In re McGinley, 81-502.

• Citation: 660 F.2d 481
• Decision Date: 01 October 1981
• Docket Number: No. 81-502.,81-502.
• Parties: In re Robert L. McGINLEY.
• Court: United States Court of Customs and Patent Appeals

660 F.2d 481

In re Robert L. McGINLEY.

No. 81-502.

United States Court of Customs and Patent Appeals.

October 1, 1981.

Don B. Finkelstein, Los Angeles, Cal., for appellant.

Joseph F. Nakamura, Sol., Fred E. McKelvey, Associate Sol., Washington, D.C., for Patent and Trademark Office.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

MILLER, Judge.

This appeal is from a decision of the Patent and Trademark Office ("PTO") Trademark Trial and Appeal Board ("board"), reported at 206 USPQ 753 (1979), affirming the examiner's rejection of appellant's applications to register a trademark and service mark on the basis that it comprises "immoral ... or scandalous matter" within the meaning of section 2(a) of the Lanham Act.¹ We affirm.

BACKGROUND

The involved mark comprises a photograph of a nude man and woman kissing and embracing in a manner appearing to expose the male genitalia.² According to the applications for registration, it is used for "Newsletter Devoted to Social and Interpersonal Relationship Topics" and "Social Club Services." The evidence shows that the newsletter has to do with discussions of sexual topics such as bisexuality, homosexuality, masturbation, and fornication; that the services include sponsoring and arranging parties for "swinging," which appears to be a form of group sex.³ Initially, the PTO examiner refused registration under section 2(a) on the basis that "the mark indicates that the newsletter deals with illicit sexual intercourse" and that "the mark indicates that the services deal with illicit sexual intercourse." Later, the examiner requested that appellant submit additional evidence, saying: "From the specimens submitted it can not be determined, in exactitude, the services performed by applicant. The mark, in relation to the services, may or may not be immoral or scandalous." After considering the additional submissions, the examiner finally refused registration on the basis that appellant's services involve "various `mini-affairs' between two unmarried people; sometimes two or more unmarried people." He declared: "Such activities are considered deviations from the sexual norm of husband and wife relations. Such activities are immoral or scandalous.... The mark graphically indicates the activity carried on in applicant's Club; sex not normally sanctioned by (even today's permissive) social standards." (Emphasis supplied.)

The board affirmed the examiner's decision, but took two different approaches. First, it considered that the newsletter and services (as broadly described in the applications)⁴ —

could appeal to, be offered to, and be read or used by every person in the United States from the age of about six years up....

... could be sent to youngsters just learning to read, to teenagers, to senior citizens, to persons of strong moral and religious convictions, to members of the clergy, and to an uncountable number of other persons in the large and varied population of the United States.

... could be intended for those who are interested in improving themselves or society in a variety of ways and to those who seek the company of others simply for the comfort of companionship, or to pursue hobbies, or to provide philanthropic or social services to their communities, or to educate and train others (including young people), or for a myriad other purposes, all remote from the erotic activities which are apparently applicant's principal interest.

As to these people, the board said:

We have no doubt that the overwhelming majority of the people who are potential readers of applicant's newsletter as described in the application (not as actually published by applicant) or potential users of social club services within the broad context of that description (not as actually conducted by applicant) would be affronted by the use as a mark of a photograph of a nude couple embracing, whether or not the models who posed for the photograph happened to be married to each other. This mark would be particularly offensive to those, among many others, who are parents of children of suggestible ages.

Secondly, the board indicated that, upon consideration of the photograph per se, when used as a mark, it would not be registrable. It said:

Indeed, it is our opinion that by any standard, including the most contemporary mores of what has been repeatedly described as a permissive, but not licentious, society, applicant's photograph, when used as a mark for any goods or services, is offensive to propriety and morality, outrages a sense of decency, and is shocking to the moral sense of members of the community, whose sensibilities are protected by the statute. Applicant's mark is immoral and scandalous, as those standards have been repeatedly interpreted and applied. Emphasis supplied.

