No immoral or scandalous trademarks

A client of mine recently asked to register a trademark that included what one would consider a "bad word." The word in question rhymes with "duck."* I advised my client that there is no way to register such a word through the United States Patent and Trademark Office. U.S. law forbids the registration of marks that consist of "immoral or scandalous matter." Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §1203.01.

To be considered “scandalous,” a mark must comprise something 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 goods or services described in the application. In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994). Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, … and in the context of contemporary attitudes.” Id.

One might consider that today, when "bad words" are more prevalent in common parlance, that such standards would be lower- and thus more words no longer qualify as "immoral or scandalous." That is not the case. Basically any bad word, such as "f*ck," "sh!t," and "a$$hole," cannot be registered in the U.S.

That does not stop a lot of people from trying to register such marks. This is one reason for consulting a trademark attorney before filing a trademark application, as they can assist you from essentially donating your filing fees to the USPTO. There's no way you'll be able to argue around this rejection. A quick search of the USPTO records indicate 39 rejected applications comprising the f-word, 60 rejected applications comprising the s-word, and 8 rejected applications with the the a-hole word. The results of these searches are below.

F_ck Trademark Applications
Sh_t Trademark Applications
A_shole Trademark Applications

I have also seen marks such as sh!t being rejected, because the USPTO states that everyone knows that it actually means the word for poop. The only way this will change, and we'll be able to see registered trademarks that comprise "dirty words" will be to change the laws. For now you'll need to use the "TM" symbol, other common law rights, and perhaps state trademark systems to protect your more racy trademarks.

* I myself am no stranger to dirty words, and occasionally use them in my more colloquial speech. I see no need to censor these words on TV or elsewhere. However, to ensure this site is not blocked by filters at work and school, I am using the abbreviations of these words.

Internet Trademark Domain Name Disputes

The National Arbitration Forum just released three decisions regarding trademark domain name disputes, which is commonly referred to as "cybersquatting." The three cases illustrate different how to win an internet domain name trademark dispute, and how not to.

Magic Johnson

The first domain name is MagicJohnsonTravelGroup.com. June Bug Enterprises, on behalf of basketball legend Magic Johnson and his latest venture Magic Johnson Travel Group, filed to recover the domain name MagicJohnsonTravelGroup.com. A few days after the announcement of the formation of the Magic Johnson Travel Group, myspecialprice.com registered the domain name in question. myspecialprice.com had no rights to utilize the terms "Magic Johnson," and provided pay-per-click ads on the website. The Forum found for Magic Johnson, and ordered the domain name transferred from myspecialprice.com to Magic Johnson. This case illustrates the importance of registering domain names for your trademarks- especially before announcing your new trademarks to the public. The cost of registering the domain name is a lot lower (and quicker) than having to arbitrate over the domain name. The full decision is June Bug Enterprises, Inc. v. myspecialprice.com

War Games

In 1983, Metro-Goldwyn-Mayer Studios ("MGM") produced the hit movie "War Games." In 1998, World Readable registered the domain name wargames.com. For 8 years, pay-per-click ads appeared on the website, and in 2006 the website began selling military simulation war games.

The arbitrator found that although the marks were identical, MGM failed to show the 3 requirements to transfer a domain name:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The arbitrator found that World Readable had legitimate rights in the domain name, in light of the sale of products. This case highlights the importance of policing your trademarks, and for acting immediately to address infringers. If MGM had gone after World Readable 5 years ago, when they were only showing ads, then they would have likely been successful in obtaining the domain name. The full decision is Metro-Goldwyn-Mayer Studios Inc. v. World Readable c/o R.L. Cadenhead.

Pig

The third case involves the trademark "pig." Canadian Adam Dicker registered the domain name pig.com. New Pig Corporation has been using the trademark "pig" since 1987 for industrial absorbents, containment products, waste handling equipment, distribution, sales and service related to such products. Mr. Dickler has been using the pig.com domain name to show pay-per-click ads. The arbitrators found that since Mr. Dicker had not registered the domain name in bad faith (e.g. he did not intend to usurp New Pig's trademark rights, and obtained the domain name because of it's desirable 1 word format), then New Pig had not proven the necessary elements to force transfer of the domain name.

Mr. Dicker purchased the domain name in an auction in 2006. New Pig should have been policing the mark and the domain name, and could have won it through the auction. They gambled through the arbitration process, and in the end, do not have a domain name with their trademark. Mr. Dickler is earning over $2 for the top click on his website, so this also demonstrates the value of domain names. The full decision is New Pig Corporation v. Adam Dicker.

Read the full press release.

