Broadly speaking, things that identify your brand can become federally registered trademarks. But like most rules, there are a few exceptions. One of the more rare exceptions (but most interesting exception, from a law-nerd perspective) is for marks that are “immoral or scandalous.” This prohibition is found in the trademark statute itself, at 15 U.S.C. 1052(a), without much additional description. So what does it actually prevent? What is a scandalous trademark? And what about your first amendment rights?

Courts and the US Patent and Trademark Office have said that (among other things) pornography and vulgar words fall into this ban. See In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971). However, not every pornographic or vulgar word or image would be scandalous. The analysis goes a little further. Like most things in law, we need to a test. Here, it’s whether a substantial portion of the general public would consider the mark to be scandalous/immoral viewed in light of contemporary attitudes in the relevant marketplace. In the end, it ends up being an individualized result based upon your product and market. For example, many pornographic websites are able to trademark their domains. However, the USPTO often denies marijuana related accessories as immoral or scandalous. Really, the best way to determine whether your mark may be denied as an immoral or scandalous trademark is to do a trademark search for related products and your competitors.

But what about the first amendment? Well, this is a logical argument made by many, but it has largely failed. The controversial case In re McGinley, 660 F.2d 41 (Fed Cir. 1981) held that, since the government is not preventing a person from using the word by denying registration, it is not abridging first amendment speech. There are many arguments that this case is simply wrong, but for now, it’s the law of the land.

Bottom line: if you’re looking to register a potentially controversial word, phrase, or logo, you should conduct a comprehensive search to see how the USPTO has viewed similar trademark applications.