Most trademark owners are aware that their trademark may be opposed or challenged on the basis that it is descriptive, generic or confusingly similar to another registered trademark. Less well known is the fact that trademarks can be invalidated or expunged if they are obscene, immoral, deceptive, or scandalous.
In Canada, trademarks that are a “scandalous, obscene or immoral word or device” will be prohibited from registration under s 9(1) of the Trademarks Act. In the United States, registration will be refused for any mark if it “consists of or comprises immoral, deceptive or scandalous matter; or matter which may disparage” pursuant to s 2(a) of the Trademark Act. Internationally, Article 6 of the Paris Convention allows member states to refuse or invalidate a trademark which are “contrary to public order.” The obvious question which arises is this: What is immoral?
The Blackhorse v Pro-Football, Inc. (the “Redskins Decision”) was decided in June, 2014 by the US Trademark Trial and Appeal Board Office (“TTAB”). The decision is an example of how trademarks can be expunged for being immoral, disparaging or scandalous. The lengthy decision of TTAB resulted in the cancellation of six registered trademarks owned by the Washington Redskins on the finding that the team’s registered marks (specifically, the team name and logos) are disparaging.
The TTAB will object to a trademark if in the context of the relevant marketplace, a “substantial composite of the general public” would perceive the trademark to have a vulgar meaning. In the Redskins Decision, the courts accepted the evidence that a large portion of the general viewed the term “redskin” to be vulgar. In contrast with the above case, the mark Blanco Basura (a derogatory term in Spanish which translates to ‘white trash’), was registered in the United States in 2010.
The determination of the morality or immorality of a mark is made in the context of the contemporary attitudes of the general public. Trademark registrations last 10 years in the United States and 15 years in Canada (soon to be 10 years), but social attitudes can change in a matter of days or weeks. In the recent Australian application, a Malaysian company filed an application for the word mark “MH17” under class 41 which includes film production, entertainment, educational and cultural services. Twelve months ago this application would not be objected to on grounds of being immoral or obscene. Given the tragic crash of Malaysian Airlines flight MH17 in Eastern Ukraine, this trademark application could be objected to on the grounds that it is immoral.
The vast majority of trademarks will not encounter this objection in trademark law. Even so, it is important to keep morality in mind when applying to register a trademark if it could be interpreted to have a negative social connotation.