Norwegian underwear company, Comfyballs, recently had a trade mark application refused by the United States Patent and Trademark Office (USPTO) on the grounds that it is too “vulgar”. The application covered men’s underwear featuring “PackageFront Technology”, which Comfyballs says creates “ultimate comfort by reducing heat transfer and restricting movement”.
Under S1052(a) of the Lanham Act, any mark which comprises “immoral, deceptive or scandalous matter” shall be refused registration. According to the USPTO, when applying this provision to the present application, “used in this way, the word ‘balls’ has an offensive meaning”.
Calling to mind the Re Marsha Fox case (which concerned an application for “Cock Sucker” relating to rooster-shaped chocolate lollipops!), the USPTO and Federal Court held, after reviewing the dictionary definitions, that the word “balls” in relation to men’s underwear was indeed vulgar. Having regard to the marketplace, and notwithstanding the generic nature and widespread use of the term “balls”, the absence of any “double entendre” or “other idiomatic expression” resulted in an offensive meaning that prohibited registration of the mark. Interestingly, Comfyballs’ corresponding EU/Community trade mark application (now registered) did not generate the same reaction at OHIM who, it might be concluded, are less easily offended than their US counterparts.
In the age of social media, Comfyballs’ initial (non-legal) response has been to launch an online poll in an attempt to prove that a substantial proportion of the public do not find the mark vulgar – currently, just 336 of the 5,749 votes are in agreement with the USPTO decision (at the time of writing). To cast your vote, please click here.
Although the online poll is likely to have little (if any) influence on the eventual outcome of the ‘Comfyballs’ application, the free publicity surrounding the case has no doubt more than justified the USPTO filing fees!