18/05/2019
Scandalous Trademarks
Within many jurisdictions, a standardized regulation should be: That names consider immoral or scandalous are not trademark.
This affirmation should be without any doubt a straight answer, but as many situations within the legal frame, in reality is not.
Trademarks are private use in commerce, which main goal is to identify products or services within the market for the benefit of consumers.
When ruling, courts should take into consideration what is the definition of immoral, scandalous or public order, because it can vary; based on the customs and idiosyncrasies of the country, and that perception is also dynamic and evolve thru time.
In the US for example, this controversy raises another issue which is the freedom of speech. In Latin America a same word could have several meanings depending on the country, so strategies within the business models are mandatory.
Examples of trademarks that faced this situation are several, such as the NFL football team Red Skins, a Rock band called Slants, a rum called Contra – Bando (smuggling), a trademark application in several classes for Pablo Escobar brand, etc. The majority of those names were decline or deny, due to the perception of immoral or scandalous, but for some brands the trial was dismiss for several reason. In the US the dichotomy: customer impact - freedom of speech, based on the first amendment, was a key element in the Supreme Court ruling.
If you are trying to setup and standardize the potential outcome, there is no clear line of which types of names should be deny for trademark registration and which steps to follow to avoid it; because a possible strategy could be precisely the use of a disruptive trademarks, in order to excel from the competition within the trade; as the brand FUCT, which became a brand in the nineties but in 2011, the USPTO cancelled the registration allegedly because immoral issues.
A brand becomes part of the DNA of the business, there are many hours and money invested. With the preparation of the marketing mix is important to include a strategy to confirm the feasibility of the registration in the countries targeted and potential markets, in order to nail the positioning with a brand that will not be deny for trademark registration with the goal to reach top of mind within the consumer preferences.
In OFFICIUM LEX LAU ABOGADOS we have the expertise to guide you.
