Guest post: Trademarks the government doesn’t want you to see

We’re pleased to introduce Strong Language readers to Anne Gilson LaLonde, the author of Gilson on Trademarks, a legal treatise on United States trademark law.  Anne writes and speaks about many different aspects of trademark law, but this topic may well be her favorite.

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Under the federal trademark statute, trademarks that are found to be “scandalous” can’t be registered with the United States Patent and Trademark Office.  While this doesn’t stop trademark owners from using these marks, they can’t rely on various legal advantages that come with federal registration.

The agency asks whether “a substantial composite of the general public” would find the mark as used to be shocking, offensive or vulgar.  While more mild profanity – BASTARD, CRAP, DAMN, BITCH – is generally allowed, terms like FUCK, ASSHOLE, and BULLSHIT are unregistrable.  The USPTO has denied registration, for example, to various unseemly marks for apparel like ASSJACKED, FUCT, I BANGED BETTY, AWSHIT WORKS, and YOU CUM LIKE A GIRL.  It has also rejected registration for a variety of marks for porn, such as MOMSBANGTEENS, FACIAL ABUSE, CUMFIESTA, CUMGIRLS, and 1-800-JACK-OFF. Finding that the term PUSSY is vulgar and offensive, the USPTO refused to register the following mark for energy drinks:

And it unsurprisingly wouldn’t register REALLY GOOD SHIT for “penetrating oil for automotive, marine, industrial, residential, and sporting use.”  But the agency did allow the clever mark CUMBRELLA to be registered for condoms.

The USPTO will generally not register marks that are stand-ins for vulgar words.  For example, it refused registration to NO $#!+ for a humor website, FOK’N HURTS for stun guns, GRANDMA SCHITTHED’S OUTHOUSE BROWN for beer and ale, and A-HOLE PATROL for an “online social club that screens jokes submitted by users to control offensive and inappropriate content.”  “Middle finger” marks have also been refused registration, including the following for various items of clothing:

But the USPTO did allow registration to BIG EFFIN GARAGE for an online community for musicians and music fans, and found the following design mark “not scandalous” for “decorative refrigerator magnets”:

It’s tough to predict the registration outcome for some abbreviations, euphemisms, lesser-known slang variations, innuendo and nicknames for otherwise clearly vulgar marks.

It’s possible to argue successfully that a mark isn’t scandalous because it’s used as a double entendre, like this one in which BIG PECKER just might refer to a bird with a large beak:

But the double entendre argument didn’t win the day for the following mark for chocolate suckers molded in the shape of a rooster, which was rejected:

The claim that DICK HEADS was a nickname for Richard Heads’ Bar & Restaurant didn’t help this applicant, also rejected by the USPTO for registration:

It’s problematic that a variety of USPTO attorneys from different backgrounds are deciding whether the general public throughout the U.S. would be shocked by a certain term or design. For instance, some marks that include the acronym MILF have been allowed to register, while others were rejected as scandalous, likely depending on how familiar the examining attorney happened to be with current slang.  The USPTO doesn’t conduct consumer surveys or employ experts, and often relies on evidence like whether dictionaries label a term as “vulgar,” “offensive” or “taboo.”