Fashion Law 101: The trademark troubles, trials, and tribulations in store for F**k Yeah Menswear

Posted by Charles Colman

"Fashion Law 101" is the not-very-creative tag LAW OF FASHION has given to posts that discuss basic principles of fashion law.  (See "Topics," directly to the right of this post.)  There haven't been many additions to LOF's "Fashion Law 101" database lately, because LOF tried to cover foundational topics in copyright and trademark law early on in the life of the blog... and also because, yes, this writer has another job.  However, a story on this morning presented the perfect opportunity for a risqué addition to the Fashion Law 101 vault.  As Racked reported, the successful stream-of-consciousness Tumblr Fuck Yeah Menswear has scored a book deal.

LAW OF FASHION congratulates the blog's owner, but LOF is also worried about his or her trademark rights.  (Longtime readers might recall that LOF has expressed concern about the intellectual property rights of people in the news before.)  Why, you might wonder, is LOF so anxious?

When this writer's firm, Charles Colman Law, PLLC, advises clients on choosing a brand name, the Lanham Act's "immoral . . . or scandalous" bar to trademark registration rarely plays a major role.  Maybe CCL's clients are an unusually moral and unscandalous bunch, or -- more likely -- these issues just don't arise that often.  Indeed, the courts have noted the "dearth" of case law concerning the "immorality" component of this bar to registration.  The prohibition on "scandalous" marks, however, does rear its ugly head occasionally, so it's wise to keep it in mind when deciding on the name of your brand.

As the Trademark Manual of Examining Procedure ("TMEP") explains, the predecessor of the current Court of Appeals for the Federal Circuit adopted the following dictionary definition of "scandalous": "shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation."  Courts have further interpreted the word "scandalous" to include proposed marks that are "vulgar," i.e., "lacking in taste, indelicate, [or] morally crude."  Thus, the statutory bar has prevented the federal registration of such racy trademarks as:

  • BLACK TAIL (for adult magazine featuring women of color)
  • DICK HEADS (where phrase appeared beneath caricature of a human head made to look like male genitalia)
  • 1-800-JACK-OFF (based solely on dictionary definition)

The following marks, by contrast, were not ultimately barred from registration because of immoral or scandalous subject matter (though the applicants in question did have to fight for their registrations, which can be expensive):

  • ACAPULCO GOLD (for suntan lotion, even though some might understand the term as a reference to marijuana)
  • WEEK-END SEX (for magazines whose content was not part of the evidentiary record)
  • BIG PECKER BRAND (when accompanied by the picture of a woodpecker, which, in the court's view, "ma[de] it less likely that purchasers would attribute any vulgar connotations to the work mark")

As for the good old F-word, a quick search in the U.S. Patent and Trademark Office's TESS database indicates that 68 applications to register marks that included the word "fuck" have been submitted to the USPTO -- none of which resulted in a registration.  Not great odds for Fuck Yeah Menswear.

Naturally, where the government puts itself in the position of making decisions about what is or isn't "scandalous," many people's internal First Amendment alarm goes off (as mine did here and here.)  While the Supreme Court has never squarely addressed the intersection of the First Amendment and trademark law's "immoral or scandalous" bar to registration, applicants' arguments about the unconstitutional abridgement of speech under the statute have been repeatedly rejected by the Federal Circuit and the Trademark Trial and Appeal Board, as the latter observed in a 2008 case called In re Heeb Media LLC.  (In that case, the U.S. Patent and Trademark Office refused to register "HEEB" in connection with apparel and entertainment services, due to the derogatory connotation that the term continues to carry for many Jewish people -- even if, as the court noted, younger Jews have reappropriated the term.  Heeb Media also illustrates the principle that the USPTO will refuse to register and/or will cancel registrations for marks that disparage identifiable groups of people -- the central issue in a seemingly never-ending court battle between a group of Native Americans and the Washington Redskins.  But LOF will circle back to discuss that subject in greater detail when some juicy piece of fashion law news makes it more topical.)

In short, if Fuck Yeah Menswear wants to register its mark (and it should want to, for various reasons), the outlook is grim.  And the title of its forthcoming book -- whatever it may be -- probably won't give FYM much firepower on the trademark front, either.  As LAW OF FASHION has noted before, titles of artistic works receive trademark protection only upon a showing of secondary meaning -- and only the most well-known works are likely to have accrued such meaning for consumers.

Of course, unlike in the copyright context, one can sue for the infringement of an unregistered trademark, subject to certain caveats LOF will have to address at a later date.  But legal complications aside, just as a matter of common sense, judges won't be especially inclined to grant relief to the owners of marks that they find morally objectionable.  The lesson: it's generally wise to start one's business off on the right foot by choosing a mark that isn't likely to offend anyone.

[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.  Any views expressed herein are those of the writer on the particular date of this post, and should not necessarily be attributed to his law firm or its clients.]