Competition in the adult entertainment industry is intense. The widespread availability of free adult materials online, rampant Internet piracy and very low barriers of entry for new competition all combine to make profitability more difficult than ever before.
Successful adult entertainment companies are pressed to ever more effectively protect and exploit any competitive advantages that they have if they hope to survive, let alone thrive in today’s competitive environment.
While the USPTO is not supposed to base a determination that a mark comprises scandalous or immoral matter on an examiner’s appraisal of submitted specimens, in my experience, blatantly explicit specimens can materially affect, if not provoke, such a determination.
One tried and true way of doing this has been through effective company and product branding to distinguish a company’s products and services from those of competitors.
One of the most important ways that businesses can protect and exploit their brands is through federal registration of their trademarks with the U.S. Patent and Trademark Office. This is largely in part because federal registration of a company’s trademark can provide a number of important benefits, including:
- Exclusive ownership of the mark for the identified goods or services across the entire country (except in areas that another party has a pre-existing trademark use of the same or a confusingly similar name or logo);
- Availability of treble damages and potential attorney’s fees awards if the mark is willfully infringed;
- Exclusive registration rights resulting from the USPTO’s obligation not to register any potentially confusing marks in connection with goods or services that are identical or similar to those described for the registered mark;
- A priority date for obtaining trademark applications in foreign countries for a limited time (a strategic, and often critical benefit for companies with substantial offshore sales); and,
- Increased likelihood that trademark owner will prevail in a domain name dispute involving a bad faith registration of a domain name comprising or including the registered trademark.
Over the years I have noted that an increasing number of adult entertainment companies are recognizing the benefits of obtaining federal trademark registration for their brands.
Unfortunately, because adult entertainment businesses tend to use explicit, sexual terms in association with their products and services, they sometimes encounter registration refusals by the USPTO on the ground that the mark is “immoral” or “scandalous.” This kind of rejection is often met with surprise by adult companies or their counsel who may not have experience addressing this type of registration refusal.
While overcoming an immoral or scandalous mark registration rejection can often be difficult, it is by no means impossible. To overcome registration refusals of this type, it is first important to understand that the federal government’s right to refuse to register a sexually descriptive or explicit mark is actually fairly limited. This can be seen in the section of U.S. trademark law that grants the USPTO the authority to refuse registration of immoral or scandalous marks, which states:
“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 . . . .”
Thus, overcoming a USPTO registration rejection on the grounds that the mark is immoral or scandalous will turn on whether there is evidence that the mark actually fits within an operative definition of “immoral” or “scandalous.”
To support an immoral or scandalous matter refusal, the government must provide evidence that demonstrates a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. In this regard, the statutory term “scandalous” has been considered to encompass matter that is “vulgar,” defined as “lacking in taste, indelicate, [or] morally crude.”
The USPTO can meet its burden of proving a mark to be scandalous or immoral by providing citations to dictionary definitions, articles, online forums, and other publications. Often, however, the USPTO trademark examiner handling the case will base his or her refusal on dictionary definitions alone. For example, the marks “1-800-JACKOFF FREE” and “JACK OFF” were determined to be scandalous matter because all dictionary definitions provided by the trademark examiner indicated that the term “jack-off” was considered vulgar.
Similarly, the USPTO’s refused to register “MOMSBANGTEENS” on scandalous matter grounds, successfully supporting the rejection entirely by dictionary definitions for the words “moms,” “bang,” and “teens,” which, when used together, as in the mark, comprises, according to the USPTO, vulgar matter.
The USPTO is also limited in its ability to ascribe its own subjective interpretations regarding a mark. Courts have ruled that the meaning the government claims is imparted by the mark must be determined in the context of the current culture and perception. In one case, for example, a court ruled that USPTO could not effectively establish that the mark “BLACK TAIL” used in association with adult entertainment magazines comprised scandalous matter because there are both vulgar and non-vulgar definitions of ‘tail,’ and the government failed to show which of these definitions is actually used by a substantial composite of the general public.
Additionally, the USPTO can only reject a mark as scandalous if the trademark examiner’s evaluation has been made in the context of the relevant marketplace for the goods or services identified in the trademark application.
