Not everything is trademark-able, including “Bad Words,” which may be considered “scandalous and immoral matter”. But which words are the bad ones ?
For fun, I started playing around with TESS (the USA search engine) and discovered some interesting facts on which “bad words” were accepted as trademarks in USA, and which ones were rejected….when.
In most countries one can’t register “bad words” due to them being offensive. The definition, however, of which words are “bad” varies by country. Here is a snapshot from the USPTO on how that definition has changed over the years.
From an office action dated June 2016, the USPTO considers the following: For a mark to be “scandalous,” the evidence must show that the mark would be considered shocking to the sense of decency or propriety, giving offense to the conscience or moral feelings, or calling out for condemnation.
Sorry to offend, but let’s review the history of these “bad words” (in alphabetical order): ASS
- 1st registered trademark granted in May 1972.
- 1370 total trademarks applied for using the term.
- 471 are still alive today, over 345 of which have achieved registration.
- 1st trademark application filed in August 1985, abandoned in 1987.
- 24 total trademark applications using the term, 23 of which have been rejected (the most recent August 2016).
- Last trademark application filed June 2016, awaiting first review.
- 1st registered trademark granted in July 1973.
- 972 total trademark applications using the term.
- 350+ are still alive today, over 220 of which have achieved registration.
- The 1st filing was made in 1987 and immediately rejected. The 1st trademark registration was granted in July 1995.
- 253 total trademark applications using the term.
- 117 are still alive today, 83 of which have achieved registration.
- 1st registered trademark granted in 1978 covering tube tops in 025
- 179 total trademark applications using the term.
- 69 are still alive today, over 55 of which have achieved registration.
- 2 ladies tried to register this word in 2007. Both were immediately rejected.
- 1st registered trademark granted in 1978
- 378 total trademark applications using the term.
- 158 are still alive today, over 105 of which have achieved registration.
- 1st registered trademark granted in 1982 for PHARTZ, but not until 1990 for the actual term.
- 148 total trademark applications using the term.
- 39 are still alive today, 29 of which have achieved registration.
- 171 total records, the first application was filed in 1996 and the latest in July 2016.
- 29 records still alive, mainly pending, all rejected for scandalous.
- 2 are registered -- “WTF” versions, which is knows to stand for “what the f&#k”.
- 7698 applications filed that take the Lord’s name in vain (very offensive to many).
- 3804 of these achieved registration and 3450 of them are still currently alive.
- Only 1 application includes the term “damn” and it was repeatedly rejected in 2012.
INFIERNO (Spanish for Hell)
- The first trademark using the term registered in 1997 after 3 years.
- 10 total trademark applications using the term.
- 5 are still alive today, 4 of which have achieved registration.
MIERDA (Spanish for Shit)
- 6 total trademark applications using the term.
- 3 are still alive today, 2 of which have achieved registration.
- Only 1 pending trademark filed in 2016, awaiting first review.
- The first trademark almost using the term registered in 1979 after 1 year (using “peni” for lab tests). It would not be until 2004 until an actual registration including the term “penis” is registered in class 03.
- 58 total trademark applications using the term.
- 14 are still alive today, 8 of which have achieved registration.
- 183 total trademark applications using the term.
- 43 are still alive today, only 5 of which have achieved registration...none using the actual term “shit”.
- All 39 pending applications were filed in 2016.
- 1st and only trademark registration is actually on the term is actually DEMSHITZ, filed 2009.
- The first registration was granted in 1990 after only 1 year.
- 145 total applications filed.
- 43 are still alive today, 32 of which have achieved registration.
- The earliest registration was granted in 1987 for cake (excluding foreign words)
- 87 total trademark applications using the term.
- 19 are still alive today, 14 of which have achieved registration.
- The earliest registration was granted in 2006 for plumbing services.
- 34 total trademark applications using the term.
- 11 are still alive today, 6 of which have achieved registration.
- The earliest registration was granted in 2005 for medical services.
- 52 total trademark applications using the term.
- 21 are still alive today, 17 of which have achieved registration.
- The first registration was granted in 1990 after only 1 year.
- 129 total applications filed.
- 43 are still alive today, 32 of which have achieved registration.
There are lots of things that cannot be protected through trademark.
A trademark is not merely a collection of words and/or pictures that represent you. It must uniquely, yet legally, identify your product or service. Whether shopping for wine, beef jerky, clothing, or cell phone service, any person on the street should be able to identify your product/service through your trademark: your distinctive collection of words and/or designs.
Like the Nike Swoosh immediately evokes images of athletic shoes and clothing, and McDonald’s golden arches conjure the smell of frying fries, seeing your trademark should immediately make your product/service come to your customer’s mind like an old friend that says “Hey, it’s me!”
