Trademark Appeals Board Opinion Has People Asking: What the F**K?

October 13, 2015

​Fenwick trademark litigation lawyer Eric Ball spoke with Corporate Counsel about an expletive-filled Trademark Trial and Appeal Board (TTAB) opinion and the U.S. Patent and Trademark Office's inconsistent handling of language considered by some to be “immoral and scandalous.”

The 22-page opinion, which used the F-word as many as 86 times, dealt with the appeal of the decision that an Italian apparel company could not register the mark “F**K Project.” The U.S. Patent and Trademark Office (PTO) and the TTAB refused registration under Section 2(a) of the Lanham Act because of its “immoral or scandalous matter.”

However, the PTO has approved other marks that may have likewise been perceived, Fenwick’s Ball told Corporate Counsel. For example, the office allowed “Big Cock Ranch,” “Big Effin Garage,” “Tits,” “fcuk,” and “F-bomb,” Ball said.

“The trademark office has been very inconsistent about how it treats scandalous and immoral matter,” Ball said.

The content of TTAB’s F**K Project opinion itself also contains multiple perspectives, noted Corporate Counsel. Lawyers said the fact that the opinion includes a main opinion, concurring opinion and dissenting opinion points to the PTO’s evolving perspective on what makes immoral or scandalous subject matter, according to Corporate Counsel.

The main and concurring opinions advocated against registering F**K Project, but the dissenting opinion said that the euphemism F**K was not equivalent with the expletive itself and therefore was permissible, Corporate Counsel noted.

“We are starting to see a liberalization at the PTO about what constitutes scandalous and immoral, but in this case it seems the mark was too in your face,” Ball added.​

The full article is available through the Corporate Counsel website (subscription required).​​​​