Different jurisdictions (i.e. countries) have different laws on protection of trademarks including adult language. A trademark on a term may be granted in one country, yet denied in another. We see that in a recent case where a Swiss appeals court affirmed a Federal Institute of Intellectual Property (IGE) decision denying trademark protection for the term, “MINDFUCK”. There, the mark was held unregisterable as considered contrary to morality, whereas in several other European countries, registrations had been granted.
Dr. Petra Bock, the appellant (the appealing party) is the author of the “Mindfuck” series of books. According to what appears to be her website, “Petra Bock turns her successful MINDFUCK® method to the urgent problem of work and shows us how to free ourselves from the spiral of negativity and find satisfaction in our professional life.” Bock was previously issued trademark protection in Germany, Austria, and Liechtenstein for the mark. She applied for protection in Switzerland, but on January 8, 2016, the intellectual property office of Switzerland – the IGE – refused to grant a trademark.
In response, on February 11, 2016, Bock filed an appeal at the Swiss Administrative Court. There, she essentially argued that the term, “FUCK”, is no longer just a term for sexual intercourse, but has a broader meaning that would not be intolerably sexually offensive as social mores have changed over time. The Court, however, did not agree with Bock’s reasoning. The Court did acknowledge that the moral standard had become more relaxed in recent times, but concluded that the primary meaning of the word, “FUCK”, continues to be vulgar, and therefore, unregisterable. The Court, in its written decision* (as translated) explained:
Against this background, the lower court’s view that “fuck” is perceived as sexually offensive and the concept is therefore appropriate to violate the moral feeling of at least a part of the public is not objectionable. The area of sexuality is still sensitive to human coexistence so that, despite liberalization in society, basic social norms which are connected with it can not be extinguished. However, “Mind Fuck” communicates a content that violates such social norms because “fuck” refers not only to intercourse but also acts because of the vulgarity of abhorrent manner coarse and obscene, regardless of whether this is accompanied by even a little “Pornographic Mechanical” or not. Thus, as in the judgment of the Federal Supreme Court in 1972 concerning “week-end sex”, the unlawfulness is not accepted only because the sign is to be interpreted as a reference to sexual acts (see the judgment of the BGer of 19 November 1972, PMMBl 1972 I, p 67 f.), but because due to the related “Mind Fuck” or “fuck” vulgarity character, even under existing today scale is suitable to excite sexual vulgarity and to violate the moral sense, at least conservative circles. Even the addition “Mind” is not able to eliminate this injury, but on the contrary, by the understanding “brainfuck” can even serve as an intensification or sexual intercourse at the intellectual level in the sense of the imagination. Moreover, it is sufficient for the exclusion of morality if the sign in one of several senses, which is not in the background, is sexual, and in this sense is capable of violating the moral feeling (see BGE 136, 474, E. 6.2 In connection with the religious meaning of “Madonna”). Moreover, it would be incompatible with the value scales of the legal and business ethics when a vulgar term for sexual intercourse would find entrance into a public register and thus would be promoted by the award of an exclusion law, the commercial exploitation.
Turning now to look at U.S. trademark law, Section 2(a) of the federal Trademark Act recites, in part, that a trademark may not be refused registration on account of its nature unless it includes:
1) “immoral, deceptive, or scandalous matter”, or
2) “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”.
The issue of whether disparaging marks may be registered is currently being evaluated by the U.S. Supreme Court in a case brought by the lead singer of the band, The Slants. A trademark application for “THE SLANTS” was denied by the U.S. Patent & Trademark Office (USPTO) as allegedly being disparaging. The issue of registering “disparaging” marks is related to, though not the same as, the issue of registration of “scandalous” and “immoral” marks. For more information on subject matter rejections of marks, including scandalous, immoral, and disparaging issues, please take a look at my full article on the subject here. The Supreme Court has heard the oral arguments, and we are all now waiting for the decision.
In the meantime, I did a search on the USPTO trademark search system for trademark registrations and applications that include the word “FUCK” (as of May 2, 2017). The search located 208 instances. Interestingly, of those instances, none including “FUCK” had been issued a registration. Some of them are pending applications, however, so, in fairness, they have not yet had the benefit of a final disposition. A screenshot of a portion of the first page of the search results are shown here:
Looking at the entirety of search results, the word “FUCK” appears to be a no-go zone, but the acronym, “WTF” (usually standing for “what the fuck”) has been allowed protection in combination with other words. In 2013, U.S. Trademark Registration No. 4,389,264 was granted for “WTFHAPPENED.COM” for a software as a service website, and U.S. Trademark Registration No. 4,332,574 for “WTFWORK?” was granted for online forums.
I didn’t go through all 208 applications/registrations, but several of the ones on which I did click had been denied based on being “immoral” or “scandalous”. For example, Application No. 86/205,950 for “SAPIOSEXUAL A MIND I’LD LIKE TO FUCK M.I.L.F” (like the Swiss case, including both the words “MIND” and “FUCK”) was rejected as allegedly being “scandalous”. The language of the rejection included, in part:
In this case, applicant seeks registration of SAPIOSEXUAL A MIND I’LD LIKE TO FUCK M.I.L.F. for various articles of clothing. The attached evidence from Collins Dictionary, Oxford Dictionary, and Dictionary.com shows that “M.I.L.F.” also means “Mom / Mother I’d Like to Fuck.” In addition, the definitions from Oxford Dictionary and Dictionary.com note that the acronym is considered vulgar. Similarly, “FUCK,” means to “have sex with.” In usage, however, it is defined as both “usually obscene,” “usually vulgar,” and “an offensive curse word used to express anger.” See the attached definitions from Merriam Webster, the Oxford Dictionary, Collins Dictionary, and YourDictionary.com. Moreover, when discussing the usage of “FUCK”, the Oxford Dictionary notes “the word fuck remains (and has been for centuries) one of the most taboo words in English.” Therefore, the wording SAPIOSEXUAL A MIND I’LD LIKE TO FUCK M.I.L.F. is scandalous because it contains both the acronym “M.I.L.F.” and “FUCK”, both of which are defined as vulgar terms in multiple dictionaries.
We, in the U.S., will be hearing from the highest court in the land sometime soon on subject matter rejections of trademarks. As for Bock, it will be interesting to see whether she will look to the Supreme Court of Switzerland to chime in on the matter in that jurisdiction. In the meantime, conflicting laws among various countries can create quite a “mindfuck” for applicants and the attorneys who represent them!
*Click here to read the full text of the Bock decision – You’ll need to run it through Google Translate since it’s in German.