As stated in section 1203.01 Immoral or Scandalous Matter of the Trademark Manual of Examination Procedure:

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

Although the words "immoral" and "scandalous" may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter. See In re McGinley, 660 F.2d 481, 484 n.6, 211 USPQ 668, 672 n.6 (C.C.P.A. 1981), aff'g 206 USPQ 753 (TTAB 1979) ("Because of our holding, infra, that appellant's mark is ‘scandalous,' it is unnecessary to consider whether appellant's mark is ‘immoral.' We note the dearth of reported trademark decisions in which the term ‘immoral' has been directly applied.")

The prohibition against the registration of marks that consist of or comprise immoral or scandalous matter was originally enacted as §5(a) of the Trademark Act of 1905, and was reenacted as part of §2(a) of the Act of 1946. There is little legislative history concerning the intent of Congress with regard to the provision; therefore, the term "scandalous" is interpreted by looking to "its ordinary and common meaning." In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (C.C.P.A. 1938). This may be established by referring to court decisions, decisions of the Trademark Trial and Appeal Board and dictionary definitions. In re McGinley, 660 F.2d at 485, 211 USPQ at 673.

In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined "scandalous" as, inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. In re McGinley, 660 F.2d at 486, 211 USPQ at 673 (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a "newsletter devoted to social and interpersonal relationship topics" and for "social club services," held scandalous). The statutory language "scandalous" has also been considered to encompass matter that is "vulgar," defined as "lacking in taste, indelicate, morally crude." In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971).

The meaning imparted by a mark must be determined in the context of the current attitudes of the day. See In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) (evidence found insufficient to establish that BLACK TAIL used on adult entertainment magazines comprises scandalous matter; court noted that there were both vulgar and non-vulgar definitions of "tail," and that the record was devoid of evidence demonstrating which of these definitions a substantial composite of the general public would choose in the context of the relevant marketplace); In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993) (OLD GLORY CONDOM CORP and design comprising the representation of a condom decorated with stars and stripes in a manner to suggest the American flag held not to be scandalous); In re Thomas Laboratories, Inc., 189 USPQ 50, 52 (TTAB 1975) ("[I]t is imperative that fullest consideration be given to the moral values and conduct which contemporary society has deemed to be appropriate and acceptable.")

The determination of whether a mark is scandalous must be made in the context of the relevant marketplace for the goods or services identified in the application, and must be ascertained from the standpoint of not necessarily a majority, but a "substantial composite of the general public." In re McGinley, 660 F.2d at 485, 211 USPQ at 673 ("[T]he Lanham Act does not require, under the rubric of ‘scandalous,' any inquiry into the specific goods or services not shown in the application itself."); In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) (mark for restaurant and bar services consisting of words DICK HEADS positioned directly underneath caricature of a human head composed primarily of graphic and readily recognizable representation of male genitalia held scandalous, as it would be considered offensive by a substantial portion of the public); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988) (graphic design of a dog defecating, as applied to polo shirts and T-shirts, held scandalous, given the broad potential audience that may view applicant's mark in sales establishments and "virtually all public places"); In re Hepperle, 175 USPQ 512 (TTAB 1972) (while the words might be a reference to marijuana, ACAPULCO GOLD found not scandalous when used as a mark for suntan lotion).

Therefore, to support a refusal on the ground that a proposed mark is immoral or scandalous, the examining attorney must provide evidence that 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 re Mavety Media, 33 F.3d at 1371-1372, 31 USPQ2d at 1925. This evidence could include dictionary definitions, newspaper articles and magazine articles. The examining attorney should not rely solely on an earlier decision holding a term to be scandalous in support of a refusal. The Trademark Trial and Appeal Board has held that an earlier decision is insufficient to warrant the same finding in a future case. In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) (rejecting examining attorney's argument that the Board's 1981 decision in In re Tinseltown, Inc., 212 USPQ 863 (TTAB 1981) finding BULLSHIT to be scandalous is sufficient to warrant the same finding in a later case). Rather, the facts underlying the earlier decision must be looked at to determine, first, whether it has any relevance to the present case, and, if so, whether that earlier finding is equally applicable today, for example, by looking at other evidence such as recent dictionary definitions. Red Bull at 1381.

