Updated: Dec 16, 2020
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.