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22 August 2016Trademarks

WIPR survey: ‘Comfyballs’ TM not scandalous ‘unless you are 80 years old’

WIPR readers have reacted angrily that the term ‘Comfyballs’ has been approved for women’s products but not men’s.

On August 8, WIPR reported that Norway-based company Comfyballs had its trademark application for the term ‘Comfyballs’ accepted by the US Patent and Trademark Office (USPTO). The application, which only covers women’s underwear, was published for opposition in May.

The company had previously tried to trademark the same term in 2014 for men’s underwear, but its application was denied on the grounds that the word “balls” could only relate to male genitalia.

The statute regulating trademark law in the US is the Lanham Act. It forbids the registration of marks that consist of immoral or scandalous matter, or that disparage people, institutions, beliefs or national symbols.

Comfyballs’s underwear incorporates a design called PackageFront, which claims to increase comfort by “reducing heat transfer and restricting movement”.

In our latest survey, which asked whether the trademark should be available only for women’s products, 81% of readers were in agreement that it should not, ie, that the trademark should be accepted for men and women.

One said: “It should be accepted for both men and women. In today’s world the brand is not ‘vulgar’. The world has changed!”

Another said: “Some may find the mark funny rather than vulgar. That decision seems overly prudish. Furthermore, ironically, I wonder if ‘Comfyballs’ for women’s underwear doesn’t sound more vulgar than for men’s underwear.”

But one reader added: “According to the brand owner, the name was chosen because it is entirely descriptive of the product. As such, it should be rejected not because it is ‘vulgar’ but because it is entirely non-distinctive for the relevant product: men’s underwear.”

Another claimed: “The decision by the USPTO to allow registration of ‘Comfyballs’ for women’s underwear, but not for men’s, is completely idiotic. Either the term is ‘vulgar’ in this context, or it is not: a consumer of either gender is perfectly well-aware of what is being referenced, and why.”

It added that the company and its attorneys are, however, to be congratulated on a clever strategy to highlight the USPTO’s “utter confusion and inconsistency in applying the prohibition of registration of ’vulgar’ trademarks”.

Another commented: “It should be accepted for both men’s and women’s underwear. The USPTO is inconsistent in its application of the standard as to what is vulgar. It has approved for publication other ‘Balls’ formative marks in connection with underwear that is not limited by gender, including ‘Balls of steel’, ‘Ballsy’, and ‘Fuzzballs’, as well as ‘Snowballs’, which is registered for ‘men’s underwear to promote and encourage fertility’.”

“If these marks are not considered ‘vulgar’ when applied to underwear, I don’t see why ‘Comfyballs’ should be,” it added.

Another reader said: “The context in which it is being used is different since women have different anatomy than men.”

“It should have been allowed for both. The mark is not scandalous unless you are 80 years old. Let the marketplace speak by spending or not spending dollars on these products. The company will figure out if the mark is offensive,” another said.

One reader added: “It’s 2016. This is not ‘vulgar’. It’s suggestive and funny. While obscene and immoral brands should not be protected, the decision as to what falls within the ‘condemned’ zone should be made from the perspective of the ordinary purchaser of the goods with a current ‘eye’ from 2016.”

“The state should not be deciding on allocation of brand protection based on an archaic view of ‘vulgarity’. These shorts are not being sold to little old ladies,” it added.

Others highlighted the gender divide at issue.

“It should not be overlooked that feminine and masculine sensibility are different. Consequently, the ways of communicating and approaching each gender are different. Thus is hard to think that men might consider the use of the term vulgar,” said a reader.

One reader noted: “It should be accepted for both, because it seems to be a discrimination and violation for gender equality.”

Another added that the European Union Intellectual Property Office accepted the mark.

One reader said that “if it’s a vulgar term, it shouldn’t matter whether the underwear are worn by men or women. Personally, however, I think the vulgarity rejection is ridiculous. It’s a clever mark, period”.

One reader made light of the trademark.

“‘Comfyballs’ is not inherently vulgar ... Not for bras, at least.”

For this week’s survey, we ask: “Last week  WIPR reported that the US Supreme Court has been asked to hear the ‘dancing baby’ copyright case. The Ninth Circuit had ruled that senders of false DMCA notices could be excused if they subjectively believed the targeted material was infringing, no matter how unreasonable that belief. Does that ruling achieve an adequate balance between copyright and fair use?

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More on this story

Trademarks
11 December 2014   A Norwegian underwear brand called Comfyballs has been denied a trademark registration in the US—because the term is too vulgar.
Influential Women in IP
8 August 2016   An underwear brand called Comfyballs, which was initially denied a US trademark for its name because the term was “vulgar”, has now had an application accepted—but only if the product is used for women.