Wednesday, September 19, 2007

Marc Randazza on the TTAB's "YOU CUM LIKE A GIRL" 2(a) Affirmance

I asked Marc J. Randazza, trademark lawyer and professor, expert on First Amendment law, and publisher of The Legal Satyricon blog, to review and comment on the Board's recent decision in In re Cathy Lynn Carlson, Serial No. 78682282 (August 28, 2006) [not precedential]. His thoughts follow:

In the latest in a growing line of rejections of allegedly “immoral and scandalous” trademarks, the TTAB affirmed the PTO's refusal to register a clothing designer’s mark YOU CUM LIKE A GIRL for "clothing, namely, t-shirts, tank tops, lingerie, jackets, hats, pants, scarves, shoes and socks."

The Examining Attorney attached excerpts from pornographic websites where “cum” was used to refer to semen. Additionally, with the assistance of a dictionary, he concluded that the word “cum” is a “vulgar slang term meaning ‘semen ejaculated during orgasm,’” and therefore maintained that registration of the mark was prohibited under Section 2(a) of the Trademark Act.

On appeal, the Applicant was apparently inspired by the DYKES ON BIKES case, in which the PTO determined that the relevant community would not consider “dykes” to be disparaging. (See TTABlog postings here and here). Accordingly, she argued that the context in which she used the term was neither scandalous nor immoral because she used it as a term of female empowerment. She further contended that since the government should not be in the business of legislating morality, it should not be permitted to make the decision that “cum” is truly immoral or scandalous: that decision could be made by the public, through the opposition process.

The TTAB dismissed these arguments. Because the dictionary relied upon by the Examining Attorney described the word “cum” as “vulgar when used in connection with semen,” and because there was no evidence that the word was used anywhere but in connection with pornography, the PTO had met its burden of proving that YOU CUM LIKE A GIRL “comprises scandalous matter from the standpoint of a substantial (although not necessarily a majority) composite of the general public.

The Applicant also made the logical, but never successful, argument that there were many other “equally scandalous marks” that the Office had permitted to proceed to publication. In determining that this argument was “unavailing,” the Board noted that each application must be decided on its own merits and that prior registrations bind neither the Board nor other Examining Attorneys. The Board noted that that even if it were persuaded by prior registrations, the Applicant had not properly made them of record.


In Cohen v. California, 403 U.S. 25 (1971) Justice Harlan wrote:

[W]hile the particular four-letter word being litigated here is perhaps more distasteful than most others of its genre, it is nevertheless often true that one man’s vulgarity is another man’s lyric. Id. at 23.

This principle of governmental content neutrality appears to be out of fashion at the TTAB.

As a matter of biology, this case begins an illogical thread. The statement that “cum” only refers to male semen in the pornographic context is unsupported, to put it politely.

To further the illogical decision, the Board seems to have lowered the applicable standard for rejection under Section 2(a) by holding: “[t]o prove that the designation YOU CUM LIKE A GIRL is scandalous or immoral, the [USPTO] must demonstrate that, in essence, the mark is vulgar.

Under Section 2(a), to be considered “scandalous,” a 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.” See In re Mavety Media Group Ltd., 33 F.3d 1367, 1371 (Fed. Cir. 1994). Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, … and in the context of contemporary attitudes.” Id.

In the instant case, the Board relied on In re Boulevard Entertainment Inc., 334 F.3d 1336 (Fed. Cir. 2003), for the proposition that an examining attorney can point to a dictionary, and if a word in the mark is described by that dictionary as “vulgar,” then the examiner has met his burden. This ignores the actual holding in Boulevard, which explains that dictionary evidence is valid only when “the mark has only one pertinent meaning.” Id. at 1331. That seminal case also requires that the PTO must consider the mark in the context of “contemporary attitudes.” Here, the Board did no such thing.

As a general principle, Section 2(a) may pass constitutional muster, but if Applicant Carlson appeals, this TTAB’s decision should not. (Of course, given the thin evidentiary record, if the Applicant appeals, one would hope that she would seek review in a district court and not in the Federal Circuit).

Trademarks are First Amendment-protected commercial speech. See, e.g., Bad Frog Brewery, Inc. v. New York States Liquor Authority, 134 F.3d 87 (2d Cir. 1998). Accordingly, the government may not impose content-based penalties absent a proper showing that the penalty will further a substantial interest, and that the interest will be served by the restriction. The Federal Circuit has recognized that non-registration is a government-imposed penalty. In re California Innovations, Inc., 329 F.3d 1334, 1340 (Fed. Cir. 2003) (describing non-registration as the “penalty of non-registrability” and a “harsh consequence”).

In the case at bar, the USPTO imposed this penalty solely on the basis of the content of the Applicant's mark. No governmental interest was articulated, let alone a substantial one. This is clearly unconstitutional behavior.

In Bad Frog, the Second Circuit held that since trademarks are commercial speech, prohibition on use of so-called “offensive” trademarks did not advance the stated governmental purpose of protecting children from vulgarity. Even if it had, this likely would not have been a proper purpose. See, e.g., ACLU v. Gonzalez, 2007 U.S. Dist. LEXIS 20008 (E.D. Pa. 2007) (“[W]e do the minors of this country harm if First Amendment protections, which they will with age inherit fully, are chipped away in the name of their protection.”).

To justify state-sponsored censorship, the government must demonstrate that the harms it seeks to address are real and that its restriction will in fact alleviate them to a material degree.” Edenfield v. Fane, 507 U.S. 761, 770-71 (1993). In addition, such a restriction “may not be sustained if it provides only ineffective or remote support for the government's purpose.Greater New Orleans Broad. Ass’n. v. United States, 527 U.S. 173, 188 (1999). These mandates are “critical,” for otherwise “[the government] could with ease restrict commercial speech in the service of other objectives that could not themselves justify a burden on commercial expression.Rubin v. Coors Brewing Co., 514 U.S. 476, 487 (1995)

In the case of so-called immoral and scandalous trademarks, what is the governmental purpose in prohibiting their registration? Even if such a prohibition could be upheld, what governmental purpose was served by prohibiting registration of this particular mark?

The TTAB has, yet again, issued an opinion that is more "calling out for condemnation" than any reference to the results of sexual gratification. As argued by the Applicant, allowing the mark to be published for opposition would not have been the end of the road. The TTAB should have allowed the mark to proceed to publication, and thus allowed any member of this undefined "composite of the public" that found it offensive to oppose the mark’s registration. If such a standard is good enough for Buddhists, then why not for prudes? See In re Hines, 32 U.S.P.Q.2d 1376 (TTAB 1994) (publishing the mark “BUDDHA BEACHWEAR” for opposition, allowing members of the Buddhist religion to oppose the mark on the grounds that it was “imperative that the board be careful to avoid interposing its own judgment for that of Buddhists.”)

Falling victim to this puritanical and unconstitutional decision, the Applicant is now relegated to the “cheap seats” in the trademark stadium – mere common law trademark rights. Unless she successfully appeals, she will suffer a significant legal penalty solely because the mark contains the word “cum.”

It shouldn't take a cum laude law degree to figure that out.

Marc J. Randazza


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