Mark Prus recently highlighted some examples of a do-it-yourself naming faux pas, where he asked "What were they thinking?!" This one probably deserves the same question and, at least to me, clearly falls into the category of a do-it-yourself trademark application faux pas.

Just so you know, I innocently stumbled across this recently abandoned trademark application for the above shown design trademark in connection with "hemorrhoid treatment preparations" in Int’l Class 5, and "fresh peaches" in Int’l Class 31.

A certain proctologist in Brooklyn, with at least one favorable online patient testimonial, filed this gem all on his own, it appears. So, I’m left wondering whether the electronic forms confused the good doctor or whether his medical practice actually sells fresh peaches too. Perhaps a fruit stand in the waiting room?

But for the written description of the trademark that formed part of the application, this abandoned application wouldn’t deserve being removed from the bowels of the USPTO for discussion here, where the sun does shine, even quite bright, at times. No, it is the written description of the above design mark that provides the opportunity today for a modestly serious point relating to trademarks.

For those who have filed non-standard character trademark applications before, you know the USPTO requires that the applicant provide a written description of the mark sought to be registered, to facilitate the coding of design elements, so that more accurate searches can be conducted in the USPTO trademark records. Let’s just say the good doctor formed a rather graphic and detailed written description of said peach in this application.

I’ll simply link here and refrain from reprinting any part of the description of the peach trademark, but suffice it to say, his more than two-hundred word description of the peach — and all it might suggest to some, or even one, could be boiled down to something safe like "the mark depicts the image of a peach," if one were inspired by less is more. But, not this keen peach. No, this one falls into another category called "too much information."

To refresh my memory of Section 2(a) of the Lanham Act, and how it might have impacted the trademark application in question, I consulted an article of mine from some seventeen years ago entitled "Moral Intervention in the Trademark Arena: Banning the Registration of Scandalous and Immoral Trademarks," 83 The Trademark Reporter 661 (1993). 

Now, having my recollection refreshed, I’m reminded that some trademarks can be denied registration as "scandalous" because of the word or image itself — so, it doesn’t really matter what the goods or services are, if the word represents the excrement of a bull, or the image of a defacating dog, the profane nature of the term or image requires refusal as "scandalous," even if the goods and services are innocuous.

I’m also reminded that another kind of "scandalous" trademark registration refusal is warranted when the word or design is not per se offensive, but when it is applied to certain goods or services, it becomes "scandalous" in context. The best known example in the case law is probably when the word "Madonna" was refused registration, twice, as a trademark in connection with wine. Another example of this type is when the word "Senussi" was denied registration for cigarettes because the Moslem sect identified by this term apparently forbade smoking.

So, for some marks, what is in the drawing itself may trigger a "scandalous" refusal, and for others, it is the combination of the mark and goods that triggers the refusal.

So, I’m left wondering, can a registration refusal based on the "scandalous" ground be based on the written description of the mark, even if the drawing or image forming the mark is innocuous?

After reading this one, I say, yes, but what do you think?

  • A really interesting question, actually. I’m not sure of the policy background behind 2(a), but I would assume, given the consumer-driven perspective aspect of trademark law, that the prohibition on scandalous matter is to protect the public from scandalous matter itself, whether it is the mark, the goods, or the association created by the mark with the goods. Since the description is really only for internal USPTO purposes and only appears in the Official Gazette, the policy implications of 2(a) are marginal. So I say: no refusal!
    I can’t believe this app was refused on the basis of descriptiveness for class 5. Suggestive to arbitrary, I would think.

  • Tom, thanks for stopping by and sharing your perspective.
    Your conclusion is not an unreasonable one at all, however, I believe the policy behind Section 2(a) is not the typical consumer protection focus that drives most other provisions of the Lanham Act.
    Section 2(a) comes from a more public policy driven position, not to protect consumers as much as avoid the appearance or implication of governmental approval, or perhaps, avoid the use of public resources to encourage, reward, or promote scandalous matter, i.e., trademark matter that is “shocking to a substantial composite of the general public.”
    In addition, the description of the mark is not purely internal to the PTO since it does appear on the PTO’s official Certificate of Registration, which by the way, might make USPTO Director Kappos blush, if read, since his signature appears on each one.
    Given all that, I wouldn’t be surprised if, given the right case, an offensive description sustains a 2(a) refusal even if the drawing is tame.
    Last, I agree with you that the peach image should be considered suggestive or arbitrary for the goods, not descriptive, unless, of course, the active ingredients come from peaches.

  • Hmm, interesting – does the article you wrote go into the policy background? I’d love to read it if you have a copy.
    A quick look at TMEP 1203.01 shows the Examiner can look to any part of the application’s file, but that the decision must be made in the context of how the mark will be appreciated in the marketplace. I’ll have to read the cases cited there to see what factors are taken into account.
    Well, I think one of us now has to file an innocuous trademark app with a scandalous description to test your theory.

  • Tom, thanks for your additional insights, and I’ll drop a copy in the mail, I look forward to your feedback!
    Thanks, Steve

  • Great – thanks so much!