Tuesday, December 23, 2014

Trademark Law...NSFW?

Section 2(a) of the Lanham Act, which governs federal trademarks, prohibits registration of trademarks that consist of or comprise "immoral, deceptive, or scandalous matter." But who decides what constitutes an immoral, deceptive or scandalous mark?

As an initial matter, trademark examiners with the United States Patent and Trademark Office (USPTO) make the call. While you might think you're stuck with Justice Potter Stewart's classic definition of obscenity ("I know it when I see it") when the examining attorneys make their decisions, a series of USPTO determinations has recently been collected that give you a more solid understanding of just what kinds of marks have been considered immoral, deceptive, or scandalous.

Trademarks Laid Bare: Marks that May be Scandalous or Immoral (available in the Gallagher Law Library here) gives an overview of the policy underpinnings of the prohibition against scandalous marks, summarizes the standard and applicable factors the USPTO considers when making assessments regarding such marks, then groups determinations by specific categories that could be considered objectionable (e.g., religious or ethnic marks, sexual references, drug references).

There are numerous instances when this book may come in handy, but one area in particular may be a hot topic in the coming years: In an April Fool's Day twist a few years ago, the USPTO opened up a new category for marks: marijuana strains. While it seems clear that federal law still prohibits registering marks for marijuana strains, state trademark law may come into play. For more information on trademark law generally, check out Gallagher Law Library's research guide on trademarks.

For state-specific information, check the websites for Secretaries of State (like this one for Washington) as they often have jurisdiction over state trademark law.

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