Trademarks consisting of or comprising “scandalous or immoral” matter still won’t be granted federal registration “in the name of the United States of America,” at least for the time being.

Immediately on the heels of the International Trademark Association’s 140th Annual Meeting in Seattle, and our well-received panel discussion concerning Trademarks and Free Speech, the United States Patent and Trademark Office announced it will continue to hold on to and suspend trademark applications containing scandalous or immoral matter, until further notice.

The Trademark Office is waiting to see whether the federal government will appeal the Brunetti decision to the U.S. Supreme Court. What I would give to be a fly on the wall in those discussions.

As you may recall, a three-member panel of the Court of Appeals for the Federal Circuit (CAFC), ruled last December that the “scandalous or immoral” statutory bar to registration violates a trademark applicant’s Free Speech, overturning a part of trademark law in existence since 1905.

Since the federal government’s request that the entire CAFC reconsider the three-member panel decision Brunetti was denied in April, the government now has until July 11 to seek Supreme Court review or ask for more time to decide, stay tuned. Learned John Welch predicts no appeal.

During our INTA panel discussion, I predicted the government will seek review of Brunetti by the U.S. Supreme Court. I also predicted the Supreme Court will pass on the request, stay tuned.

Even if it might be tempting to believe that — in our present culture — anything goes and nothing can rise to the level of scandalousness any longer, so why bother trying to salvage a statutory relic from more than 100 years ago, I’m thinking the federal government won’t throw in the towel yet.

As we’ve written before, the Brunetti decision, didn’t anchor itself to the viewpoint discriminatory requirement from the Supreme Court in Tam, instead focusing on mere content discrimination to justify invalidation of a more than a century old part of federal trademark law.

This much easier test for invalidation puts at risk many other portions of federal trademark law, so I’m thinking the federal government can’t let the mere content discriminatory requirement of Brunetti stand without at least trying for Supreme Court review for further direction and guidance.

It’s also hard to believe the federal government is truly ready to have the USPTO knowingly begin to federally register obscene, profane, and sexually explicit matter as trademarks, “in the name of the United States of America,” for the first time in history. What’s your prediction?

UPDATE: Susan Decker of Bloomberg interviewed and shares quotes yours truly on the subject, here.


The United States Patents Quarterly has been a resource used by intellectual property lawyers for a very long time. Most of the decisions published in USPQ are patent decisions, but there are a large number of trademark decisions too, especially those decided by the USPTO and TTAB.

As the image above reveals, an admittedly weathered set of USPQ books adorns my bookshelf, beginning with Volume 1, published in 1929. Apparently, Bloomberg L.P. purchased BNA (the Bureau of National Affairs, publisher of USPQ) for about $1 billion, back in 2011.

Given my love and nostalgia for these tattered books, and the trademark history stored inside, my plan from time to time, is to bring to life some of the old decisions housed in these books, by telling a trademark story, so this is the first post in a series called: “My USPQ _ Round Up.” The blank indicates the USPQ volume the story is drawn from.

Sinclair Refining Company v. Robert Hickman Blackburn

(Cancellation No. 1766) USPQ 1, at 263 (1929).

“Confusion in Letters”

On April 29, 1929, the First Assistant Commissioner of Patents affirmed a likelihood of confusion decision of the Examiner of Interferences that sustained a petition to cancel U.S. Reg. No. 240,100 (which had issued in 1928). The canceled registration covered the letter “B” inside a diamond positioned above the words “Diamond B Motor Oils” for lubricating oils and greases.

Sinclair, the successful petitioner asserted prior rights in U.S. Reg. No. 146,872 (issued in 1921), for the trademark “Diamond C” continuously used since at least as early as 1919 and “probably since 1917” for lubricating oil, according to Sinclair’s evidence.

The evidence also apparently showed that the registrant “was at one time a distributor of the petitioner’s goods,” permitting “a fair presumption that the registrant was, when he adopted his mark, entirely familiar with the petitioner’s mark and goods. Under these conditions if there is doubt it must be resolved against the newcomer in accordance with the usual rule.”

In defense, the registrant took no testimony, but argued that diamond shapes are a common part of trademarks, so the difference between the letters “B” and “C” should be “sufficient to establish that it is unlikely there will be confusion in trade.” Nevertheless, Sinclair prevailed:

“While the main contentions of the registrant may be accepted as correct yet the trade marks must be considered as a whole and when this is done it is thought their similarities outweigh their differences. There are some letters of the alphabet, such as B, C, D, E, P, T, etc., which are recognized as sounding alike. Confusion in using such letters in connection with messages over the telephone is a matter of common knowledge.”

“It is thought there would be confusion even in customers orally calling for the particular goods if both parties to this proceeding were using their respective marks in the same market upon the same class of goods. It is held the registrant has approached too near the petitioner’s trade mark.”

What stands out to me about this decision are a few things. In terms of procedure, nowadays, this would be a TTAB decision, probably much longer and more detailed, ruling on a trademark petition to cancel in the first instance. I’m not old enough to have experienced the so-called Examiner of Interferences or the First Assistant Commissioner of Patents, thank you very much.

In terms of substance, comparing each mark in its entirety still applies along with the notion of weighing similarities and differences, as does the concept of favoring the prior registrant and responding accordingly when the newcomer is perceived to come too close.

Phonetic similarity was important to the conclusion of confusing similarity between “Diamond B” and “Diamond C” — especially, given the closeness of the goods in question. I’m a bit skeptical though that the following quote would make or break a case today: “There are some letters of the alphabet, such as B, C, D, E, P, T, etc., which are recognized as sounding alike.” You never know though, it might be worth filing away for when a suitable use arises in the future.

Last, while neither “intent” nor “intent to deceive” were mentioned in the decision, and these factors continue to be relevant in likelihood of confusion analyses, I’m left believing that registrant’s previous relationship as petitioner’s distributor probably colored the evidence here.

Do you believe the case would be decided the same today? How would you grade it, B or C? What strikes you about this gem from Volume 1 of USPQ?