The headline might be considered old news to some, but since intellectual property attorneys from around the world will be descending upon Minneapolis for the remainder of the week, and since I’ll be speaking tomorrow at the American Intellectual Property Law Association Spring Meeting at the Minneapolis Hilton, on the history and public policy behind denying the federal registration of scandalous trademarks, it just seems like news all over again.

SandroBotticelliVirginChild

Did you know that the first reported Court of Appeals decision on the trademark registration prohibition against scandalous matter interpreted Section 5(a) of the 1905 Trademark Act, predecessor to the current version of the law, Section 2(a) of the Lanham Act?

In Riverbank Canning Co., 95 F.2d 327 (C.C.P.A. 1938), a divided panel of the Court of Customs and Patent Appeals in Washington D.C., affirmed the Commissioner’s decision that had affirmed the USPTO Examining Attorney’s refusal to register MADONNA as a trademark for wine, as comprising scandalous matter under federal trademark law.

The majority held that “among all English-speaking peoples, the word ‘Madonna’ is generally understood to refer to the Virgin Mary or to a pictorial representation of the Virgin Mary.” And, while “Madonna” is not per se scandalous, it was in the context of wine trademarks circa 1938:

“We can readily understand that many who are accustomed to the use of wine as a beverage, remembering the use of it as a beverage in Biblical times, would not be shocked at the use of the word ‘Madonna’ or a representation of the Virgin Mary as a trade-mark upon wine used for beverage purposes; but we also believe that there are many wine users who, knowing that the excessive use of wine is a great evil and not uncommon, would be shocked by such use of said mark upon wine, especially in view of the fact that such mark would probably be displayed among other places, in barrooms.”

“In our opinion, to commercialize the name of, or a representation of, the Virgin Mary as a trade-mark is of very doubtful propriety, and we feel certain that its use upon wine for beverage purposes would be shocking to the sense of propriety of nearly all who do not use wine as a beverage, and also to many who do so use it; therefore, we think such use of the word ‘Madonna’ would be scandalous and its registration prohibited under said trade-mark act.”

That viewpoint and decision finding scandal with the use of MADONNA as a trademark for wine was reaffirmed decades later in 1959, when a German company tried and failed to convince the Trademark Trial and Appeal Board (TTAB) that the result should be any different under the prohibition against registration of scandalous matter under Section 2(a) of the Lanham Act. P.J. Valckenberg, GmbH, 122 U.S.P.Q. 334 (TTAB 1959).

But something must have happened between 1959 and 2008, when a persistent Valckenberg tried again and again, until finally no scandalous refusal was lodged by the USPTO, finally allowing MADONNA to become federally-registered for wine in 2008:

MadonnaWineI’m thinking another meaning of MADONNA began to emerge — circa 1979 –that altered and distracted from the previous and exclusive reference to the Virgin Mary relied upon by decision makers in the prior cases mentioned above, maybe this:

Madonna

Keep in mind that the relevant public for purposes of determining whether the mark in question violates the “scandalous” language of Section 2(a) is the general public. And, to support a refusal on the ground that a mark is scandalous, the USPTO’s assigned examining attorney must provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. In re Mavety Media, 33 F.3d 1371-72, 31 USPQ2d 1925-26 (Fed. Cir. 1994); TMEP 1203.01.

In other words, the times they are a changing, and if an edgy brand owner waits long enough, what was once considered scandalous matter might later be considered in vogue (pun intended), making it available subject matter for federal trademark registration, i.e., Madonna Wine.

And, now that the word MADONNA apparently lacks any commercial edginess, it appears Ms. Ciccone is migrating to a more truncated version with fewer vowels: MDNA.

What’s next, perhaps even more truncation to a single letter, can you say AlphaWatch?

  • James Mahoney

    Wait long enough, and what was once objectionable becomes acceptable. The reverse is also true; see Washingon Redskins.

    • stevebaird

      Great insight James — of course, the difference between the two examples highlights the importance of who gets to decide and in retaining the disparagement prong of Section 2(a). Madonna is a case involving the scandalous standard of Section 2(a), not the disparagement standard. A substantial composite of the general public decides the question of scandalous matter, so as society changes in interpreting scandal, so does the needle move on registrability and what might be considered shocking to the general public. On the other hand, The NFL Washington football team’s registration of the R-Word was found to violate the disparagement prong of Section 2(a) at the time of original registration, all the way back in 1967. And, current dictionaries and media reports demonstrate the R-Word to still be considered offensive and disparaging toward Native Americans today. In ordering the registrations to be cancelled, it was found that a substantial composite of Native Americans would be disparaged by the team’s use of the R-Word throughout the relevant period of time. So, even if the general public might be slow to focus on the issue or look the other way and not see scandal in the use of racial slurs as trademarks, the disparagement portion of 2(a) is an important form of built in protection for minority groups targeted by slurs used as trademarks.

      • James Mahoney

        Excellent discourse on the difference between the two. It raises other questions, though:

        If the Washington registration was found to violate the disparagement prong way back in 19 and 67, how did they get the registration approved then?

        Who gets to decide what % of a potentially disparaged population represents a “substantial composite,” and how do they determine that such a substantial composite exists?

        Madonna mia, it’s a complicated subject!

        • stevebaird

          Indeed, and Great questions James — the TTAB of the USPTO determined — in the Harjo case in 1999 and in the Blackhorse case in 2014 and the U.S. District Court in the Eastern District of Virginia affirmed Blackhorse in 2015 — that the evidence of record introduced by the Petitioners established a substantial composite of Native Americans would be disparaged by the team’s use and registration of the R-Word, so it ruled that the registrations were obtained contrary to Section 2(a) of the Lanham Act during the relevant time period between 1967 and 1990, and ordered them all cancelled — the Blackhorse decision is still being appealed by the team. What precise percentage constitutes a “substantial composite” is not subject to a hard and fast rule, but what is clear under the law is that it doesn’t require a majority of the group in question. Stay tuned!