Anne Gilson Lalonde: Scandalousness Refusal Affirmed for Chocolate Candy Trademark [Warning: Post Rated NC-17]
Anne Gilson Lalonde is my go-to person when it comes to Section 2(a) "immoral or scandalous" refusals. She and her father, Jerome Gilson, reviewed the law in this always-controversial area in their article in the latest issue of The Trademark Reporter: "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral," 101 Trademark Reporter 1476 (September-October 2011). [pdf here]. Anne accepted my invitation to discuss the TTAB's latest ruling on a Section 2(a) scandalousness refusal. Her comments follow:
Marsha Fox applied to register the mark COCK SUCKER and the design (above) for "chocolate suckers molded in the shape of a rooster." The Examining Attorney found the mark to be scandalous and immoral, and rejected registration under Section 2(a). The Board affirmed. In re Fox, Serial No. 76315793 (November 15, 2011) [not precedential].
This decision is an prime example of the many challenges facing the PTO in determining whether a trademark is scandalous and immoral. The PTO has been unable to make consistent determinations of what constitutes scandalous matter. The unrelated word mark GAMECOCK SUCKER for lollipops, Ser. No. 85054752, was published for opposition on November 23, 2010 and a statement of use was filed on November 18, 2011, just three days after the decision in In re Fox was issued. The sole office action required the applicant to disclaim the word SUCKER, with no mention of scandalousness or immorality. It would be extremely difficult to find any legitimate basis on which to distinguish these two marks.
When a mark has two meanings, the PTO may or may not find it to be scandalous. Slang references to sexual material will nearly always be considered scandalous. However, the Board may permit registration if such a mark has a double meaning. The issue here is, when does the more offensive meaning render the mark unregistrable?
The most infamous example of double meanings in 2(a) rejections is that of BIG PECKER BRAND for t-shirts. The Board surprisingly concluded that this word mark had an alternative, nonvulgar meaning because the specimen (shown below) included a bird with a large beak:
In re Hershey, 6 U.S.P.Q.2d 1470 (T.T.A.B. 1988). In that case, the Board concluded that "the inclusion of the bird design would make it less likely that purchasers would attribute any vulgar connotation to the word mark." It also held that the evidence was "at best marginal to demonstrate that the mark is a vulgar, slang reference to male genitalia and would be recognized as such a reference by a substantial composite of the general public." In In re Fox, the Board distinguished Hershey by saying that "the evidence supports the fact that the term COCK SUCKER is vulgar."
The PTO has made several other apparently inconsistent determinations in this context. It has allowed registration of the following mark for "hunting preserves where people can hunt for pheasants":
The office action for that registration did not invoke the concept of scandalousness, though it did require the applicant to disclaim COCK RANCH. The word mark COCK RUB for spice rubs did receive a 2(a) refusal. The applicant's response, however, overcame that refusal, possibly with its argument that "the use of the term RUB to identify spice rubs automatically makes the consumer believe that the mark is identifying a type of food and not a sexual act." Ser. No. 85050620 (notice of publication issued May 24, 2011). And the following mark is currently registered for clothing:
Assuming that the offensive definition is the primary definition of the mark, it is difficult (perhaps impossible) to determine what point on the sliding scale of vulgarity causes a mark to be scandalous. The Board states in Fox that "the word 'vulgar' captures the essence of the prohibition against registration." Presumably, then, the term "cock sucker" is more vulgar than "big pecker," "big cock," "cock rub" or "tits." But how can the PTO possibly make such a subjective determination? Certainly the mark at issue in Fox is vulgar, but so are these others. A comparison of the determination in Fox to others the PTO has made highlights the troubling inconsistency and subjectivity in this particular area.
TTABlog note: a Notice of Appeal to the CAFC was filed on January 10, 2012.
Text Copyright 2011.