That Four Letter Word Can Now Be a Trademark

Selecting the wrong trademark for your business can be a big and costly mistake.  For example, last January, the U.S. Supreme Court affirmed the federal court of appeals decision that struck down a longstanding federal statute prohibiting registration of any trademark consisting of, or comprising immoral or scandalous matter.

At issue was a mark that can best be described as the phonetic equivalent of misspelling of the “F” word.  Fundamental to the Court’s decision was its finding that the “immoral and scandalous” prohibition discriminated on the basis of “viewpoint” in violation of the First Amendment of the U.S. Constitution protecting freedom of speech.   Simply put, the Court held that the federal statute on its face “distinguished between two opposed sets of ideas — those aligned with conventional moral standards and those hostile to them,” in direct conflict with First Amendment.

The impact and effect of this ruling effectively opened the floodgates for federal registration of unsavory and offensive trademarks.  But do you really want consumers to recognize your business by this type of mark?  Maybe not.  While adopting controversial marks may seem exciting and trendy at first blush, over the long haul this may not be a prudent business decision.

The purpose and function of a trademark is to enable the consumer to identify your company as the source of its product or service.  A trademark therefore stands for the brand of a company’s product or service.  The value of a trademark is the ‘good will’ that is derived from consumer recognition and association of the trademark with the quality of the company’s goods or services sold under its mark.  Accordingly, while controversial marks may enjoy trendy popularity with a certain sector of consumers, such popularity ultimately may be transitory and fleeting.  Over time, it is highly likely that the allure and enticement of such marks is likely to wane, diminishing the value of the mark to the company.

This is just one example of the important and often complex trademark issues and decisions facing any company.  Being proactive is the best business practice.  Prior to spending time and resources adopting any trademark, it is essential to discuss this with an attorney with expertise and experience in trademark selection, development and protection.  The attorney can provide a comprehensive availability search and opinion for your company’s proposed trademark.  Assuming that the proposed trademark does not infringe on an existing trademark and is otherwise available to your company, the attorney will provide a game plan for moving forward which will include the procedures and costs of applying to register the trademark with the U.S. Patent and Trademark Office.

Andrew Zulieve has been practicing Intellectual Property Law for more than thirty years.  He is an experienced lawyer, sensitive and dedicated to his client’s needs. He understands that effective representation is achieved through a strict adherence to detail and thorough preparation combined with the highest standards of ethics and fairness.

This article is not legal advice but should be considered as general guidance.  You can contact us at 207.784.3200. Since 1853, Skelton Taintor & Abbott has provided a full range of high-quality legal services to the individuals, companies, and municipalities of Maine. The firm’s main office is located in Auburn and in January 2019, a mid-coast office was opened in Waldoboro.