## Facts

- Robert L. McGinley sought federal registration of a trademark and service mark consisting of a photograph depicting a nude man and woman kissing and embracing in a manner appearing to expose male genitalia.
- The applications identified use for a “Newsletter Devoted to Social and Interpersonal Relationship Topics” and for “Social Club Services.”
- Evidence showed the newsletter addressed explicit sexual topics, including bisexuality, homosexuality, masturbation, and fornication.
- The club services included sponsoring and arranging parties described as “swinging,” characterized as group sexual activity.
- The examining attorney refused registration under Lanham Act § 2(a), concluding the mark and its identified uses involved “immoral or scandalous” matter; McGinley disputed that the image actually displayed genitalia.
- The Trademark Trial and Appeal Board affirmed the refusal, and McGinley appealed.

## Issues

1. Whether the proposed mark, in view of its explicit depiction and the identified goods and services, comprises “immoral or scandalous matter” under Lanham Act § 2(a), warranting refusal of registration.
2. Whether refusing to register the mark under § 2(a) violates the applicant’s First Amendment rights.

## Decision

- The court affirmed the Board’s refusal to register the mark under § 2(a).
- The court held that, applying contemporary community standards, the photograph’s graphic nudity and sexual context could be found offensive to a substantial composite of the general public.
- The court held that denial of registration did not violate the First Amendment because the applicant remained free to use the mark; the refusal did not prohibit conduct or suppress expression.

## Legal Principles

- Lanham Act § 2(a) authorizes refusal to register a mark that consists of or comprises “immoral” or “scandalous” matter.
- Whether matter is “immoral” or “scandalous” may be assessed under contemporary community standards, including the mark’s content and the context supplied by the identified goods or services.
- A refusal to register a mark does not, by itself, abridge First Amendment rights where the applicant is not barred from using the mark and no expression is suppressed; the refusal withholds a federal registration benefit.

## Conclusion

The court upheld the PTO’s determination that an explicit nude-photograph mark, used in connection with a sexually oriented newsletter and swinging-related social club services, was “immoral or scandalous” under § 2(a), and it rejected the First Amendment challenge because the applicant could still use the mark despite being denied registration.


In re McGinley, 660 F.2d 481 (C.C.P.A. 1981)