From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 10 March 2015

"Are you sitting comfortably ...?" Norway's Comfyballs gets a rough ride in the US

"Comfyballs denied US trademark, asks public for help", reports marketing e-magazine The Drum, here.  The item, in relevant part, reads as follows:

"Comfyballs, a Norwegian underwear brand, has set up a poll asking the public if it is offended by the word 'ball's, to prove to the US Patent & Trademark Office (USPTO) that its name is not inappropriate. The move is in response to the USPTO’s denial of brand’s trademark request on the grounds that the “American public would find the name Comfyballs to be vulgar.” Founder of the brand, Anders Selvig, said ...: 
“In setting up this polling website, we hope we will be able to present to the USPTO evidence that their fear of a sense of vulgarity among the American people is unfounded".
The decision is presumably based on the Lanham Act's section 1052(a), which stipulates that registration must be refused to any mark that "consists of or comprises immoral, deceptive, or scandalous matter; ..."

Balls can be fun ...
For those who are feeling participative, the Comfyballs poll can be accessed here.  There are just two questions: the first is "Are balls immoral?" and the second is "Are you a citizen of the United States?" This Kat feels that, while the poll might be a fun-laden marketing exercise, it may be of little probative value in proceedings in the United States, and that a less fun but more pertinent question might have read along the lines of "Would you consider the use of the word Comfyballs, on or in relation to the goods for which registration of a trade mark is sought, to be immoral / offensive / scandalous ...?"  But this Kat's experience of US trade mark litigation is that of a distant spectator, so he is prepared to be corrected.

In the event that trade mark registration is unavailable in the United States, Comfyballs invites respondents to suggest an alternative brand name under which its undoubtedly comfy products may be sold in the Land of the Free.  A list of names proposed to date is appended, most of those names being (in this Kat's purely subjective opinion) as objectionable to the USPTO, if not more so, than Comfyballs itself.

Over in Europe, things may be a little different. For example:
  • it appears that the word COMFYBALLS, as depicted in the top right hand corner of this blog post, has already been registered by Tonic Brands AS for "clothing, footwear, headgear" in Class 25 [says Merpel, this shows either (i) the higher degree of tolerance shown by Europeans to the affectionate use of vulgar terms as brands or (ii) the wisdom of engaging examiners from 28 countries which, between them, share 24 official languages and who may miss the subtleties of vocabulary in a language other their mother tongue ...].

  • BOSOM BUDDIES has been registered as a UK trade mark for, inter alia, "fasteners for brassieres and decorated fasteners for brassieres" (Class 26), here, and is the domenant feature of a figurative mark for "aromatherapy breast products" in Class 3, here.

  • WILLY WARMER is on the UK register for a selection of items of Class 25 clothing, including socks but not what you might be thinking, here. The registered proprietor has also secured the plural version of the same mark here.
  • ... but hairballs are not

  • LOVE YOUR BUM is on the UK register for Class 16 products including toilet paper and "fluffy materials for household and hygienic purposes", here. Former tennis star Boris Becker's BUM BUM Community trade mark, for among other things the provision of restaurant and pub food and drink services, has however lapsed.
What does all of this teach us?  Not a great deal, this Kat feels, except what we already know, which is that some things offend some people on some occasions and that the fact that trade mark registration is unavailable doesn't prevent brand owners using, and consumers choosing, brands that make use of affectionately naughty terms.

Katpat to Chris Torrero for providing the link!

9 comments:

Roufousse T. Fairfly said...

Let's not forget a common guest star of this blog, "golden balls", which together with the Lindt bunny probably overtakes the EPO in frequency of appearance. ;-)

Ben said...

The Australians and South Africans seem to have more liberal approach. In South Africa FAT BASTARD was registered in class 33 and is used in relation to wine as a wine ‘term’ (and still is as far as I know). In Oz "Nucking Futs" was registered because "f**k" and "f**king" were held to now "part of the universal discourse of the ordinary Australian”

In the UK "Fook" was refused and in the US "Cock sucker" was refused registration for a chocolate rooster sweet - it comprised “immoral, deceptive, or scandalous matter” (despite being entirely accurate) and thus was unregisterable. Whilst Comfyballs's own poll currently says 232-7 that 'balls' are not immoral (as of 10.03.15) ..... I strongly suspect the US authorities may take a different approach

Anonymous said...

They could try registering comfyballs for ladie's underware first.

Michael Factor said...

We note that there is an Australian beer called XXXX, and there was a teeshirt for FCUK.

Frankie goes to Holiwood's song Relax was banned by Aunty Beeb.

As a branding exercise, Comfy Balls wins as they are succeeding in getting their brand known. Even if they can't register, you they will probably be able to claim passing off.

Hannibal said...

It's great to hear that the Baroness will come to the EPO next week.

Will she talk with the Staff Union? Staff representatives? Board of Appeal members? Or only with President Battistelli?

Anonymous said...

My personal favourite is CTM 2246403 which was accepted by OHIM on absolute grounds. Surely the meaning must have escaped the Examiner's attention. Sadly though the application was abandoned by non-payment of the registration fee.

Anonymous said...

Can't let this one pass without mentioning CTM 008719486 "Bawbags", for boxer shorts. The owner is based in Scotland...

Anonymous said...

I think the previous comment (27 April) may be spam, as it mainly consists of a paste from the article itself.

Jeremy said...

Thanks, Anonymous of 23:13. The previous comment wasn't spam per se, but an attempt to boost the poster's SEO ratings. Now deleted :-)

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