Timing Is Everything: Of Trademark Applications, Self-Disparagement, and Post Registration Limitations to Scandalous and Disparaging Trademarks Jasmine Abdel-khalik
Unlike the other §2 statutory bars, the bar against registration of scandalous, immoral, and disparaging marks is not really based upon anti-competitive concerns. There is little direct legislative history, and only a few other hints, regarding why Congress added the scandalous registration prohibition in 1905. Over the past century, courts have hypothesized several justifications. At base, however, all of the justifications are premised upon the appropriateness of allowing the marks themselves. One might say that the bar serves a channeling function to encourage potential registrants to avoid this form of commercial speech. Regardless of whether this is an appropriate registration limitation, Congress has retained it for the past century and shows no signs of eliminating it. Thus, given the probable intent of the scandalous registration prohibition, it seems anomalous to limit consideration of scandalousness to pre-registration impressions by a substantial composite of the general public or, for disparagement, by a substantial composite of the relevant population. Post-Harjo, however, cancellation actions are limited to evaluating the mark’s scandalous or disparaging meaning at the time that the mark registered. There are several types of marks that, therefore, could be registered and also could have a scandalous meaning. One exemplar category includes marks that develop a scandalous connotation in the United States or in foreign countries and Failure to evaluate marks for scandalous, immoral, or disparaging meaning simply does not address the intent behind the registration prohibition. There should be a postregistration evaluation of mark to determine if it has become scandalous, immoral, or disparaging. Opponents of such a post-registration evaluation would likely decry the trademark owner’s loss in investment and decreased incentive to invest in a mark. However, terms are currently evaluated post-registration for genericide, indicating that marks can be cancelled even though the owner has significantly invested in the mark.