Germany’s Federal Patent Court recently allowed EFAG Trade Mark Company to trademark its “Ficken Schnapps.” Maybe that doesn’t mean much to you if you don’t speak German, but “ficken” is the equivalent of “f*ck” in Deutschland—and the ruling is receiving worldwide press.
Previous requests to trademark the name failed with the German Patent and Trademark Office because it was found to be offensive, but now EFAG owns the “Ficken” trademark for alcoholic drinks, mineral water, and clothing.
The Patent Court’s reasoning is that the word doesn’t violate public morals and is not “sexually discriminatory.” Moreover, the opinion states, the word is included in the Duden, the premier German dictionary, and is used by those “in the widest range of social classes and age groups.”
So what about in the United States? Can you trademark curse words?
Curse words tend to fall in the “immoral, deceptive, or scandalous matter” provision of Section 2(a) of the 1946 Lanham Act (also called The Trademark Act). If the United States Patent and Trademark Office (USPTO) finds your proposed mark falls into that category, your application will be denied.
The definition of scandalous matter vis-à-vis potentially naughty words (pardon my French) is laid out in a 1994 case from the United States Court of Appeals, Federal Circuit concerning a proposed trademark for the term “Black Tail” for an “adult entertainment magazine featuring photographs of both naked and scantily-clad African-American women.”
According to the court, a “scandalous” mark is one that is “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation . . . in the context of the marketplace as applied to only the goods described in [the] application for registration.” This is judged based on “contemporary attitudes” of a “substantial composite of the general public.”
In the Black Tail case, the court found that “the record is devoid of factual inquiry by the Examiner or the Board concerning the substantial composite of the general public, the context of the relevant marketplace, or contemporary attitudes.” Looking to a dictionary definition alone, as the Board had done, was not enough to find a mark scandalous, and the court remanded the case for another look by the Board.
The court also reiterated its positions “that the Sec. 1052(a) prohibition against scandalous marks is not ‘an attempt to legislate morality, but, rather, a judgment by the Congress that such marks not occupy the time, services, and use of funds of the federal government.’”
So far, though, the USPTO has consistently ruled that f*ck, along with various other unsavory words are not eligible for trademark protection—although, interestingly, “b*tch” and “a$$” seem to make the cut more often than others.
Since the applicable standard does include “contemporary attitudes,” it’s possible that even the USPTO’s position on cuss words could change, so this is an area of trademark law to keep an eye on.
What do you think? Are there some words that should just never receive trademark protection?