So when you are deciding on your product/service or company name, keep in mind the following list of things generally not trademark-able:
1) Merely Descriptive Terms
Words such as incorporation and company, or words that describe your industry, cannot be trademarked. They can be included in the overall registration, but they are merely descriptive and give no strength to your overall trademark because everybody must be free to use them.
For example, in the trademark “Xeloshi Clothing Shop”, clothing
cannot be protected because it merely describes the services within the industry, and shop
likewise merely describes a retail venue where clothing can be found for purchase. Neither term make the name unique.
2) Flags and Insignias
You can’t use any nation’s flag, designs, or words protected by any nation’s law. You could not protect, for example, U.S. Dept. of Navy Clothing Company with an American flag on it.
3) Someone Else’s Legal Name or Picture
Trademarks for CHERE and SHER in 003 were rejected based on the singer’s name CHER in 041, even though the goods/services were in vastly different class codes, SHERE, however was registered. You might not be able to get the name for Ted’s Clothing Emporium unless you were Ted.
4) Someone Else’s Trademark
If you have a fan club for the #1 hit TV show of the season, you cannot refer to that trademarked TV show by name in your own trademark for fan club services. If you sell parts for Mercedes, you cannot use Mercedes in your trademark name or product description.
Sometimes even a dead trademark deemed to be still “famous” can be un-trademark-able.
5) Merely Ornamental Slogans or Designs
I see this primarily in the USA where the registration process requires the trademark owner to submit a “sample” of the trademark being used in commerce (very few countries require samples). Standard Scenario:
- You have a great slogan or design.
- You buy a blank t-shirt (keychain, tote bag, coffee mug, wine bottle) wholesale and print the slogan on them to resell.
- You want to protect your really cool slogan and file a trademark application in class 025 for clothing.
- Your application is rejected. Failure to function as a mark…merely ornamental. You are not the source of goods.
6) Dirty Words
You can’t register most bad words, though the definition of “scandalous and immoral” in USPTO’S eyes has changed over the years. Just for fun I did a search in TESS on the term “ass” which has been acceptable since 1971 but “shit” still is not as of June 2015. The details of this search are the subject of my next blog. I AM THE CAUSE OF THIS SHIT
trademark # 86403924
was rejected for BOTH bad words and
The revocation by USPTO of the Redskins trademark in USA for a football team, having recently been deemed offensive to Native American Indians, is presently the subject of heated court battles and clearly exemplifies this change in trademark morality.
7) Informational Material
Some trademark owners like to file their actual label (called Trade Dress). All the informative information that applies to the public domain (such as a nutritional labeling) is not trademark-able.
8) Cities In Which You Don’t Live
You cannot claim a geographical location that does not pertain to you. You cannot use New York in your trademark unless you are located in New York. A lot of people like to argue that their shop/soap is “in the style of”...Paris, for example, but this claim will not fly in many countries.
In some countries you can’t use a geographical indicator at all. I recently experienced a rejection to a South Korean application based on the use of U.S.A. in the logo, though the KIPO database does show registration of trademarks using a country in the name/logo, many of which are still live.
9) Domain Names
URL’s on empty sites are not trademark-able. You can trademark your domain name if it identifies your product or service. The information before and after the “.” dots does not need to be included. So unless your trademark is used routinely with the extension ( .com, .org, .tv, etc.), you do not need to include it in your application.
A retail store such as Walmart might use Walmart.com to differentiate its brick and mortar stores from its on-line stores. Walmart.com registered in 2012 #4180335.
As my business is strictly virtual, I considered marketing myself as “E-TrademarkUniverse.com”, and then requesting a pseudo mark of just “E-Trademark Universe”. However, I registered just “E-Trademark Universe”, and “www.E-TrademarkUniverse.com” is covered by default.
These are just a few broad examples, and the application of these rules/laws is very different in every country. Your trademark professional can help guide you.
Lack of uniqueness and distinctiveness makes a weak trademark.
There are many reasons why trademark owners might choose non-unique terms to represent their products or services. It’s a family name perhaps. It’s always been called “this”. Or even, the desire to look and/or sound like an already well-known brand !
The trademark office will stop many non-unique brands at the gate (at the first review), by issuing a rejection, such as one of these:
- Failure to Function as a Trademark
- Merely Descriptive
- Geographically (Mis)Descriptive
- Confusingly Similar (Likelihood of Confusion)
There are, however, ways of getting around some these rejections. Some of them can be registered if they have been in use for 5 years (or 3 or 7, depending on which country). Some can be registered as a weaker trademark on the Supplemental Register (B) rather than on the Principal Register (A).
Registration on the Supplemental Register still provides the following advantages:
- The trademark owner may use the registration symbol ®
- The registration is protected against registration of a confusingly similar mark
- The trademark owner may bring suit for infringement in federal court
- The registration may serve as the basis for a filing in a foreign (where applicable)
A weak trademark is still a trademark, and unless the trademark owner expects to actively and aggressively (expensively) defend their trademark from potential infringement, then most trademark owners will not feel any difference in the protection of their brand name from the Supplemental Register (B) versus Principal Register (A).
