Thursday, September 29, 2011

Precedential No. 25: TTAB Finds Raised Middle Finger Design for Bottle to be Scandalous or Immoral, Affirms 2(a) Refusal

The Board affirmed a Section 2(a) refusal to register the bottle design shown below, for various beverages, on the ground that the mark "would be regarded as vulgar by a substantial composite of the general public, and therefore the mark is scandalous or immoral." Applicant argued that, under contemporary attitudes, the "giving the finger" gesture is not scandalous or immoral if not directed at a particular individual or group. The Board was not persuaded. In re Luxuria, s.r.o., 100 USPQ2d 1146 (TTAB 2011) [precedential].

Before reaching the substantive issue, the Board pointed its collective finger at Applicant and its actions on this appeal. Applicant twice sought to have the case remanded to the Examining Attorney in order to submit certain additional evidence, but the Board refused to remand because the requests came late in the appeal (after briefs were filed) and because Applicant did not explain why it could not have found this evidence earlier.

Nonetheless, Applicant proceeded to attach that same evidence to its reply brief. The Board "was at a loss to understand why applicant would submit material in this manner, when the Board had previously denied its requests for remand," and it refused to accept the evidence and the reply brief (which discussed the attached material at length). The Board pointedly pointed out:

We cannot help but note the convergence between applicant’s actions toward the Board and the message conveyed by its mark.

Turning to the Section 2(a) issue, Applicant acknowledged that its design configuration represents what is commonly referred to as "giving the finger" or "giving the bird." [Some prefer "flipping the bird," I believe - ed.]. Examining Attorney Charisma Hampton submitted dictionary/reference material listings and Internet articles, and the Board took judicial notice of several dictionary definitions.

The foregoing evidence demonstrates that the gesture depicted in applicant’s mark is vulgar; in fact, the definitions quoted above characterize the gesture as "obscene."

Although dictionary definitions are alone enough to establish that a mark is scandalous to a substantial composite of the general public, here the evidence also included other definitions and articles.

Moreover, the identified goods are general consumer products that could appear in grocery stores and be viewed by parents shopping with their children. "[E]ven if some individuals might personally find bottles 'giving the finger' funny, many, if not all, of these individuals would not find it funny to expose their children to such a configuration."

As to Applicant's arguments, the Board probed record evidence and found it "sufficiently contemporaneous with the examination of the subject application that [it] reflect[s] contemporary viewpoints." Moreover, the limited evidence that some people view the gesture as funny was not sufficient to show that it is acceptable to the general public.

The Board rejected Applicant's attempt to distinguish this mark from a gesture aimed at a particular individual.

Not to put too fine a point on it, the gesture depicted by applicant’s mark is the visual equivalent of an extremely offensive expletive." Just as these words would be considered scandalous and immoral if used as a trademark, even if it was not clear to whom the insult was directed, the visual depiction of these words by the finger gesture shown in applicant’s mark is equally scandalous and immoral.

Finally, Applicant offered up a third-party application for the mark shown below, which application had been passed to publication without a Section 2(a) refusal. The Board noted, however, that an application is probative of nothing (other than the fact that it has been filed), and furthermore that application was withdrawn after it was opposed.

And so the Board ruled that the PTO had met its burden to show that the applied-for mark "comprises matter that would be regarded as vulgar by a substantial composite of the general public," and therefore it deemed the mark "scandalous or immoral" under Section 2(a).

TTABlog questions: Suppose this mark were used for proctological services? Then would it be scandalous? Merely descriptive? Does this case fall in the "WYHA?" category?

Text Copyright John L. Welch.


At 8:27 AM, Anonymous freiburger said...

This case certainly falls in the Would You Have Submitted That Evidence? category. Submitting that evidence with the reply brief after the Board twice refused to remand the case for that purpose was a horrible idea.

At 9:55 AM, Anonymous Rebecca Tushnet said...

What happened to Bad Frog? I just taught that case, and now I have to go correct the record!

At 3:35 PM, Anonymous Anne Gilson LaLonde said...

Even though the Board said in Bad Frog that raising the middle finger "may be acceptable" from humans, I think it's the realistic depiction of the gesture here that really put the Board off (not to mention the applicant's behavior). Also, it was easy to convince oneself that the frog wasn't really raising its middle finger.

This was a case where the applicant should never have bothered filing the application, frankly. The PTO has refused other "middle finger" marks that were more tame than this one.


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