Guest post: Scandalous or not: how to effing decide

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

dc_as-fuck

for T-shirts

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:

f project

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:

fbomb_records

F-bomb Records

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:

f-word

“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:

fbeingfat

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:

f_sandy

f_cancer_FC

f_cancer

[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.

12 thoughts on “Guest post: Scandalous or not: how to effing decide

  1. blackdragon1976 October 20, 2015 / 4:29 am

    I really enjoyed this article I learned something new just over how they (uspto) view the word fuck and how certain advertisements spell and use the word in certain ways….i’m assuming that how it is spelled makes it acceptable in some cases….but my opinion is we are a creative society what’s the problem

    Liked by 1 person

    • Anne Gilson LaLonde October 20, 2015 / 4:25 pm

      Thanks, Black Dragon – I agree that many of these trademarks are incredibly creative, as well as funny. But the US Patent and Trademark Office is required by federal law to refuse registration to “scandalous” trademarks, so it has to figure out what that means on a case-by-case basis. And sometimes the spelling of the mark will let it get through, sometimes it won’t.

      Liked by 1 person

  2. Amy Alkon (@amyalkon) October 20, 2015 / 12:30 pm

    How it’s spelled or said does make it acceptable. My book title — “Good Manners For Nice People Who Sometimes Say F*ck” — is fine on the radio (on NPR stations and on AM and FM) as long as the host says “Good Manners For Nice People Who Sometimes Say the F-word.” So, say it the first way, FCC fines you and grannies call in, and the second way, and nobody has a problem with it. The same goes for mentions in conservative papers. But many daily newspapers just list it as is — while having prohibitions against words like “crap” and “butt.” So, yes, different and more acceptable word, if you judge it by these acceptances, when it is not the straight-out “Fuck,” which I would have preferred (but I’m grateful my publisher let me go with “F*ck” at all — I had to leave my now-former agent over sticking with the title).

    In short, we have a First Amendment and there’s the “Fuck the Draft” case (Cohen v. California, 1971), and the trademark office has no business policing speech and, effectively policing people out of rights because of it.

    Liked by 1 person

    • Anne Gilson LaLonde October 20, 2015 / 4:19 pm

      Amy, I definitely agree with you about the spelling and sound of the term making it acceptable or not.
      First, though, the US Patent and Trademark Office is required to decide what’s scandalous and what isn’t because the federal trademark law prohibits the registration of “scandalous” or “immoral” trademarks. (Fortunately, the US Patent and Trademark Office has never denied registration on the grounds of immorality.) At any rate, the USPTO has a statutory duty to refuse registration to scandalous trademarks, so it has to figure out how to draw this difficult line. That’s why FUCK is not allowed in registrations.
      You’ll be interested in two cases moving through the courts right now challenging the constitutionality of a similar prohibition: the federal statute requiring the USPTO to refuse to register “disparaging” trademarks. One, of course, is the REDSKINS case, and the other is THE SLANTS for a musical group. If that prohibition is found to violate the First Amendment, maybe the scandalousness prohibition will be next to fall.
      The USPTO’s examining attorneys sometimes use newspaper articles as evidence of what is scandalous or not – so if the articles use “the f word” instead of “fuck,” the suggestion is that “fuck” is too shocking and offensive to be printed. Problematic, but it’s generally unclear how the USPTO should decide what’s shocking.
      I agree that you lose the impact in your book title when you aren’t allowed to say FUCK, and it’s a shame that it gets watered down to “the F word.” That certainly changes the meaning of the title entirely, doesn’t it? These aren’t nice people who sometimes say “the F word,” they’re nice people who sometimes say “fuck.” Totally different.

      Liked by 1 person

    • Anne Gilson LaLonde October 20, 2015 / 3:50 pm

      This was fantastic – thank you for letting me know. In combination with the post on the “semantic ambiguity or vagueness of English noun compounds,” the video was particularly funny.

      I just checked, and, yes, GUN OIL is registered at the USPTO for personal lubricant. (But GREEN GUN OIL is registered for gun barrel oil!)

      Like

  3. I read the article Trademarks the Government Doesn’t want you to see. I found that educational and entertaining as i do this one. I kinda feel for the USPTO. There are so many variants of all the supposed “objectionable language”

    Like

    • Anne Gilson LaLonde October 23, 2015 / 12:54 am

      Thanks for the comment – and I absolutely agree with you, I wouldn’t want to be in the USPTO’s shoes here either. Line-drawing is so difficult in this situation. Examiners who look at the marks in the first place have to check with their managing attorneys if they’re going to make a scandalousness refusal, so at least there’s some attempt to make it consistent.

      Liked by 1 person

  4. Mr Punch October 22, 2015 / 11:10 pm

    Since the intent of registration is precisely to restrict use of a name, isn’t the law banning registration of scandalous names kind of self-defeating?

    Like

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