Randazza Returns: His Thoughts on the TTAB's "CUMBRELLA" Section 2(a) Reversal
Responding to popular demand, I called on Marc J. Randazza for his comments on the Board's recent decision overturning a Section 2(a) refusal of the mark CUMBRELLA for condoms. Marc is a trademark lawyer and professor, expert on First Amendment law, and publisher of The Legal Satyricon blog. His thoughts follow:
At first glance the TTAB appears to have developed a bit of multiple personality disorder with respect to whether “cum” is immoral or scandalous under Section 2(a). Just a few weeks ago, the TTAB determined that YOU CUM LIKE A GIRL was immoral and scandalous. See In re Carlson, Serial No. 78682282 (August 28, 2007) [not precedential] (TTABlogged here). In a seeming about face, a mere three weeks later, the same TTAB panel overturned the Examining Attorney’s 2(a) refusal to register CUMBRELLA. In re Gray, Serial No. 78622783 (September 17, 2007) [not precedential].
Applicant William R. Gray filed an Intent to Use (ITU) application for CUMBRELLA for, cleverly enough, condoms. The Examining Attorney, citing a dictionary that referred to "cum" as a vulgar term for "semen ejaculated during orgasm," rejected the mark under 15 U.S.C. §1052(a); TMEP §1203.01, or more informally "Section 2(a)," concluding:
"The applicant’s proposed mark CUMBRELLA is immoral and scandalous because it refers to the act of ejaculating semen during orgasm. In the context of the applicant’s goods, such a reference is certainly obvious and offensive to a substantial composite of the general public who are likely to view the mark as potential consumers. Registration must therefore be refused pursuant to Section 2(a) of the Trademark Act."
In his initial rejection of the mark, the Examiner recited the same old paragraph that appears to be cut and pasted into each and every 2(a) rejection, stating that the mark must be "shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable;…giving offense to the conscience or moral feelings; … [or] calling out for condemnation," in the context of the marketplace as applied to goods or services applied in the application. (Citations omitted).
In supporting his determination that CUMBRELLA fits this seemingly narrow standard, the Examining Attorney provided pages from an online dictionary that describe the word "cum" as "semen ejaculated during orgasm."
"The applicant’s proposed mark CUMBRELLA is immoral and scandalous because it refers to the act of ejaculating semen during orgasm. In the contact of the applicant's goods, such a reference is certainly obvious and offensive to a substantial composite of the general public who are likely to view the mark as potential consumers. Registration must therefore be refused pursuant to Section 2(a) of the Trademark Act."
The Examining Attorney, in an all-too-common display of limited and position-serving research, pointed to his dictionary reference describing "cum" as vulgar slang for "semen ejaculated during orgasm." (Note: apparently the American Heritage Dictionary is not familiar with the concept of the female orgasm). The Examining Attorney also provided multiple mainstream media sources demonstrating that the term "cum" means ejaculate or to ejaculate.
The Examining Attorney, in support of his determination that "cum" is considered to be immoral or scandalous by a substantial composite of the American public, also provided reams of adult-entertainment material. The purpose was to demonstrate that the term "cum" is used prevalently in the pornography industry.
Applicant Gray argued that "cum" is not immoral or scandalous, and he provided a number of mainstream media usages of the term and competing dictionary references that did not deem "cum" to be vulgar. He also profferred evidence of alternative definitions of the term "cum" that are equally applicable. For example, the Applicant noted that "cum" is used as a preposition meaning "with" and when used in combination with the term "umbrella," CUMBRELLA means "with protection" – a reasonable double entendre to use when describing a condom.
The TTAB recognized that one dictionary did refer to "cum" as "vulgar slang." However, the Board reviewed a collection of representative articles provided by the PTO to support its view that "cum" means "to ejaculate. " These articles all came from mainstream media sources - thus the Board determined that although the Examining Attorney may have defined the term correctly, its regular use in the mainstream media to describe an orgasm demonstrated that it was a generally-accepted term - not one that would shock or scandalize a substantial composite of the general public.
