It’s Pronounced Foo Koo

In terms of intellectual property, trademarks are unique because there can be state based rights. This is not entirely counter-intuitive; unlike copyright and patents, which are constitutionally derived, trademarks are created and governed by fair trade laws. There are federal trade statutes as well as state-based consumer protection laws, so it’s not unusual that a state would extend intellectual property protection to businesses in its jurisdiction. Granted, federal rights are much broader and give better protection, but there are several reasons a business might choose to forego federal registration in lieu of state rights.

Each state has its own unique rules pertaining to trade names that are very close, if not identical, to the federal rules. It naturally follows, then, that an application for a Florida state trade name for a sushi restaurant is a pretty boring subject. Unless the applied for mark is “Fuku” and the application is rejected on the grounds that the mark is scandalous.

Chapter 495.021 (1)(a) of Title III of the Florida Statutes forbids registration of a mark that “comprises immoral, deceptive, or scandalous matter.” This is nearly identical to Section 2(a) of the Lanham Act, the federal statute forbidding the same. While there isn’t a lot of Florida state jurisprudence on the subject, the Trademark Manual of Examining Procedure (“TMEP”) and Federal courts have provided plenty of guidance where scandalous matter is concerned. Under In re Mavety Media Grp. Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994), a scandalous mark must be “shocking to the sense of truth, decency or propriety, disgraceful, offensive, disreputable, or giving offense to the conscience or moral feelings”.

As a general rule, profanity and curse words are next to impossible to register as trade names at both the state and federal level. This is allegedly what Mr. Paul Ardaji was attempting when he applied for a Florida trademark for his Asian restaurant “Fuku”. The Florida Department of Corporations rejected the application because it believed that FUKU is pronounced like a common phrase usually used to express extreme disdain or contempt. In Japanese however, “fuku” can mean several things, none of which are curses. Here, Mr. Ardaji’s stated use of the word “’fuku” in connection with his restaurant means “fortune” or “good luck”.

There are only a few federal applications and registrations for the mark “FUKU” and its variants in the United States Trademark Office. The allowance or denial of these applications appears to depend on context and the applicant’s intended meaning of the word, but double entendre is not lost on the Trademark Office. Not only can a pseudo mark be assigned, but rejections based on scandalous matter appear to be the norm, not the exception. For example, see application Serial Nos. 85305747 for “FUK U” for lingerie and swimwear (rejected as scandalous matter), 77793129 for FUKÚ for apparel (rejection requiring a translation suggesting “a curse of doom of some kind, if accurate”, application subsequently abandoned); 85248930 for “FUK U” for lingerie and sex toys (Pseudo mark assigned, Examiner maintaining refusal for scandalous matter after amended specimen to “FUKU”); and 79090395 for “I-FUK-U” (pronounced ee-foo-koo, rejection based on scandalous matter maintained because people would likely pronounce it the scandalous way).

But see Registration number 4101186 for “7-FUKU” on sewing machines which did not receive a scandalous matter rejection. The application includes the Kanji (Japanese characters) for FUKU as well as a translation for the word meaning “luck”. See also Registration No. 1184049 for FUKU BONSAI (abandoned for failure to file Sec. 8 Declaration). Thus, while it appears that a Trademark Examiner will take issue with the word at first blush, addressing such concerns and demonstrating a clearly non-scandalous use of the word could overcome a rejection based on scandalous matter.

It appears that if it is apparent that the applicant for a mark such as FUKU was intending the pronunciation to be that of the most popular curse in the English language, a rejection is likely and even merited. And, as the rejected federal applications demonstrate, it is usually pretty obvious when that is what is happening. This is clearly not the case with Mr. Ardaji’s mark. He has an Asian themed restaurant and is using a Japanese word in connection with that restaurant. Just because there may be an occasion where the word is pronounced incorrectly, this cannot be permitted to rise to the level of precluding registration. It is hard to argue that a word that translates into “good luck” can be shocking to the sense of truth, decency or propriety, even if there is the potential that it could be mispronounced.

Both Mavety and the TMEP §1203.01 provide that “[t]he meaning imparted by a mark must be determined in the context of the current attitudes of the day.” Is there an occasion where a person, upon seeing the mark FUKU, would immediately pronounce the u with a schwa sound and add an invisible umlaut over the second u? Maybe, but rejecting a mark as offensive simply because there might be some people somewhere who would mispronounce does not meet that standard.

Mr. Ardaji’s use of the Japanese word FUKU is simply not scandalous or obscene-Even if there is a subset of the population that would mistakenly believe it was. The Florida Department of Corporations got it wrong this time.