While this limits the USPTO somewhat, it is important to note that the determination is made from the standpoint of substantial composite of the general public. This means that a literal majority of the public need not hold the view that the meaning or use of a mark in context is vulgar or otherwise immoral or scandalous. As long as a substantial composite of the general public would likely perceive the mark, in context, to have a vulgar meaning, then the mark as a whole can be deemed to consist of or comprise scandalous matter under U.S. trademark law.
One way to avoid unfounded and often costly trademark application rejections on scandalous or immoral grounds is to avoid provoking a trademark examiner’s possible sensitivity to explicit sexual content. For this, and other reasons set forth below, great care should be taken in the selection and presentation of the specimens that depict use of the mark that are submitted with the application to the USPTO. Providing such specimens is a required part of the trademark registration process. But unlike trademark applications pertaining to other products and services, marks associated with explicit adult content depictions are often stigmatized with negative associations of vulgarity in the minds of many people.
It is therefore prudent to be mindful of the fact that one of those persons might be your trademark examiner.
While the USPTO is not supposed to base a determination that a mark comprises scandalous or immoral matter on an examiner’s appraisal of submitted specimens, in my experience, blatantly explicit specimens can materially affect, if not provoke, such a determination.
So whenever possible, I try to provide appropriate specimens that are the least likely to provoke an examiner’s sensitivity to explicit sexual depictions.
Another reason why extra care should be exercised when submitting trademark specimens containing depictions of genital nudity, or actual or simulated sexual conduct, involves the issue of mandatory compliance with federal regulations requiring that the transmission of such materials be associated with a proper record-keeping compliance statement. This involves compliance with the so-called “2257” recordkeeping and labeling laws, a set of regulations with which every adult entrepreneur should be very familiar.
While a discussion of those regulations is far beyond the scope of this article, it is important to note that failure to affix an appropriate compliance statement to specimens submitted to the USPTO that include sexual depictions could constitute a violation of the aforementioned regulations, a federal felony.
Moreover, if the specimens are not compliant with the regulations, evidence of the resulting violation of federal criminal law will be permanently recorded in the public databases maintained by the USPTO. If you have any questions about whether the specimens that you or your counsel intend to provide to the USPTO are compliant with the 2257 regulations, I urge you to immediately seek the counsel of an experienced adult entertainment lawyer.
Responding to an immoral or scandalous matter trademark application rejection.
How to respond to an immoral or scandalous trademark registration refusal generally depends on the circumstances. For example, if the trademark examiner bases his or her rejection on a meaning of the mark only from a dictionary definition, the applicant should cite contrary evidence showing that a substantial composite of the general public would not adopt that meaning and would not find the mark to be scandalous. For example, in overcoming a scandalous matter rejection for the mark “WEAPONS OF ASS DESTRUCTION,” attorney and trademark law expert, Anna Vradenburgh, cited the widespread and non-vulgar use of the terms comprising the mark, including the word “ass” on the radio, in print, and in other media.
To respond to a USPTO scandalous matter rejection, it also might be necessary or advantageous to submit third party use of the terms at issue on other goods or services. For example, in the same case rejecting the WEAPONS OF ASS DESTRUCTION application, the applicant’s counsel cited use of the exact same phrase on a hot sauce bottle.
Similar arguments can be made when the use of the word or phrase, or something similar, has been allowed registration for different products. This provides an opportunity to point out to the trademark examiner similarities in the suggested meanings of the allowed mark and rejected mark. Such an argument was successfully maintained in regard to WEAPONS OF ASS DESTRUCTION application by pointing out that the USPTO had previously allowed the registration of the mark “MY ASS IS MY ASSET.”
In sum, trademark registration refusals by the USPTO on the ground that the trademark comprises immoral or scandalous matter can be problematic. But they can also often be overcome with the right argument and the right kind of evidence. If you have questions or need advice about federal registration of a trademark, please feel free to contact me at the number below.
This article is for educational purposes only and nothing in this article is intended to be, or should be considered to be, legal advice. If you have a legal question or other matter related to the any of the topics discussed in this article, I invite you to contact our office at the number below or you should contact other qualified counsel.
Gregory A. Piccionelli is an entertainment attorney with more than 20 years experience specializing in entertainment, Internet and free speech matters. He can be reached at Piccionelli & Sarno at (747) 220-6820 or greg@piccionellisarno.com.
