Photo: www.comfyballs.no
A Norwegian company has been trying since 2013 to register its trademark COMFYBALLS in the United States for men's underwear, which has the advantage of keeping the sensitive parts of these gentlemen cool.
While the distinctiveness of such a mark could be questioned first and foremost (indeed, the terms used speak for themselves and describe the main characteristic of the product well, which in itself could justify a refusal of registration), the American examiner chose to justify his refusal on the grounds of the "vulgarity" of the mark. In this case, he invoked the dictionary definition for the term "balls", which refers directly, in American colloquial language, to the male genitalia. U.S. law prohibits the registration of "immoral or scandalous" marks.
Faced with such a qualification of its brand, the Norwegian company appealed, in particular by producing a survey carried out on its site, entitled "are balls immoral? ». It turns out that the users of the site answered in the negative, of course, which was not enough to convince the American examiner, who considers that these people do not form a sufficiently representative public, in particular because they are already consumers of these products. Even more amusing, the defendant invokes 3 earlier American marks to which the vulgarity argument was not opposed: NICE BALLS (abandoned before its registration), OLD MAN'S BALLS and HAIRY BALLS. With what one might perceive as a suspicion of bad faith, the examiner sweeps these marks aside, explaining very seriously that they have a double meaning, one of which would really refer to balls (OLD MAN'S BALLS is a mark for a candle more or less in the shape of a baseball, and HAIRY BALLS is a mobile application mark for playing with round shapes).
As a result of these successive rejections, the Norwegian company was obliged to abandon its depot. It nevertheless obtained the registration of its trademark COMFYBALLS to designate women's underwear (after all, women don't have any, "balls"), which revived the controversy.
Her battle across the Atlantic is probably not over, especially since she has obtained without any difficulty the registration of her trademark in Europe, which was officially launched in the United Kingdom last month. We wish her every success!
Source: WIPR