Should a trademark owner want a stronger protection, his/her trademarks are not doomed to live forever on the Supplemental Register (B). After X
years (X = the minimum legal requirement in that country…X = 5
in the USA), one strategy might be to re-file the application, based on X
years usage, and ask to be put on the Principal Register. STRATEGY TIP:
You should do this at the very beginning of the renewal period (or earlier)
Keep in mind, if you plan on growing, you should choose a name that will “sing” internationally…a name that can be part of your international expansion plan. Think about how your brand name will “play” in other countries…consistency is key in creating a strong worldwide famous trademark.
Yes. Some of them, in countries where is possible and feasible.
A trademark can reach the state of “dead” in a variety of ways:
- The registered trademark has been cancelled by a third party within the trademark system.
- The registered trademark was not renewed within the required time period.
- The pending trademark had activity not answered within the required time period, or loses its arguments against rejection.
In some cases, a Petition to the trademark office can be submitted, always with additional fees and often with increased risk, because your brand name is vulnerable when it bears the “dead” designation in the trademark office database.
Therefore, it is possible that a trademark showing a status of “dead” when you do the search, could still end up being “live” and registered only months (or years) later when your trademark application has its first review, which could cause your application problems. Of course it is impossible to know which trademark owner might take the additional step of filing a Petition, and which will not.
There is a more direct and useful use for dead trademarks, however, and that is to discern patterns at the trademark office.
Let’s take the term “realtor” in USA. A direct hit search brings up 135 “live” trademarks...about 30% of which are pending. Without going into each record individually, this tells us very little. However, just by changing the formula to show “dead” marks instead, 483 trademarks show up, most of them “dead” without achieving registration. This search tells us a great deal.
By looking at the office actions of only 3 recent rejections, one can easily see that there is a pattern by the trademark office to reject new filings with the term “realtor”. Further research shows that there is also a pattern of opposition filing (and winning), if indeed the trademark makes it past the first review.
I specifically use the USPTO as an example, because it is possible to see both office actions and oppositions filed. However, I use the strategy of searching dead trademarks whenever that information is available from the trademark office.
NOTE--I would like to mention the EU, where no first review rejection process exists, that the “dead” trademarks and oppositions filed against them, to be an essential part of well performed search.
In this difficult small business economy, many trademark owners pursue a strategy of proceeding straight to registration without doing a trademark search first, usually as a budgetary measure.
We certainly understand budgets, but omitting the search before registration is penny-wise and pound foolish, in the words of my mother.
It takes an experienced search strategist to search for all the variations that might cause rejection due to “Confusingly Similar” or “Likelihood of Confusion”.
- Rejection can be based on phonetic similarities which may be spelled entirely differently: VIA / VILLA / VIYAH / VEEAW / FIA / FEEYA
- Rejection can be based on translation similarities, using entirely different words/phrases: MANNER / WAY / MANERA / MANIERE / METHOD
- Rejection can be based on word similarities: STREET / BOULEVARD / AVENUE / LANE / PASS
- Rejection can be based on similarities in coordinated class codes, not only in the exact class code: FOOD ITEMS FALL INTO BOTH 029 / 030 with an additional 6-10 class codes which should be considered in the search as well
Many countries have a free, on-line, searchable database. These generally return direct hits only, essentially identical matches to the term and class code you enter. This an excellent place to start your search, but should not take the place of a professionally performed search.
For example, a search in USA on “realtor” returns over 100 “live” trademarks. On the surface that looks good, “realtor” is considered by most to be a generic term for a one who sells real estate.
However, the trademark search revealed facts never expected…file a trademark application which includes the term “realtor” in the USA, and you’ll most likely find that application facing opposition before it is 30 days old. This is the kind of fact which would be difficult to ascertain from the free on-line search by a layman, but would be readily apparent in a search performed by a professional. OTHER GOOD REASONS TO HAVE A PROFESSIONAL TRADEMARK SEARCH
- The trademark search can also provide good marketing information, such as similar (but not identical) brand names already out there, which might lead a trademark owner to consider modifying the name before launching an international sales campaign.
- Some country searches include common law matches as well; another good marketing tool. A brand can have common law rights even without formal trademark protection.
- A search can also, in some countries, provide additional insight on potential opposition. For example; some trademark owners aggressively use Trademark Watching to “police” their own trademarks and actively file oppositions. This information could be of use to the trademark owner when making a decision on whether “Likelihood of Confusion” exists. Few like to face the possibility of litigation (and litigation costs) when they have barely entered the marketplace.
- In some countries, reviewing dead trademarks, not only live trademarks, can provide insight on recent trademark office trends.
Excluding the trademark search performed by a professional is penny wise and pound foolish, and should not be omitted in an international expansion plan.