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant's use of the word is limited to the vulgar meaning of the word. In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) (1-800-JACK-OFF and JACK OFF held scandalous, where all dictionary definitions of "jack-off" were considered vulgar); Red Bull, supra (multiple dictionary definitions indicating BULLSHIT is "obscene," "vulgar," "usually vulgar," "vulgar slang," or "rude slang" constitute a prime facie showing that the term is offensive to the conscience of a substantial composite of the general public).

It has been noted that the threshold is lower for what can be described as "scandalous" than for "obscene." Refusal to register immoral or scandalous matter has been found not to abridge First Amendment rights, because no conduct is proscribed and no tangible form of expression is suppressed. Also, the term "scandalous" has been held sufficiently precise to satisfy due process requirements under the Fifth Amendment. In re McGinley, 660 F.2d at 484-85, 211 USPQ at 672.

The prohibition in §2(a) of the Act against the registration of scandalous matter pertains only to marks that are scandalous. The authority of the Act does not extend to goods that may be scandalous. See In re Madsen, 180 USPQ 334, 335 (TTAB 1973) (WEEK-END SEX for magazines held not scandalous, the Board observing that whether the magazine contents may be pornographic was not an issue before the Board).

The examining attorney may look to the specimen(s) or other aspects of the record to determine how the mark will be seen in the marketplace. See In re McGinley, 660 F.2d at 482 n.3, 211 USPQ at 670 n.3 (containing excerpts from appellant's newsletters pertaining to their subject matter); In re Hershey, 6 USPQ2d 1470, 1472 (TTAB 1988) (BIG PECKER BRAND for T-shirts found not scandalous, the Board considering the labels that were submitted as specimens in determining the question of how the mark might be perceived. "[T]he inclusion of the bird design would make it less likely that purchasers would attribute any vulgar connotation to the word mark and we note that it is proper to look to the specimens of record to determine connotation or meaning of a mark.")

To ensure consistency in examination with respect to immoral or scandalous matter, when an examining attorney believes, for whatever reason, that a mark may be considered to comprise such matter, the examining attorney must consult with his or her supervisor.

