Friday, December 21, 2012

Anne Gilson LaLonde Weighs in on the CAFC's "CORK SOAKER" Decision

Anne Gilson LaLonde and Jerome Gilson provided an extensive review of the law governing Section 2(a) determinations of whether a mark is "immoral" or "scandalous," in their article, "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral," 101 Trademark Reporter 1476 (September-October 2011). Here, Anne provides her comments on the CAFC's decision in In re Fox.

First, Marc Randazza is right on with his constitutional criticism of Section 2(a) restrictions. He's in good company; several other commentators have found the courts to have not only glossed over this question but gotten it flat wrong. Enforcement of Section 2(a) abridges protected commercial speech by denying the benefits of federal trademark registration to marks on the basis of their content.

Courts and the Board simply will not come right out and say that they refuse to register distasteful marks because registration appears to give those unpleasant terms a governmental imprimatur. The Federal Circuit in In re Fox continues to insist that Section 2(a) prohibitions are "not an attempt to legislate morality" but rather the rejections are made so that these marks will not take up "the time, services, and use of funds of the federal government." Surely the initial rejection of the application and the cases before the TTAB and the Federal Circuit took up plenty of government resources, far more than issuing a certificate of registration and processing renewals.

More troubling than the present case are scandalousness denials of registration of marks such as COCAINE for soft drinks and energy drinks or W.B. WIFE BEATER for t-shirts or AL-QAEDA for t-shirts. Those marks may be repugnant or politically incorrect, but there is no real statutory basis for rejecting their registrations. The USPTO's definitions of "scandalous" come from a 1938 case, In re Riverbank Canning Co., 95 F.2d 327 (C.C.P.A. 1938), which urges the rejection of marks that are "disgraceful" or "offensive" or "disreputable." Do we really want the PTO to reject marks that are "disgraceful"?

Finally, while agreeing with the Court that COCK SUCKER is vulgar in any context, I have to point out the difficulty the PTO has in maintaining consistency in the "scandalous" grey area. For example, registrations exist for COCK RUB, PLAY IT LIKE A COCKSTAR and BIG COCK RANCH. The double entendre in COCK RUB – a spice to be applied to chicken before cooking – seems much like the double entendre present with COCK SUCKER as applied to a rooster-shaped chocolate lollipop. Notably, in footnote 3, the In re Fox opinion made clear that the court rejected the Board's intimation in an earlier case that the existence of a non-vulgar meaning in a double entendre could allow a mark to be registered. In re Hershey, 6 U.S.P.Q.2d 1470 (T.T.A.B. 1988) (allowing registration of BIG PECKER BRAND for t-shirts where specimens included birds with large beaks).


At 7:06 PM, Anonymous Patrick said...

cork soaker....that's funny!

At 4:51 PM, Anonymous Rob said...

I completely disagree with the constitutional argument. The CAFC did not restrict the use of the phrase, it just denied trademark rights (ie exclusivity of use) to the applicant. The entire body of trademark law is an exception to, not manifestation of, free speech. Trademark rights restrict the rights of others to use the same speech in certain contexts. Therefore, any expansion of trademark law would be at the expense of free speech. By refusing to grant trademark protection to a phrase, the public continues to benefit from a greater degree of freedom to use that phrase.


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