Applicant Gray also argued that the Examining Attorney's reliance upon sexually graphic photographs and websites displaying the fruits of male orgasms as evidence that the term "cum" can only mean ejaculated semen, was illogical. As a matter of fact, the Applicant argued, "[the] Applicant's products prevent the activity displayed in the photographs." The TTAB found this argument persuasive. While it was true that "cum" could be found on many adult-themed websites, the TTAB was not persuaded that this made the term automatically "immoral or scandalous."
"This fact alone is not sufficient to prove that the word ‘cum’ is vulgar. To find otherwise would be to hold that any term or thing used in association with pornography is vulgar (e.g. the words 'sperm' or 'ejaculate'). While the Examining Attorney has shown that the term ‘cum’ has been used in connection with sexually graphic activities, he has not established that the term itself is vulgar or offensive…[t]he evidentiary record regarding whether the term 'cum' is vulgar is far from compelling and ambiguous at best. Under similar circumstances, the federal circuit has advised the board to adopt the practice of resolving doubt in Section 2(a) cases in favor of the Applicant and passing the mark to publication."
And so, the Board reversed the refusal.
As noted in the introduction to this article, the TTAB appears to be suffering from multiple personality disorder. However, if one examines this case side-by-side with the YOU CUM LIKE A GIRL decision, they are at least somewhat reconcilable. In YOU CUM LIKE A GIRL, the Applicant offered very little competing evidence to refute the Examining Attorney’s determination that "cum" is immoral or scandalous. Although the TTAB could very easily have allowed that mark to pass to publication, it was apparently not prepared to do so. In the CUMBRELLA case, the TTAB would have been unable to sustain the refusal without doing some serious logical backflips. ere, Applicant Gray did a much better job of packing the evidentiary record with examples of the non-vulgar use of the term "cum." Conversely, the Examining Attorney provided evidence that ultimately helped to prove the Applicant’s point.
These two cases, reviewed in tandem, suggest that the TTAB is not likely to make it easy for "borderline" marks to proceed to publication, but the Board is prepared to correct the PTO when the 2(a) rejection appears to be based in little more than ideological zealotry.
I have some criticisms and some praise for the TTAB in this decision. My criticism is limited, therefore I will begin with it. The Examining corps and the TTAB seem to be fixated on reading Section 2(a) in a manner that is inconsistent with the actual statutory language. The TTAB supported the PTO’s stance that all an Examiner needs to prove to establish a prima facie case is that the proposed mark contains “vulgarity” and thus it is per se immoral or scandalous. I sincerely hope that later Board panels reverse this trend, or that an Applicant asks a District Court or the Federal Circuit to rein in this expansion of Section 2(a).
In the praise department, even though the TTAB applied this incorrectly low standard, the Board reaffirmed the fact that the mark must be considered in the context of the relevant marketplace for the goods and services noted in the application. Although the TTAB did not specifically rely upon this requirement, it did mention it. "In determining whether a particular designation is scandalous or immoral, we must consider the mark in the context with applicant's description of goods." (citing In re Mavety Media Group, Ltd., 33 F.3d 1367, 1371 (Fed Cir. 1994)).
Since the mark is to be applied to condoms, one can only stare in bewilderment at the Examining Attorney's determination that the condom-purchasing public would find reference to orgasms or "cum" to be immoral or scandalous.
As additional item worthy of praise, the TTAB should be congratulated for noting that although the term "cum" may be a sexual term, and although it may be associated with pornography, this is not sufficient grounds for deeming the mark itself is to be immoral or scandalous. Often, I have seen litigants and Examining Attorneys alike make this same mistake – reviewing the underlying goods or services, applying their personal morals to them, and then determining that the mark is scandalous. In this case, the TTAB got it right in holding that, in reviewing a refusal under Section 2(a), it is only the actual mark that is relevant, not the goods, nor even other goods that bear the term.