Procter and Gamble wants to register “LOL”, “WTF”, and other millennial-friendly acronyms as trademark. The owner of consumer goods brands, such as Tide, Febreze, and Mr. Clean, made headlines on Thursday in connection with four applications it filed with the U.S. Patent and Trademark Office (“USPTO”) this spring. It turns out, the Cincinnati, Ohio-based giant wants to claim exclusive rights in “LOL”, which stands for Laughing Out Loud, “WTF”, aka What The F*ck, “NBD”, which means No Big Deal, and “FML” … F*ck My Life, for use on a number of products, including air fresheners, dishwashing detergents and soap.
The company is already facing pushback for the 4 trademarks, which it has not yet begun using, and it is not just on social media. In four separate Office Actions – which are letters sent by the USPTO to notify an applicant about issues with his/her trademark application, including the reason why registration is being refused or what requirements must be satisfied – the USPTO has preliminarily refused to grant trademark registrations to Procter & Gamble for the marks.
For the “FML” application, the USPTO points to two existing trademark registrations for “FML”, which were granted to a company called FMLSPHERE in 2016 and 2017. That company is using the “FML” trademark on what the USPTO has deemed are similar goods, including cosmetics, cleansers, moisturizers, and bronzer, noting that “the compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.”
Moreover, the trademark body held that P&G’s description of at least some of the goods that it plans to put the “FML” mark on are “overly broad and requires further specification.” The same goes for the applications for “WTF”, “NBD”, and “LOL”, which, according to the USPTO, also contain “indefinite and/or overly broad” language in terms of the goods and services that P&G lists on its applications.
P&G has six months from the dates of the Office Actions to respond to the USPTO and remedy these issues.
Interestingly, it appears that the USPTO is not taking issue with “WTF” and “FML,” which – in theory – could be categorized as “scandalous or immoral” marks. As you may recall, on the heels of the Supreme Court’s decision in Matal v. Tam – aka “The Slants” case – earlier this summer, Judge Kimberly Moore, writing for the Federal Circuit’s three-judge panel, stated, that “Fuct” is a registrable trademark.
While the term – which is the name of a Los Angeles-based streetwear brand – is the “past tense [version] of the verb ‘f*ck,’ a vulgar word, and is, in fact, scandalous,” Judge Moore wrote, it is registrable nonetheless. According to the Federal Circuit’s decision, “The First Amendment protects private expression, even private expression which is offensive to a substantial composite of the general public.” The panel further held that the USPTO, which refused to register Fuct as a trademark because of its scandalous nature, had failed to show (subject to strict scrutiny) why such a “content-based restriction on speech” was warranted.
The court ultimately stated that the Lanham Act’s scandalous-marks provision is “facially invalid” in accordance with the First Amendment, and Fuct founder Eric Brunetti walked with a win.
The status of that decision may soon be back on the table. Early this month, the USPTO suspended all currently pending trademark applications that contain “scandalous or vulgar” words, such as one filed by Russian feminist protest punk rock group Pussy Riot. It is currently considering whether or not to seek Supreme Court intervention in hopes of getting the high court to overturn the Federal Circuit’s invalidation of the ban on the registration of profane, sexual and otherwise objectionable trademarks.
U.S. Solicitor General Noel J. Francisco has asked the Supreme court for a second extension of the deadline to file appeal of the Federal Circuit’s decision. Following a request for extension last month, Francisco is seeking more time, claiming that another extension “is needed to permit further consultation with the Department of Commerce and the USPTO, as well as with other components within the Department of Justice.”
Both Brunetti’s registration and potential registration of P&G’s “WTF” and “FML” marks could be at risk.
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