using your mark?"  That is true, but the game gets much, MUCH easier when you have a federal registration.  Establishing common law rights is generally an extremely lengthy and expensive evidentiary process, which involves paying your attorney to prepare and file a phone-book-sized amount of paperwork in any infringement suit.  Compare that with the single sheet that must be presented by the owner of a federally registered trademark, and you begin to see some of the benefits of registration.

Lots of hardcore civil libertarians that I know pound the table and froth at the mouth while denouncing the puritanical nature of our trademark regime.  Even though I don’t get as worked up, personally, I do happen to agree.  What difference does it make that someone wants to call their business "Butt Drilling"?  Do we really need the federal government to discourage that guy from doing what he wants with his entrepreneurial humor?  Should we be shielded from this "attack of immorality" at the expense of his freedom?  Trust me, plenty has already been written on whether there is even a rational basis for Section 2(a), by people way smarter than I — enough that I won’t bore you with any more.  Suffice it to say, it is something that must be given careful consideration when choosing your brand.


This story has also been published on The Tactical IP Blog.

5 Responses to Immoral or Scandalous Matter?

  1. TomMil says:

    Here in Northern New Jersey there is a chicken franchise called “Cluck U”. I wonder if they are federally registered.

  2. Jay says:

    Jason, this calls for an experiment. Get in touch with the company and say you want to file their trademark in their name for them, pro bono. Then let us know what happens. I guarantee the above word and logo design will fly with no trouble. The examiner might kick up a fuss, but a first-day paralegal with almost no trademark experience could easily drum up a reasonable, persuasive argument that would allow the app to pass exam. And probably require no more than 300 words to do it…

    My point is, while I agree 100% with your views on the morality police that is the USPTO, BUTT DRILLING, I believe, isn’t particularly offensive.

    Just pop on TESS and search for “BUTT”. For instance, BUTT FACIAL is reg’d:

    http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78370263

    I like that one.

    So is “BUTT RUB” (very sensual):

    http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78432452

    My personal favorite is:

    http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78874761

    Why didn’t I think of that one?

    :)

  3. andrews says:

    I would point out that there is a Butts County up in Georgia. There have got to be a lot of trade marks incorporating that as their place name.

    • Tatiana says:

      Oh, Georgia makes me so proud, Andrew.

      Very amusing, Jason… in Germany there was a company by where I lived called “Fucker”, pronounced more like fooker. The company had a huge problem w/ military boys stealing their sign and eventually had to move it out of reach. “Fucker” was the owner’s last name from my understanding. Good thing his first name wasn’t Butt. Being “dick” in German means “thick”, Butt Fucker as a real name would not surprise me.

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