F**k, and its variants, appears in headlines, on t-shirts, and even in comic strips in the Sunday newspaper. On the one hand, it is the polite and socially acceptable way to express a quite impolite word. On the other hand, to paraphrase the comedian Louis CK, using “f**k” simply puts the word in the reader’s head, and is no different than writing the word in full. Is “f**k” vulgar or merely an obscenity altered for polite company? The Trademark Trial and Appeal Board (“TTAB”) addressed this very question in its September 25, 2015 opinion In re Giorgio S.R.L. Applicant sought registration on the Principal Register of a mark including the word “F**K” accompanied by the word “PROJECT” in smaller sized letters. The Trademark Office denied the registration under Section 2(a) of the Trademark Act as scandalous, opining that its vulgarity is demonstrated by multiple dictionary definitions as well as by the prohibitions on its use in radio and television broadcasts. The Applicant appealed at every opportunity, and the matter came before the TTAB for review.

Despite creative efforts by the Applicant, the TTAB wasn’t convinced by Applicant’s reliance on the previous registrations of “BIG EFFIN GARAGE” and “$#*! MY DAD SAYS,” nor did the TTAB find existing registrations of Applicant’s mark in foreign jurisdictions particularly compelling. The TTAB determined, quite definitively, that “Applicant’s mark . . . viewed in its entirety, suggests nothing more than a project or enterprise devoted to sexual intercourse or to one of the other vulgar meanings of ‘fuck.”

Not so fast, says Judge Seeherman in his dissent. Not only is “F**K” not vulgar – its entire purpose is to avoid vulgarity by writing the word in a non-offensive way. Like “jeez,” “heck,” “gosh” and “n-word,” the phrasing is a euphemism and is an acceptable substitute for vulgarity. Judge Seeherman points directly to the Majority Opinion’s marshaling of examples such as news headlines to prove up his point – the very reason that Amazon.com lists a book as “Go the F**k to Sleep” is because it is a substitute for an offensive word and therefore not scandalous. Referring back to the Majority Opinion’s reference to the asterisks as a mere “fig leaf,” Judge Seeherman argues “[t]hat is what a fig leaf does, it conceals ‘what may be considered indecorous or indecent, so that what is seen is not indecent.” The dissent would reverse the refusal and allow the application to proceed to publication.

Will such marks be granted registration in the future? Perhaps. As social mores shift, so does the standard of the Section 2(a) test. “The Patent and Trademark Office may prove that a mark is scandalous and refuse registration by establishing that the mark is ‘vulgar.’ This demonstration must be made in the context of contemporary attitudes, in the context of the marketplace as applied to the goods described in the applications, and from the standpoint of not necessarily a majority, but a substantial composite of the general public.” Marks such as “BITCHES WHO BRUNCH” and “GRUMPY OLD BASTARD” have obtained registration as popular language has changed – maybe “the mother of all curse words” is next.

Source: http://ttabvue.uspto.gov/ttabvue/ttabvue-79141996-EXA-17.pdf

About the Firm:

Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.

The firm publishes Intellectual Property Trends (latest developments in IP law), Conversations with Innovators (interviews with thought leaders), Leaders in Law (insights from law leaders), Culture Counts (thoughts on law firm culture and business), and Legal Insights (in-depth analysis of IP, litigation, and transactional law).