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  • Registration of a mark which consists of or comprises immoral or scandalous matter is prohibited under Section 2(a) of the Trademark Act.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • Registration of a mark which consists of or comprises immoral or scandalous matter is prohibited under Section 2(a) of the Trademark Act.
  • Test for establishing a scandalous mark.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • The Court of Appeals for the Federal Circuit, in In re Mavety Group, Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994), reviewed the law regarding scandalous or immoral matter. The court noted that the burden of proving that a mark is scandalous rests with the PTO. The examining attorney must demonstrate that the mark is "shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation." In re Mavety, 31 USPQ2d at 1925, citing In re Riverbank Canning Co., 95 F.2d 327, 37 USPQ 268 (CCPA 1938).
  • The examining attorney must consider applicant's mark in the context of the marketplace as applied to the identified goods and/or services in the application; whether the mark consists of or comprises scandalous matter is to be determined from the standpoint of not necessarily a majority, but a substantial composite of the general public, and in the context of contemporary attitudes.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • The examining attorney must consider applicant's mark in the context of the marketplace as applied to the identified goods and/or services in the application for registration. Whether the mark consists of or comprises scandalous matter is to be determined from the standpoint of not necessarily a majority, but a substantial composite of the general public, and in the context of contemporary attitudes.
  • It is the profane connotation of the term per se, rather than a particular meaning of the term when considered in connection with a particular class of goods that lead to the conclude that the term would be perceived by a substantial majority of the public as profane and, thus, the term was scandalous.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • It is clearly the profane connotation of the term per se, rather than a particular meaning of the term when considered in connection with goods of this nature (handbags and personal accessories), that led the Board to conclude that the term would be perceived by a substantial majority of the public as profane and, thus, the term was scandalous. Cf. In re Riverbank Canning Co., 37 USPQ 268 (CCPA 1938) (MADONNA held scandalous as applied to wine); and In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993) (flag design mark in connection with condoms found not scandalous due to seriousness of purpose surrounding the use of applicant's mark as a campaign to prevent AIDS).
  • Argument, absent any supporting evidence, that a mark was a play on an expression and not scandalous is unpersuasive.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • Finally, applicant argues that its mark "is an obvious play on the expression BULLS HIT, where a ‘Hit' is a drink or, in some parlance, an inhale or ingestion of some substance – in this case one or more ‘Red Bulls'" (brief, p. 12). The mark for which registration is sought is an actual word and the examining attorney and applicant agree on the definition of the term. Applicant has provided absolutely no evidence supporting its statement that the term would be perceived by anyone as BULLS HIT rather than BULLSHIT; or that, if such was the case, that the phrase BULLS HIT would carry the connotation proposed by applicant. This argument is entirely unpersuasive.
  • Evidence: Dictionary evidence alone can be sufficient to establish the scandalousness of a term that, as defined, has no other non-scandalous pertinent meaning.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • In the case of In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003), the court concluded that dictionary evidence alone can be sufficient to establish scandalousness of a term that, as defined, has no other non-scandalous pertinent meaning. The court stated the following (at 1478): "While it is true that the personal opinion of the examining attorney cannot be the basis for a determination that a mark is scandalous, dictionary definitions represent an effort to distill the collective understanding of the community with respect to language and thus clearly constitute more than a reflection of the individual views of either the examining attorney or the dictionary editors."
  • Evidence: In order to mount a convincing challenge to a dictionary on the ground that it is outdated and therefore does not reflect current community standards, the opponent of the evidence should be expected either to present another authoritative dictionary from a later date that takes a different view of the meaning or acceptability of a word, or to make a persuasive showing through other evidence that the dictionary characterization of the term in question no longer accurately reflects commonly held views.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • As in Boulevard, applicant herein contends that the dictionary evidence does not reflect current standards as to whether the mark would be regarded as vulgar, i.e., that the conclusion in Tinseltown is no longer applicable to contemporary society. In this regard, the court in Boulevard stated the following (at 1478-1479): "By their nature, sources of evidence of community standards are typically based on an assessment made at a particular point in time and therefore are inherently subject to objection for being outdated as time passes. . . . In order to mount a convincing challenge to a dictionary on the ground that it is outdated and therefore does not reflect current community standards, the opponent of the evidence should be expected either to present another authoritative dictionary from a later date that takes a different view of the meaning or acceptability of a word, or to make a persuasive showing through other evidence that the dictionary characterization of the term in question no longer accurately reflects commonly held views."
