A proposed trademark can be refused and/or rejected by the trademark office is the proposed mark is deemed “scandalous or immoral” when analyzed against contemporary attitudes and norms. The trademark office recently reversed a refusal to register the trademark NUT SACK DOUBLE BROWN ALE for beer after determining that, contrary to the examiner’s assertion, the proposed mark was immoral or scandalous. Filers of the mark argued that the term “nut” simply referred to a flavor, while “sack” suggested a “sackful of flavor.” Cue laughter. Ultimately, the Trademark Trial and Appeals Board determined that the proposed mark was not so shocking or offensive as to be held scandalous with the trademark law.
Trademark owners often want to capitalize from the brand recognition and goodwill they’ve worked long and hard to establish for their brands. Owners typically enter into license agreements with third parties which permits that party to use the owner’s mark on specific goods and services. Many owners are unaware that, once you negotiate and grant the license, a mark owner must pay attention to quality control to ensure that the third party is delivering the same high quality product or service the public expects from the owner’s brand and mark. Be advised that lack of quality control monitoring may result in what is known as a “naked license,” which may ultimately jeopardize the owner’s rights in its own mark. Owner must, unfortunately, also be careful not to exercise “too much” control, which may unintentionally create a “de facto franchise” between the parties.