We’re pleased as fuck to bring you another guest post by trademark lawyer Anne Gilson LaLonde, the author of Gilson on Trademarks (a legal treatise on U.S. trademark law) and of the extremely popular Strong Language post “Trademarks the Government Doesn’t Want You to See.” We’re doubly pleased to announce that Anne will be joining our merry band as a regular contributor.
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A quick review: Under federal law, no one can register a “scandalous” trademark with the U.S. Patent and Trademark Office (USPTO). If “a substantial composite of the general public” would find the mark as used to be shocking, offensive or vulgar, it can’t be registered. While the owner can still use the mark for its goods or services, lack of registration means fewer legal rights.
It’s generally a waste of time and money to apply to register a mark that includes such terms as SHIT, ASSHOLE or FUCK. Nevertheless, hopeful trademark owners who lack legal advice keep trying to register these curse words. Here are a few examples of applications from 2015 that will never make it onto the federal trademark register:
SHIT THE BED for hot sauce
DO NOT BULLSHIT US for blogs featuring current events and other topics
MY SHIT STINKS! for athletic apparel
SHIT JUST GOT REAL for baby blankets
JOLLIEST BUNCH OF ASSHOLES THIS SIDE OF THE NUTHOUSE for baby and adult clothes
FUCK SLEEP for a variety of apparel
PLAY IT FUCKING LOUD for a web portal for computer software on guitar instruction
FUCKALICIOUS FREAKS for “entertainment services in the nature of phone sex”
THE FUCK UP FAIRY IS COMING! for clothing
WHAT A FUCKING PLACE for coffee shops, hotels, restaurants
Instead of being so blatant, however, some enterprising applicants try to avoid a scandalousness refusal by using variants of unacceptable words. Sometimes it works, often it doesn’t.
Take the term FUCK, for example. On September 30, 2015, the USPTO refused to register the following mark for leather and imitation leather goods, including bags, backpacks and wallets:
The result wasn’t surprising, but two judges disagreed with the holding that the substitute vulgarity F**K is itself vulgar. One opined that such substitutes “are used precisely because they are not vulgar,” and the other declared that “F**K is a sanitized version of the vulgar word ‘fuck.’” The second judge added: “I do not agree that if a term would be readily understood as the offensive term, the substitute term is also offensive.”
Where should the USPTO draw the line between FUCK on one end of the spectrum and the tame FREAK or FRICK on the other? There are many terms and images in between and it’s not always clear when a term is “sanitized” and when it’s just a slight misspelling that’s equivalent to the word itself.
I mentioned in my last post that the USPTO allowed BIG EFFIN GARAGE for an online community for musicians and music fans and FRIGGIN’ for refrigerator magnets. Plenty of marks are also registered that include FREAKIN’ (e.g., FREAKIN’ VEGAN for vegan tomato sauce) or FRICKIN’ (e.g., FRICKIN’ CHICKEN for chicken sandwiches). The following mark is registered for musical sound recordings:
F WORD and variants also appear to be acceptable, though they have generally played with the “F” term: Registrations exist for THE F WORD for business consulting services related to franchising, FRUGAL – THE NEW F WORD for a blog on money management, and the following for services including a website featuring information in the field of fitness:
“The f word”
WHAT THE FORK is registered for food truck services, NO FORK IN WAY is registered for hotel, restaurant and catering services and FORK YOU! is registered for serving forks. And GO FORK YOURSELF for clothing and “podcasts in the field of food, travel and culture” has gotten through the initial examination process without a scandalousness refusal. Surprisingly, the USPTO has allowed several registrations for FCUK, which ostensibly stands for French Connection United Kingdom.
But other variants of FUCK have been found unacceptable, such as FCK and FUK. The USPTO refused to register the following mark for various services related to fitness and exercise:
FUK U CONDOMS (for, yes, condoms) was refused registration and FUK was refused for “distilled spirits of fruit, vegetables and grains.” Adding an umlaut didn’t help; FÜK was denied registration for clothing. The mark FUK SAUCE for personal lubricants was refused as scandalous on August 6, 2015, though the applicant can still appeal that non-final determination. Other variants have also been refused on the same ground, such as FOK’N HURTS for stun guns, F YOU for candles, body powder and cosmetics and FU for books in the field of humor, lifestyle and politics.
Using a symbol or image for one or both of the two inner letters in FUCK has not been successful for applicants, as with F**K PROJECT, described above. ROCK AND F..K was also refused on the basis of scandalousness for watches, jewelry, clothing, and the USPTO denied registration to the following marks, all for clothing:
[Ed. note: A post about “Fuck Cancer” is in the works.]
The best explanation for most of the line-drawing above is that the USPTO goes by what the mark would sound like when spoken aloud. When it refused registration to FOK’N HURTS, for instance, the USPTO differentiated registrations like FREAKIN’ and FRICKIN’ by emphasizing the sound of the mark: “The term ‘fok’n’ bears a similarity in sound (no matter how it is pronounced) to the term ‘fucking’ (or ‘fuckin/fuck’n’) that, quite simply, the other terms do not.”
But it’s more problematic to assume that F**K and similar purposefully-unpronounceable marks are the equivalent of FUCK. Perhaps the unavailing views of the two F**K PROJECT judges will spur the USPTO to change its policy on the scandalousness of substitutes for vulgarity.