In a country where AC/DC’s can sing about their Big Balls, South Park can demonstrate Cock Magic to small children, and the Kardashians can act like Kardashians, it seems unfair that a Norwegian underwear company would be denied a U.S. trademark for its brand COMFY BALLS because the name is too “vulgar.” The Lanham Act, the federal trademark statute, does prohibit scandalous, vulgar or immoral matter, but the trademarks NICE BALLS and LOVE MY BALLS have recently both been approved. Even the trademark, BALLS OF STEEL, a trademark for various types of clothing, including underwear has passed the major hurdles for approval. So why is this trademark different and what can COMFY BALLS do to appeal the ruling?
According to the US Patent and Trademark Office (USPTO), “when used in this way, the word ‘balls’ has an offensive meaning.” The USPTO further claims; “the mark does not create a double-entendre or other idiomatic expression” and “in the context of the applicant’s goods … COMFY BALLS means only one thing — that a man’s testicles or ‘balls,’ will be comfortable in the applicant’s undergarments. In some ways, it is hard to deny that logic. Comfort is the point. COMFY BALLS has created an underwear design they call PackageFront, which the company says helps in “reducing heat transfer and restricting movement.” The question remains; why is the word balls offensive when stated in the context of men’s underwear?
Is a Trademark that Includes The Word “Balls” Really Offensive?
A trademark examiner cannot decide that a word or phrase is scandalous or vulgar based upon his or her personal sensibilities. A determination of vulgarity in a trademark must follow the guidelines laid out in the Trademark Manual of Examining Procedures (TMEP). Immoral or scandalous matter is defined as “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” Although the term “vulgar” is not mentioned, the courts have determined that “scandalous” encompass matter that is “vulgar,” which the courts have defined as “lacking in taste, indelicate, and morally crude.”
In order for the examiner to make a claim that a word or phrase is vulgar, he or she must show evidence seen in the light of certain criteria.
At a basic level, evidence required to support a claim of vulgarity requires no more than dictionary definitions, magazine or newspaper articles. If various dictionaries say a word is offensive, then that can be enough proof. In an illustrative case, Boulevard Entertainment applied for the trademark 1-800-JACK-OFF, for “entertainment in the nature of adult conversation by phone.” The Trademark Trials and Appeals Board, (TTAB) and later the Federal Court, upheld the examiner’s determination that the trademark consisted of scandalous matter. The record uniformly contained dictionary definitions all containing the same definition, with only one meaning, that “jack-off’ referred to masturbation, which the court determined as enough evidence.
In most cases though, mere dictionary definitions are not enough, especially if there are multiple meanings. A trademark examiner must also view the trademark in terms of its product or service. For example, DICK, a series of hand tools, is not vulgar because it is both a common nickname for Richard and that the product has nothing to do with something that people may consider taboo. If the trademark applied to a male blowup doll, it would probably have been refused. In another example, the USPTO approved the design trademark, COCK BRACELET, for jewelry and bracelets, which included sporting a logo of a rooster.LOVE MY BALLS is approved in the clothing class, but for hats, visors and t-shirts, not underwear, which perhaps made a difference. In the context of COMFY BALLS, the product is for underwear, allowing “balls” to be viewed in a vulgar light as opposed to the mark being used for ball shaped pillows.
As well, the trademark must be viewed in the context of contemporary attitudes and the relevant marketplace. TTAB stated clearly in approving a trademark for logo for the Old Glory Condom Corporation which showed a condom decorated with the American flag, “[I]t is imperative that fullest consideration be given to the moral values and conduct which contemporary society has deemed to be appropriate and acceptable.” A Federal circuit judge aptly stated, “today’s scandal can be tomorrow’s vogue.” So a trademark for a graphic design on t-shirts and polo shirts showing a dog defecating was held scandalous and vulgar. The decision was primarily due both to the logo’s content and the trademark registrant sold the product in retail stores where the general public could view them easily. On the other hand, a trademark for ACAPULCO GOLD, which refers to marijuana, was approved when used on a suntan lotion.Like the defecating dog, “balls” the possibility of the product finding its way into mainstream markets, may have given the examiner reason to reject the trademark.
Interestingly, a trademark examiner is not required to show that a majority of people would find a trademark scandalous or vulgar only that a substantial composite of the general public would be offended. A small, discrete group may find the mark offensive, but that is not enough to warrant a vulgarity determination.
Can the Company Overcome the Trademark Rejection?
With this rejection, COMFY BALLS has several options. First, they can still use the name in the United States, receiving a common law trademark rather than a federal trademark. However, the rights for a common law trademark are limited to a geographical area in which the product is sold. It is not national. COMFY BALLS will need to establish sales in every area of the country to create the same reach as a federally registered trademark. As well, common law rights require actual and continuous use the marketplace, whereas a federal trademark registration derived from a foreign trademark allows for a five-year window before a company is required to show proof that they have sold the product in United States. It could take the company quite a while to create a common law trademark with the geographic reach of a federal trademark. Even then, the company would not receive rights only available to holder of federal trademarks, including minimum statutory damages and attorneys fees in infringement litigation, receiving treble (triple) damages for willful infringement, or having the right to use the ® symbol.
Another option is to appeal the judgment to TTAB in an attempt to show that “balls” is not vulgar in the context of a substantial composite of the public in today’s society. Overcoming a rejection can be difficult, very often requiring a company to commission studies or focus groups to prove that the phrase is not considered vulgar amongst the general population. It is not unusual for cases like this one to cost $100,000 or more.
The one thing that the COMFY BALLS knows is that nobody else can get a federal trademark for that name in the United States. And they already have a trademark in Europe. However, they also cannot stop others from using their mark in geographic areas where they are not selling their product. Any litigation will be in State courts, not Federal, which can be very costly, especially if there are multiple litigations in multiple jurisdictions. Since most new companies do not have the funding to embark on tackling the U.S. market and appealing a trademark ruling, the company will probably have to live with the consequences of their name, at least until the product becomes so ubiquitous that the USPTO would no longer find the term vulgar.