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Can Offensive Trademarks Build a Positive Brand?

Fenwick trademark litigation partner Eric Ball talked to Bloomberg BNA about trademarking offensive terms, commenting on the case of an entrepreneur who applied to register an offensive racial slur.

The entrepreneur said that he intends to eliminate the negative connotation behind the word. He believes that the Supreme Court’s Matal v. Tam decision will support his efforts. The Tam ruling determined that prohibiting the registration of a different racial slur violated the First Amendment.

While there have been other attempts to register versions of the slur in question, Ball noted that the entrepreneur’s attempt is following a playbook that gives him a chance at registering or at least blocking others from registering the mark.

“It makes the trademark more of an identifier and can better show the consumer the source of the item, which is the priority. However, with this word, the office may look deeper into the hang tag method to get a better meaning but they’ve routinely granted this method,” Ball said.

In fact, the plaintiff’s largest issue may be that he has applied for over 15 classes spanning a large variety of products—making his application more vulnerable.

Ball noted, “He’s going to have a pretty hard time showing proof that he will sell all of those items using that trademark. If you’re listing a huge number of classes, someone can pick an item—let’s say a watch—and say, `You don’t have any watches for sale with this trademark,’ and they can cancel that part of your trademark.”

Read the full article on the Bloomberg BNA website, and Ball’s analysis of Matal v. Tam on Fenwick’s website.​​