criticizing the judicial creation of the substantial composite of the general public standard as nonsensical and unsupported by the authority cited by the majority
How later courts described this case
- criticizing the judicial creation of the substantial composite of the general public standard as nonsensical and unsupported by the authority cited by the majority
- "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. 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.”
- “[T]he threshold for objectionable matter is lower for what can be described as ‘scandalous’ than for ‘obscene’…”
- User of mark refused registration under Section 2(a) of the Lanham Act still may enforce rights under common law
Written by the judges who cited it.
Later courts went against this
Overruled by In RE:TAM en Banc, 808 F.3d 1321 (2015)
In re McGinley, 660 F.2d 481, 485 n.9 (CCPA 1981), overruled on other grounds by In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), aff'd, — U.S. -, 137 S.Ct. 1744, 198 L.Ed.2d 366.
The opinion
RICH, Judge, with whom BALDWIN, J.,
joins, dissenting.
I find the majority opinion lacking in factual foundation on the main issue of whether the picture sought to be registered as a trademark is “scandalous” when used on the goods and services named in the application.
I agree that the goods and services, as recited, must be considered together with the mark, as was done in In re- Riverbank Canning Co., 95 F.2d 327 , 25 CCPA 1028, 37 USPQ 268 (1938). The majority is also correct in stating that “the Lanham Act does not require, under the rubric of ‘scandalous,’ any inquiry into the specific goods or services not shown in the application.” The statement is, however, somewhat ambiguous in the words “shown in the application” because the application contains copies of the “Newsletter” as specimens. I take it that the majority is intending to say that the Lanham Act does not require us to look at the contents of the newsletter and that we should restrict ourselves to considering the picture sought to be registered and the fact that it is used as a trademark on a newsletter, not taking the contents into consideration.
Following this correct procedure, the issue is whether this picture on any “Newsletter Devoted to Social and Interpersonal Relationship Topics” or “Social Club Services,” regardless of what those services are, is “scandalous” under 15 U.S.C. § 1052 (a). The contents of the newsletter and the nature of the actual services rendered by appellant being left out of consideration, decision rests on the nature of the picture.
Like the majority and the members of the board, I have seen every version of the picture contained in the certified record and briefs and I do not find use of this picture on the goods or services named in the application to present a “scandalous” mark. I agree that the heterosexual couple are nude, that they are kissing, that they are embracing in that sense (the man has his arm around the woman’s neck and the woman is holding the man’s head in her hand), but, amazingly, on the crucial matter the majority equivocates in the phrase “appearing to expose the male genitalia.” Either it does or it doesn’t- and I find it doesn’t. Therefore, I find the record does not support a fact I believe the majority thinks is controlling but I speculate since I do not really know why the majority holds the mark to be scandalous.
The majority appears to rely on the Riverbank (MADONNA for wine) case decided in 1938. It was a three-to-two decision and I feel the dissenters took the sounder position. I think the decision is no longer of precedential value in view of the social changes in the ensuing 43 years. The majority cites Riverbank in apparent support of using as a- basis for decision the imagined feelings of “a substantial composite of the general public.” There is no such expression in Riverbank and I am at a loss to know what it means or how one can have a “composite” of a class such as “the general public.”
I would reverse. More “public funds” are being expended in the prosecution of this appeal than would ever result from the registration of the mark.