- Henry Park
How does an international audience view your mark?
I have to credit a Facebook post on a local group for highlighting this trademark issue. This month, a new restaurant opened in the Metalli Center in Zug, Switzerland. The restaurant is called The Butcher and it is a burger restaurant. So far, so good. The restaurant even has a slogan (see below photo). Yes. You read the slogan correctly -- the last word there is: F*CK. In the U.S., most businesses wouldn't use this word in their branding because of its sexual, vulgar meaning. So I though that perhaps in Switzerland this word doesn't have the same sexual, vulgar meaning as it does in the U.S. I asked several Swiss locals, and they were appalled by the use of this word in the slogan. I then checked the Swiss Federal Institute of Intellectual Property to see whether anyone had tried to register a trademark including this word. I found seven registrations. While most businesses in the U.S. wouldn't use this word, there also was a prohibition on registering federal trademarks that included immoral and scandalous matter. 15 U.S.C. 1052(a). However, it may soon be possible to obtain a federal trademark including such a word. In December 2015, the Court of Appeals for the Federal Circuit held that the law prohibiting trademarks from containing disparaging matter was unconstitutional. In rem Tam, 808 F.3d 132 (Fed. Cir. 2015). This decision is currently on appeal to the U.S. Supreme Court. The effects of the Tam case were quickly felt. The U.S. government in a letter brief on appeal of a decision to deny registration of the mark FUCT stated:
Although a court could draw constitutionally significant distinctions between these two parts of [the Lanham Act -- immoral and scandalous vs. disparaging], we do not believe, given the breadth of the court’s Tam decision and in view of the totality of the court’s reasoning there, that there is any longer a reasonable basis in this court’s law for treating them differently.
In re Brunetti, Case No. 15-01109, Dkt. 52 (Jan. 21, 2016) (hosted on Mega.nz). Thus, all these grounds for denying the registration of a federal trademark could be invalidated. Which brings me to the point of this post. If you plan on using your marks internationally, you should confirm that your marks are not offensive. See Nike flame logo which resembled the word Allah in Arabic script.
P.S. The story about the naming of the Chevrolet Nova not selling well in Latin American countries because Nova in Spanish means "no go" is a myth. See Snopes Urban Legend. P.P.S. On September 29, 2016, the U.S. Supreme Court announced that it had accepted the appeal of the In rem Tam case.