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B. Other objectionable marks
1. Non-distinctive marks
In
the United States, a letter of the alphabet or a combination of two or three
letters which may or may not form a word, as well as a number or combination of
numbers, may function as a trademark provided that the designation is not
descriptive. However, in most countries outside of the United States, such
marks may not be protectable, without providing substantial evidence that the
mark has acquired distinctiveness through extensive use in the relevant country.
2.
Offensive marks
Certain
musical groups, in their overexuberance to be distinctive and shocking, fall
into the trap of adopting marks that may be objectionable because they are
deemed to be offensive. Although specific references are unnecessary, any
patron of modern musical groups may be familiar with band names that might be
regarded as offensive. Due to the United States Trademark Office’s
obligation under the Lanham Act to reject offensive marks, such marks are
difficult to register and to protect. Although common law rights in such names
may develop, courts may also be disinclined to offer protection even under
common law principles. The case is even worse in foreign countries, which tend
to have much stricter standards concerning offensive marks. For example, a
record label that has as part of its logo two reclining nude figures of the
opposite sex has been unregistrable as such in certain Arab countries, where
piracy is rampant, thus requiring the record company to modify their logo for
such countries.
3.
Marks with unintended meanings abroad
Difficulties
may be encountered when parties adopt seemingly innocuous trademarks that are
used in other countries where they take on new significance. Noteworthy
examples of such unsuccessful marks in the automotive industry included the
Renault FUEGO in Mexico, where the latter word connotes homosexuality; the
Daewoo ESPERO in Spain, where the latter word means “I wait”; the
Vauxhall NOVA in Spain, where the latter word means “no go”; and
the Citroen SAXO in Japan, where the latter word means "turd". An example in
the music industry might be NELLY, which in England is a derogatory word for an
effeminate man or homosexual.
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