Underwear bearing the name “Comfyballs” was recently ruled too scandalous for the United States Patent & Trademark Office (“USPTO”). The USPTO rejected the trademark application of a Norwegian underwear company for the term “Comfyballs.” (Serial No. 85/952474).
The Office cited 15 U.S.C. §1052(a), which states that trademark applications may be denied if the mark “Consists of or comprises immoral, deceptive, or scandalous matter.” A mark is considered scandalous if a substantial portion of the public would find it offensive based on contemporary standards.1 Evidence that a mark is vulgar is sufficient to establish the mark is scandalous or immoral.2 TMEP § 1203.01.
The primary evidence the USPTO cited in the refusal was that Merriam-Webster, the Oxford English Dictionary, Random House, and the American Heritage Dictionary all list the term “balls” as a “vulgar” slang term for testicles.
What about Free Speech and the First Amendment?
Is the refusal of the mark “Comfyballs” a puritanical form of censorship? Speech is protected by the First Amendment. So, how can this be prohibited?
The answer is that U.S. law does not protect all types of speech equally. A trademark is regarded as a commercial form of speech, and therefore is not entitled to the same heightened free speech protections afforded the press and of citizens to discuss opinions, politics, etc.
Also, according to the USPTO, the term “Comfyballs” is not being censored because the Norwegian company can still make and sell underwear called “Comfyballs” without fear of government fine or sanction. Whether this is true or not may be a question of philosophy and politics. Some would regard the refusal to register a trademark as denial of a valuable property right.
But, irrespective of politics, what the lack of registration means practically is the Norwegian company has fewer options if someone were to infringe the mark.
I have a mark I want to register that may be considered “scandalous.” How can I avoid a rejection like this?
The refusal by the USPTO hints at ways a company can avoid a similar rejection. Checking a dictionary to see if a term is “vulgar” before applying for a trademark could save an applicant many headaches.
Even if a term is labeled “vulgar” in a dictionary, the USPTO may still grant a trademark registration if there is a double entendre. Examples of registered marks containing the term “balls” include: “Got Dirty Ballz” for jerseys and sporting goods because “dirty ballz” could refer to dirty footballs, baseball, etc.; and “It Takes Balls” because this is a common synonym for “guts.”
The problem with “Comfyballs” was that in the context of underwear “balls” allegedly could only refer to testicles. Why a testicle is obscene is another question entirely. Maybe something was lost in the translation from Norwegian? Or, maybe the applicant should have tried a more anatomically accurate phrase? Is that possible? At any rate, the USPTO did not like the application.
The refusal of “Comfyballs” may seem a bit prudish, especially with the general acceptance in contemporary society of terms that once were considered vulgar. Since the standard for scandalous is based on contemporary standards, maybe one day in the near future “Comfyballs” might not be so shocking. But in 2014, the USPTO still bars the registration.
This article was written by Jennifer Blanton, JD and John Buche, JD. The law firm of Buche & Associates, P.C. is based in Southern California with offices in San Diego, Los Angeles, and Houston. The office specializes in acquisition and litigation of patent, trademark, copyright and other intellectual property rights. www.southerncaliforniapatents.com ©2014 Buche & Associates, P.C.
1 See In re Fox, 702 F.3d at 635, 105 USPQ2d at 1248 (quoting In re Mavety Media Grp. Ltd., 33 F.3d at 1371, 31 USPQ2d at 1925-26)
2 In re Fox, 702 F.3d 633, 635, 105 USPQ2d 1247, 1248 (Fed. Cir. 2012) (citing In re The Boulevard Entm’t, Inc., 334 F.3d 1336, 1340, 67 USPQ2d 1475, 1477 (Fed. Cir. 2003))