Concluding its opinion, the board remarked:

We recognize that denial of registration will not affect applicant's continued use of his mark, but such use, both for the newsletter and the social club services, will be visible only to those who share applicant's interest and will be without the implied approval and the statutory benefits that would result from Federal registrations.

POSITION OF THE PARTIES ON APPEAL

Appellant argues that section 2(a) is constitutionally "void for vagueness" because there is no satisfactory definition for the words immoral or scandalous, there have been no guidelines or standards established, and, as in obscenity cases, it is not possible to formulate a national standard. Appellant also argues that the mark in question is not, under any analysis, immoral or scandalous, comparing it to works of art such as Rodin's "The Kiss" and Michelangelo's "David." Appellant further argues that registration was improperly refused by the board due to its consideration of the specific information published and precise type of services rendered, and that the mark per se must be considered without regard to either the general or specific goods or services as a matter of law due to the failure of section 2(a) to include a reference to the goods and services. According to appellant, the fact that sections 2(d) and 2(e)⁵ include a reference to goods or services, but section 2(a) does not, evinces the intent of Congress that, under section 2(a), marks be considered per se without regard to the underlying goods or services. Finally, appellant maintains that refusing registration will not limit the visibility of the mark and that granting registration does not imply approval by the United States Government.

The Solicitor argues that the mark may be refused registration under section 2(a) by considering the goods and services recited in the applications, or by considering "the goods and services with which it is actually used," or by analyzing the mark per se without regard to the goods or services in question. The Solicitor asserts that, under any analysis, the mark is immoral, i. e., "patently offensive," and scandalous, i. e., "shocking to the sense of propriety of the average person applying contemporary standards." The Solicitor suggests that an analogy be drawn to obscenity cases with the exception that a national standard be applied because "it would be impractical to require the examining corps to be familiar with the community standards in each state or federal district." Finally, the Solicitor argues that the principal register "is not an art gallery" and that placing the mark on the register would be stamping the government's imprimatur on the picture which would be shocking to the average person.

ANALYSIS

With respect to appellant's First Amendment rights, it is clear that the PTO's refusal to register appellant's mark does not affect his right to use it. Holiday Inn v. Holiday Inn, Inc., 534 F.2d 312, 319 n.6, 189 USPQ 630, 635 n.6 (Cust. & Pat.App.1976). No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant's First Amendment rights would not be abridged by the refusal to register his mark.

There is, of course, a limited statutory right to registration, which carries certain benefits. Although, as appellant notes, these are more procedural than substantive, that right cannot be denied without compliance with Fifth Amendment due process requirements. This entails a determination of whether the term "scandalous"⁶ is sufficiently precise to enable the PTO and the courts to apply the law fairly and to notify a would-be registrant that the mark he adopts will not be granted a federal registration. The Supreme Court "has consistently held that lack of precision is not itself offensive to the requirements of due process. `... The Constitution does not require impossible standards'; all that is required is that the language `conveys sufficiently definite warning as to the proscribed conduct when measured by common understanding and practices ....'" Roth v. United States, 354 U.S. 476, 491, 77 S.Ct. 1304, 1312, 1 L.Ed.2d 1498 (1957). We note the similarity of the issue in this case to such issues as likelihood of confusion and descriptiveness for purposes of sections 2(d) and (e) of the Lanham Act, and that, although "each case involving a trademark (or servicemark) stands on its own facts," In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 526 n.8, 205 USPQ 505, 507 n.8 (CCPA 1980), such terms are not considered "void for vagueness." Nor does the fact that decisions of the board and the courts on the issue of likelihood of confusion are often subjective detract from their validity. See Warner-Hudnut, Inc. v. Wander Co., 280 F.2d 435, 47 CCPA 1172, 126 USPQ 411 (1960); Vandenburgh, Trademark Law and Procedure 141 (2d ed. 1968) and cases cited. Accordingly, we conclude that the term "scandalous" is sufficiently precise to satisfy due process requirements.⁷

In determining whether appellant's mark may be refused registration as scandalous, the mark must be considered in the context of the marketplace as applied to only the goods or...