Clancy PC, Intellectual Property Law, Paula Clancy, Trademarks, Canadian IP, @CanadianIP, IP
By Nitin Gomber
This article was originally published by The Lawyer's Daily (www.thelawyersdaily.ca), part of LexisNexis Canada Inc.
In Iancu v. Brunetti 139 S.Ct. 2294 (2019), the Supreme Court of the United States struck down the bar in Lanham Act 15 U.S.C. § 1051 to register immoral or scandalous marks. Since that decision, several marks containing the f word and its variations have been approved for registration by the United States Patent and Trademark Office.
Given the close trading ties between the US and Canada, it is only a matter of time before such brands seek protection in Canada. Therefore, this piece tries to identify verifiable trends and give suggestions on how such brands may successfully prosecute their trademark applications at the Canadian Intellectual Property Office (“CIPO”).
The relevant legislation in Canada
Canada’s Trademarks Act, R.S.C., 1985, c. T-13 contains a prohibition against registering marks that consist of or so nearly resembles a scandalous, obscene or immoral word or device.
In addition, the Trademarks Examination Manual provides that it is the duty of the Registrar to consider not only the general taste of the time but also the susceptibilities of persons, by no means few in number, who still may be regarded as old fashioned.
Therefore, the threshold in Canada for registering profanity as an element of a mark is much higher.
Trends at CIPO regarding mild profanity
The following is a list of marks that contain mild profanity, but were nonetheless approved for registration by CIPO: HOLY CRAP THE WORLD’S MOST AMAZING BREAKFAST CEREAL (Reg. No. TMA839232), MISS NUDE CANADA (Reg. No. TMA871013), FAT BASTARD (Reg. No. TMA660750), DOUBLE BASTARD (Reg. No. TMA904533), BULLSHIT (Reg. No. TMA228302; now expunged for failure to renew), NO FRIGGIN CLUE (Reg. No. TMA643831), FREAKIN’ GOOD (Reg. No. TMA1006734), DAMN GIRL! (Reg. No. TMA1092930).
The foregoing list of marks clearly shows that applicants in Canada who use or want to use mild profanity, such as “crap,” “nude,” “bastard,” “bullshit,” “friggin,” “freakin” or “damn” in their marks are at less of a risk of refusal to register.
Trends at CIPO regarding not-so-mild profanity
The following trends have been observed based on marks, which are either currently registered or were once approved for registration by CIPO:
1. Variation in visual representation only may not help, as long as the mark is a phonetic equivalent of a not-so-mild profanity
The marks (App. No. 1778974), as well as GOPHUQYERZELF (App. No. 0642281), were objected to by CIPO on the basis that they contained phonetic equivalents of the f word. Therefore, a simple variation in the visual representation of the mark may not be of much help, as long as the mark is a phonetic equivalent of the f word or another not-so-mild profanity.
2. Masking the not-so-mild profanity with socially acceptable substitutes may help
When three trademark applications for FUCK CANCER (App. No. 1453214), (App. No. 1472208), and (App. No. 1472201) were filed by a single applicant, CIPO only approved the last of the lot. On similar lines, the mark (Reg. No. TMA779766) proceeded to registration.
In contrast to the foregoing, however, the marks CAN’T F&!K IT UP! (App. No. 1769070) and LATHER THE F@#K UP (App. No. 1607632) were objected to by CIPO. The one way in which these marks are different from those in the above paragraph is that these marks have the first and the last alphabet of the f word spelled out so that the consumer has little or no confusion as to its pronunciation and meaning. On the other hand, the and marks, by only spelling out the first alphabet of the f word leave some room for the onlooker to come to their own conclusion about how to pronounce and/or understand the masked word. Therefore, the key to registration is not to make the f word or another not-so-mild profanity apparent and mask it in a way that onlookers have some leeway in pronouncing and/or understanding the mark.
In addition to masking the profanity with stars, dashes, and other devices, there may be another way to succeed: integrating the profanity with ordinary words to arrive at a fanciful mark. The approval of SHIP OUT OF LUCK (Reg. No. TMA1046661), CUMBRELLA (Reg. No. TMA 1870424) and SASSHOLE (App. No. 1895050) evidences this.
3. Providing evidence of pronunciation
The mark F.H.U.K. (App. No. 1036021) was also approved for registration by CIPO. While the examiner did raise an objection initially, citing the mark to be immoral/scandalous, they changed their mind after a response from the attorney of record. In the said response, it was submitted: (a) that the mark is not a word and therefore Section 9(1)(j) of the Trademarks Act does not apply, and (b) that the periods separating the alphabets F, H, U, and K are so distinctive that an onlooker is likely to perceive the mark as an acronym or abbreviation only.
Therefore, it appears that to increase the likelihood of registration of a mark, evidence of how a mark may be pronounced will help, even if the said mark would make the viewers think of the f word or another not-so-mild profanity nonetheless.
4. Well known slangs of profanity
The marks NO FRIGGIN CLUE (Reg. No. TMA643831) and FREAKIN’ GOOD (Reg. No. TMA1006734) were allowed to proceed to registration, whereas EFFIN BURGER (App. No. 1624144) was not.
For refusing the latter mark, the examining attorney cited the meaning of the word “effin” from the Urban Dictionary: “a way to say fucking so you won’t get in trouble.” The only problem with the foregoing analysis is that the words “Friggin” and “Freakin” are also defined in the Urban Dictionary in similar terms: “a way to say f*uk when your parents are around” and “to replace the word fucking when you are saying/writing it for a large audience, especially in a business setting,” respectively.
While it is not clear why CIPO drew the line where it drew, it is clear that it considers the use of the word “effin” too close to the f word, whereas it lets the words “friggin” and “freakin” slide by.
In conclusion, CIPO is more conservative in approving the f word and other profanity than the USPTO and therefore, our friends from the south will have to rely on the foregoing strategies to successfully prosecute their marks in Canada.
Clancy PC, Intellectual Property Law, Paula Clancy, Trademarks, IP