  • Evidence: The labels noted in several of the more recent dictionaries (such as "usually vulgar" or "rude slang"), suggest that the term has lost its essentially vulgar connotation.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • We conclude that applicant's dictionary excerpts and those which we have judicially noticed may be considered contemporary and probative. We do not agree with applicant that the labels noted in several of the more recent dictionaries (such as "usually vulgar" or "rude slang"), suggest that the term has lost its essentially vulgar connotation. Thus, these dictionary definitions support the conclusion that the term "bullshit" is as vulgar today as it was at the time of the Tinseltown decision.
  • Evidence: Dictionary definition(s) not provided in the opposer's case-in-chief will not be considered if submitted later during the case.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • The slang dictionary excerpt submitted by applicant is for the word "occupy," which had the meaning of "to take sexual possession of a woman" in the 1400s-1600s. Applicant's submission of this dictionary excerpt does not open the door for opposers to submit any slang dictionary definitions. Clearly if opposers wanted to use slang dictionary definitions of "tail" to show this term has a derogatory meaning, they should have done so as part of their case-in-chief. Accordingly, these definitions will not be considered.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • Moreover, although the Board may take judicial notice of dictionary definitions, see University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), in this case we decline to do so.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • The taking of judicial notice in these circumstances is discretionary with the Board. See Litton Business Systems, Inc. v. J.G. Furniture Company, Inc., 190 USPQ 431 (TTAB 1976), denying req. for recon., 190 USPQ 428 (TTAB 1976).
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • For the same reason that it would be unfair to applicant to allow opposers to submit the dictionary definitions as part of opposers' rebuttal testimony, at a point where applicant has no opportunity to respond, it would be inappropriate for the Board to consider what opposers failed to make of record in the proper manner.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • Accordingly, the only grounds for us to consider are whether applicant's mark "consists of or comprises … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…." Section 2(a) of the Trademark Act, 15, U.S.C. 1052(a).
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • As a member of the group which is asserted to be disparaged or brought into contempt or disrepute by the mark BLACK TAIL, she has clearly demonstrated her standing in this proceeding. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Harjo v. Pro Football Inc., 50 USPQ2d 1705 (TTAB 1999); Bromberg v. Carmel Self Service, Inc., 198 USPQ 176 (TTAB 1978).
  • The issue of disparagement is related to the issue of scandalousness.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • Although the issue before the Federal Circuit was whether BLACK TAIL was scandalous, within the provisions of Section 2(a), as applied to adult entertainment magazines, many of the comments made by the Court in that decision are applicable to the present case. See Harjo v. Pro-Football Inc., supra at 1738, stating that the issue of disparagement is related to the issue of scandalousness.
  • The same standards for determining whether matter in a mark may be disparaging are applicable to determining whether such matter brings a person, living or dead, institutions, beliefs, or national symbols into contempt or disrepute.
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • With respect to the ground that applicant's mark may bring women and particularly African-American women into contempt or disrepute, the same standards for determining whether matter in a mark may be disparaging are applicable to determining whether such matter brings "person, living or dead, institutions, beliefs, or national symbols into contempt or disrepute. Harjo v. Pro-Football Inc., supra.
  • Dictionary definitions are not sufficient to prove that a substantial composite of the public would regard a mark as scandalous
    • Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999).
      • As we noted above, the Court in the decision on applicant's ex parte appeal found that dictionary definitions were not sufficient to prove that a substantial composite of the public would regard BLACK TAIL as scandalous, and applauded the practice of the Board in other cases involving the issue of scandalousness to allow marks to be published so that "if a group does find the mark to be scandalous…, an opposition proceeding can be brought and a more complete record can be established." In re Mavety Media Group Ltd., supra at 31 USPQ2d 1928, quoting In re In Over Our Heads Inc., 16 USPQ2d 1653, 1654-55 (TTAB 1990).
  • Case Finding: In re Hershey case was distinguished from the present case based on its facts.
    • In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006).
