History of the Lanham Act
Trademark as defined under USPTO is a word, phrase, and/or design that identifies and distinguishes the source of the goods of one party from those of others. But as of the 1870 Act, this definition did not persist, leaving a big question mark as to what can be considered as an appropriate mark and what cannot. Many attempts were made to amend the act to provide clarity in the definition. When in 1892, for the first time "scandalous" registration bar was suggested to enable the federal government to lay down penalties and clarify the law.
After numerous controversies and debates, finally, the provision under section 2 of the Lanham Act was enacted under which it laid down various grounds on which a mark can be denied its registration. It suggested 3 ways through which a mark can be challenged on the ground that it is "scandalous", or "disparaging".
In the course of registration, the examiner can refuse the mark.
The third-party can file an opposition to the registration.
The third-party can challenge the registration in a post-registration cancellation proceeding.
How to identify a “scandalous” mark
The history of section 2 of the Lanham Act has been very discreditable and malicious as it created ambiguity amongst the Board members itself. While dividing the marks into varied categories, they realized that identifying and evaluating the mark as "scandalous' is highly subjective. Therefore a proper definition and clarity were required.
Many attempts were made, but it only led to the discretion of the court to decide the status of the mark. This created more confusion, as different courts interpreted differently. For example, in re Reemtsma Cigarettenfabriken GmbH case, the board refused mark SENUSSI for cigarettes, as the tenets of the Moslem Senussi sect did not smoke. Whereas on the other hand, the mark AMISH for the same category was not considered "scandalous" as it didn't disrupt any moral belief. Therefore, to recognize the mark as "scandalous", the board decided to take the geographical background of the mark as well as its identity associated with the moral beliefs of the people.
Different tests to determine the "scandalous" mark
Many thinkers came up with different techniques and methods to determine whether a particular mark is "scandalous" or not. In consideration of all the ideas, the board came up with the 2-way test:
The court or the respective bench must consider the possible definition of the mark and its alleged meaning.
The court or the respective bench must agree on the fact that if the mark is given its due registration, it will be considered “scandalous” by “a substantial composite of the general public”.
These tests helped in distinguishing the opinion of certain small groups in contrast with the general public, as what may seem to be “scandalous” for one native group might not for others. Therefore, all the relative consumers were put under the same umbrella before making a concrete decision.
In the most recent case of Lancu v. Brunetti, the supreme held that the mark "FUCT' cannot be refused its registration based on section 2(a) of the Lanham Act, which prohibits the bench to register "scandalous" marks as it'll violate the Free Speech Clause of the First Amendment.
The judgment had a viewpoint that from many decades, the court has been declining registrations of the “scandalous” marks, as it is considered to be violating the sentiments of the public at large. But at the same time, the court also upheld the discretion that every time this happened, the mark was refused as it may disrupt the society’s rectitude and morality, but not the marks that communicate to denigrate those concepts.
For example, the court, on one hand, refused to register trademarks which had their mark name related to:
Drugs (BONG HITS FOR JESUS, KO KANE)
Religion (MADONNA, AGNUS)
Terrorism (BAGDAAD, AL-QAEDA)
Whereas, registered marks which promote all of the above. For example:
To prevent drugs (SAY NO TO DRUGS)
To promote religious faith (PRAISE THE LORD)
In honour of war victims (WAR ON TERROR MEMORIAL)
Therefore, it can be concluded that in this world of changing trends, it is very difficult to have a standardized definition of what can be considered "scandalous" and what cannot. In such times it is best to let the judiciary decide in favour of the society or public at large.