Trademarks Laid Bare: Marks that may be scandalous or immoral, by Anne Gilson LaLonde and Jerome Gilson, Matthew Bender, 2011
The title says it all, that and maybe also the large warning sign on the front cover. The book while humorous is a comprehensive commentary on a complex issue by the former and the current author of Gilson on Trademarks. To determine if a proposed mark is scandalous or immoral, the federal law in the Trade-Mark Act of 1905 and as carried over to the Lanham Act in section 2(a) applies. The Office of Patent and Trademark has no independent standards for such determinations. What is considered scandalous or immoral mostly depends on not offending consumer sensibilities. This is not as simple as “I know it when I see it” because even though a word regularly may be seen on the internet, spoken on television or frequently used in everyday verbal communication, the context is not the same as when part of a mark. For example, the word “cocaine” is not in itself objectionable, as it is commonly used to refer to the drug. However, when a mark is to be used in combination with soft drinks and energy drinks, the term cannot be considered neutral. On the other hand, a mark may be considered scandalous or immoral no matter what the product. Scatological words fall into this category. And don’t look to earlier registered trademarks because the PTO does not consider them of precedential value.
Sexual references and realistic images thereof, slang references and marks that are derogatory to racial and ethnic groups because of the nature of the goods or products represented are almost always determined to be scandalous. Also, in conjunction with goods and services, references to violence such as in the application for “Baby Al Qaeda” infant t-shirts have been rejected. The book notes however that the following mark is registered for jewelry and clothing.
Other sources the PTO uses to determine evidence of scandalousness include dictionaries, news articles (online and in print), and marketing/ advertising plans. In the example above, application for the trademark of the word “Cocaine” for energy drinks was denied in part because the applicant’s website offered recipes such as “Cocaine Smash” and “Cocaine Snort” for alcoholic beverages using the product. Their marketing materials promoted the soft drink, which could be bought easily and inexpensively by teens and children, as “Speed in a Can”, “Cocaine – Instant Rush” and “Liquid Cocaine”.
For an attorney just beginning to practice trademark law or as a practice guide for seasoned attorneys who want to see specific examples, this book would be valuable.
New in the Library: Call # KF 3180 .L35 2011