      • We note applicant's reliance on In re Hershey, 6 USPQ2d 1470 (TTAB 1988), which found the mark BIG PECKER BRAND for T-shirts to be not scandalous. The Hershey case may be distinguished from this case on its facts. In holding that the mark BIG PECKER BRAND does not offend morality or raise scandal, unlike the case before us, the Board found that the primary meanings of the word "pecker" to the general public are innocuous, rather than vulgar.
  • Discussion of the interpretation of the term ROD as vulgar.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • There are obviously other non-vulgar definitions of "rod." However, none of the other definitions is relevant here. The significance of "rod" when preceded by the word "sex" denotes only one meaning. In the context of applicant's goods, with the mark perhaps emblazoned across a t-shirt or some other item of apparel, and in the context of the marketplace, which would include all public places where the clothing would be worn or purchased, the mark would convey, not a sexually suggestive connotation as applicant contends, but rather a sexually explicit message to the viewer.
  • Dictionary evidence alone can be sufficient to establish that a term has a vulgar meaning.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Dictionary evidence alone can be sufficient to establish that a term has a vulgar meaning. Boulevard Entertainment, supra at 1478.
  • Registration of a mark which consists of or comprises immoral or scandalous matter is prohibited under Section 2(a) of the Trademark Act.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Registration of a mark which consists of or comprises immoral or scandalous matter is prohibited under Section 2(a) of the Trademark Act.
  • A showing that a mark is vulgar is sufficient to establish that it consists of or comprises immoral or scandalous matter within the meaning of section 1052(a).
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • "A showing that a mark is vulgar is sufficient to establish that it 'consists of or comprises immoral ... or scandalous matter' within the meaning of section 1052(a)." Boulevard Entertainment, supra, observing that the Court in Mavety Media, supra, analyzed the mark in terms of "vulgarity"; and citing In re McGinley, 660 F.2d 481, 211 USPQ 668, 673 (CCPA 1981) quoting In re Runsdorf, 171 USPQ 443, 443-44 (TTAB 1971) ("vulgar" is encompassed by the term "scandalous matter.").
  • Whether applicant intended the mark to be humorous, or even whether some people would actually find it to be humorous, is immaterial where the term would be perceived and understood as vulgar by a substantial portion of the purchasing public.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Applicant's testimony as to his opinion of the perception of the mark is simply not sufficient. Whether applicant intended the mark to be humorous, or even whether some people would actually find it to be humorous, is immaterial. The fact remains that the term would be perceived and understood as vulgar by a substantial portion of the purchasing public.
  • Whether a mark is immoral or scandalous must be determined from the standpoint of, not necessarily a majority, but a substantial composite of the general public; and in the context of the goods, the relevant marketplace and contemporary attitudes.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Whether a mark is immoral or scandalous must be determined from the standpoint of, not necessarily a majority, but a substantial composite of the general public; and in the context of the goods, the relevant marketplace and contemporary attitudes. In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1477 (Fed. Cir. 2003); and In re Mavety Media Group, Ltd., 33 F.3d 1367, 31 USPQ2d 1923, 1925-26 (Fed. Cir. 1994).
  • Case Finding: Even assuming for the sake of argument that SEX ROD is a parody of opposer's "RED SOX" marks, as applicant asserts, there is nothing in the parody itself which changes or detracts from the vulgar meaning inherent in the term. In other words, the parody, to the extent there is one, is itself vulgar.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Even assuming for the sake of argument that SEX ROD is a parody of opposer's "RED SOX" marks, as applicant asserts,6 there is nothing in the parody itself which changes or detracts from the vulgar meaning inherent in the term. In other words, the parody, to the extent there is one, is itself vulgar.
Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) In re Red Bull GmbH, Serial No. 75788830, (TTAB 2006) Arnita Y. Boswell and James W. Clement v. Mavety Media Group Ltd., Opposition No. 99,058, (TTAB 1999) Grand Total
In re Boulevard Entertainment Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) 2
Harjo v. Pro Football Inc., 50 USPQ2d 1705 (TTAB 1999) 1
In re International Flavors & Fragrances Inc., __F.3d__, __USPQ2d__ (Fed. Cir. July 20, 1999) 1
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) 1
In re Mavety Group, Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) 3
Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993) 1
In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993) 1
In re In Over Our Heads Inc., 16 USPQ2d 1653 (TTAB 1990) 1
In re Hershey, 6 USPQ2d 1470 (TTAB 1988) 1
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 1
In re McGinley, 660 F.2d 481, 211 USPQ 668 (CCPA 1981) 1
Bromberg v. Carmel Self Service Inc., 198 USPQ 176 (TTAB 1978) 1
Litton Business Systems Inc. v. J.G. Furniture Company Inc., 190 USPQ 431 (TTAB 1976), denying req. for recon., 190 USPQ 428 (TTAB 1976) 1
In re Runsdorf, 171 USPQ 443 (TTAB 1971) 1
In re Riverbank Canning Co., 37 USPQ 268 (CCPA 1938) 1
Grand Total 4 5 9 18

Sec. 1052. Trademarks registrable on principal register; concurrent registration

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--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.