To Live in In-'Fame'-Y: Reconceiving Scandalous Marks as Analogous to Famous Marks

In 1905, Congress enacted a revised trademark registration act, which included a prohibition on registering marks containing or consisting of scandalous or immoral material. Because Congress failed to provide any further guidance either in legislative history or in the statutory language, administrative bodies and the courts have struggled to define this standard. Over the past century, decisions applying this prohibition have been inconsistent. The general public and potential trademark owners are unable to predict accurately if a mark will be accepted or refused for federal registration, which has some significant benefits. Perhaps because of this uncertainty, some estimate that hundreds of applications are rejected annually on the basis of the scandalous registration prohibition. To better understand Congress' motivation, the article starts by exploring the historical foundation for the scandalous registration prohibition. While much has been said about the lack of specific legislative history, there is a plethora of unexamined, relevant legislative material, which gives insight into the prohibition. The article also explores previously untapped resources regarding the preexisting common law and perceptions of 19th century legal scholars concerning whether it is appropriate to protect marks containing scandalous or immoral material and, if so, what constitutes scandalous or immoral material. This discussion then transitions into an analysis of the reported decisions applying the scandalous registration prohibition as well as the suggested Congressional justifications for its enactment. Finally, the article proposes an innovative, two-tiered system for evaluating the scandalous registration prohibition. The first tier amalgamates a much more recent theory of trademark protection, dilution of famous marks, with the scandalous registration prohibition. The difference between fame and infamy is merely one of consequence - both have gained public recognition, but one garners a positive impression whereas the other does not. Thus, I suggest that the considerations used by courts to identify famous marks should equally be applied to identify certain scandalous marks, namely those marks that, regardless of the context, would always be perceived as scandalous. In the proposed second tier, I suggest a significant shift in evaluating contextually scandalous marks. Under the current regime, the Patent and Trademark Office has the burden of demonstrating that a mark is scandalous, which is the same burden that it shoulders for all the other registration prohibitions. Yet, treating the scandalous registration prohibition in an identical manner to the other prohibitions belies its very nature. Unlike the others, the scandalous registration prohibition is not motivated by attempts to ensure fair competition or to protect the public from deception. Rather, it must have been motivated by a desire to protect the public (or the federal government) by denying federal registration to offensive commercial speech. Given that essential distinction, I propose that the burden be placed on the trademark applicant's shoulders. When a mark with multiple meanings is under review, it would be presumed that the public would associate the mark with the vulgar meaning rather than with the non-vulgar meaning. The applicant could overcome the presumption only by examination of the mark's context, including any additional material in the marks, the associated goods and services, and other market-related restrictions.