Asics and Skechers trademark dispute

Two dueling press releases caught my attention today-- because they involve trademark infringement allegations, and are from my two favorite shoe companies. ASICS, maker of athletic shoes, has sued SKECHERS, maker of "lifestyle footwear." I run marathons wearing ASICS, and prefer SKECHERS for my casual shoes. According to ASICS, they are suing

for trademark infringement, unfair competition, trademark dilution and false advertising. ASICS is seeking a permanent injunction against Skechers [sic] to prevent any future sales and distribution of shoes that bear a stripe design similar to ASICS famous stripe design. In addition, ASICS is also seeking damages, including profits and attorney fees.

The press release includes a quote from the vice president and general counsel of ASICS, Michael Zall:

"These shoes are an attempt to free-ride on the ASICS brand image and goodwill associated with our stripe mark that we have developed over the years. ASICS has spent over 40 years building a world-renowned premium brand and nurturing the goodwill represented by this mark. We will do what we must to protect the ASICS brand and to maintain its integrity."

ASICS states that their stripe mark is a registered trademark in most countries in the world. Read the full press release (Feb 5, 2007).

SKECHERS has replied with press release dated Feb 7, 2007, in which they deny all the allegations. A good legal analysis is put forth by executive vice president and general counsel of SKECHERS Philip G. Paccione:

"We believe that this lawsuit is completely without merit and will vigorously defend ourselves and our customers against such baseless allegations," says , General Counsel and Executive Vice President of SKECHERS. "Our stripe design does not look like the ASICS trademark; in fact, on the shoes in issue, our differences are patently obvious. Our designs use one horizontal stripe while ASICS uses two horizontal lines — a prominent feature of the ASICS trademark. In addition, our designs do not mimic the curves and contours of ASICS' design. There are many differences. "

Read the full SKECHERS press release.

Here are pictures of the two shoes in question:


The shoe on the left is from ASICS, and the one on the right is SKECHERS. Looking at the two side-by-side, I tend to agree with Mr. Paccione, in that the stripe patters are indeed different- there are different numbers of stripes, one is wavy and the other straight, the orientation is different... and a number of other differences.

I think it might be tough for ASICS to win this one, however this can only be determined by significant analysis- and the use of consumer surveys. This is gearing up to likely be a very long and expensive court battle.

Keith Urban v. Keith Urban- trademark infringement

The Smoking Gun has an interesting article today, regarding litigation by Keith Urban. The two litigants are both named Keith Urban. The plaintiff, Keith Lionel Urban, is a country musician from Nashville, Tennessee. He is the husband of Nicole Kidman who spent three well publicized months in rehab. The defendant is Keith D. Urban, of Wayne, New Jersey. He is a painter.

Keith L. Urban is unhappy that Keith D. Urban runs the website keithurban.com. He wants Keith D. Urban to stop selling his paintings on the website. Keith L. Urban was slow in registering domain names, and he uses the website keithurban.net. I did a quick search through Google for "Keith Urban," and the all of the first few pages of search results all point to the country singer, and identify his .net website.

When I first read about this website, I figured that Keith L. Urban must be back on the bottle- the other guy is actually named Keith Urban, registered the domain name first, so one could logically conclude that the painting Urban has the right to use the domain name comprising his actual name.

Then I took a look at the keithurban.com website, and I immediately knew that Keith L. Urban had a very strong case, and will likely win against Keith D. Urban. The country singer alleges that the painter is using the website of keithurban.com in bad faith, and confusing people into believing that he is the painter in addition to being the singer.

Of particular note, keithurban.com leads you to believe that it is actually the singer who does the paintings. The website prominently proclaims:

You have reached the site of Keith Urban
To Those Who Don't Know, Oil Painting
Is One Of My Hobbies.

The website later continues with:

For production reasons the print will not be the exact size as the painting, however it will be as close to the original size of the painting as possible.
The print will be autographed and numbered on the back and also comes with
a certificate of authenticity that is also autographed and numbered.

At no point does the website indicate that the individual is someone other than Keith Urban, country music star. Indeed, it leads one to believe that this may even be the Keith Urban, musician. By not clarifying this important fact, the painter Keith Urban is likely attempting to profit from the well known musician. Many people (myself included) will often go directly to a name and add ".com" when attempting to visit a website. I imagine the painter is receiving a good bump in website traffic by these accidental visits. As I noted earlier, the .com website does not show up within the first few pages of Google search results.

I have saved copies of the main page of keithurban.com, in the likely event that the website is shut down or ordered to change (and likely enter a disclaimer). Click the thumbnail image above to view the main page.