Immoral, Deceptive, or Scandalous Matter

In my post on the trademark application process, I wrote about the examination and opposition of your application. These are two distinct processes, but many parts overlap. One area where the examination process and the opposition process overlaps concerns grounds for refusing registration of your proposed mark.

Section 1052 of the Lanham Act states that an application shall not be refused registration unless it fails to meet one or more standards. The first item listed prohibits the registration of an application that is “immoral, deceptive, or scandalous”. What determines whether a mark is immoral, deceptive, or scandalous? Various tests have been crafted by the Trademark Trial and Appeal Board and the courts, but as a business owner, you should be aware that an examiner or an opposer may try to refuse your application to register your mark on this basis.

Recent examples of marks that have been challenged on the basis that the mark was immoral, deceptive, or scandalous include DYKES ON BIKES and COCAINE (for soft drinks).