The San Francisco-based women's motorcycle group Dykes on Bikes has finally been allowed to trademark its moniker after the U.S. Patent and Trademark office reversed two earlier rulings (San Francisco Chronicle). Initially, the group's application was rejected after the office claimed that the word "Dykes" was derogatory and therefore untrademarkable, but the office reversed itself after the group submitted hundreds of pages of documents from dozens of experts testifying that the word was no longer considered pejorative. That the women had so much trouble is testament to the weird system that the government uses to decide which trademarks are too offensive to be acceptable.

Dykes on Bikes was able to overturn the initial ruling for one major reason: The US Patent and Trademark Office has very few rules—and constantly evolving standards—as to what makes a mark inappropriate. Gelf got in touch with Lynn Beresford, a US Commissioner for Trademarks, who said that determinations are made on a case-by case basis. "Trademark examining attorneys make a determination as to how a particular word or phrase is used based on research," she wrote over email. "The U.S. Patent and Trademark Office does not have a list of 'disapproved' words."

Instead, the office uses precedents set over years of court cases. What has emerged is a system wherein the trademark attorneys decide whether marks are "scandalous" or "disparaging". The protections of the First Amendment—i.e. everything but obscenity—don't apply. "I know it when I see it" is not even an option.

A 1999 article in IDEA: The Journal of Law and Technology (PDF) has an interesting history of trademarks rejected for being "scandalous," including a line of pre World War-II underwear that was rejected for being named "Queen Mary" as associations between undergarments and the former Royal were deemed inappropriate.

Courtesy bigjohnson.com and uspto.gov. A tale of two trademarks.

Today, "scandalous," according to the Trademark office, means "shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation." This leaves a lot open to interpretation. Big Pecker T-shirts were found not to be scandalous, mainly because a double entendre was created by using a rooster mascot. ("[T]he inclusion of the bird design would make it less likely that purchasers would attribute any vulgar connotation to the word mark," according to the court's decision. Right.) But Dick Heads' bar was denied trademark status due to the logo featuring its supposed founder's genital-shaped noggin. Court records also show the decision may have been swayed by the bumper sticker for the bar that read "Give me Head…til I'm Dead," but that didn't stop a trademark being issued to Big Johnson T-shirts, which features a tamer drawing but slogans including "Ride 'em long and hard…Leave 'em wet and slushy."

As the article in IDEA states, "The standard had boiled down to the following rough distinction: double entendres were registrable, but profanities or graphic sexual images were not."

The Trademark office seems to be relenting (slightly) on what makes a mark disparaging. Recently, the publishers of Black Tail Magazine were allowed to keep their trademark after it was determined that the phrase does not bring African-American women into disrepute. Additionally, several different groups, including the Elvis-related entertainment group Memphis Mafia, Inc. and rappers Junior M.A.F.I.A., were allowed to keep their marks after being sued by people complaining that the word "mafia" was pejorative to Italians and Italian-Americans.

In a 1996 paper published in the Federal Bar Journal, Jendi Reiter argues that the entire system of witholding trademarks based on inappropriateness should be scrapped as it is increasingly being used by opponents of offensive speech to circumvent the First Amendment. "Our national debate will be impoverished, and our ability to control and confront representations of ourselves will be weakened, if all potentially scandalous commercial images may be pressured out of existence at the instigation of a few offended parties."

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