Wednesday, September 24, 2008

Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

The Boston Red Sox were not amused when New Yorker and self-proclaimed "humorist" Brad Francis Sherman attempted to register the mark SEX ROD in the stylized form shown here, for 136 clothing items (including infantwear, baby bibs, and girdles). The TTAB also failed to appreciate the humor. The Board sustained the Club's opposition, finding that Sherman lacked a bona fide intent to use the mark, and further that the mark is both scandalous and disparaging under Section 2(a). However, the Board dismissed the Red Sox claims of likelihood of confusion and 2(a) false connection. Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, 88 USPQ2d 1581 (TTAB 2008) [precedential].

Lack of Bona Fide Intent: Applicant Sherman stated on discovery that he had no documentation to support his claimed intention to use the mark. This absence of documentation was sufficient, under Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), to shift the burden of proof to Sherman. He asserted that one can launch an "online apparel business" virtually overnight [using, for example, Cafe Press] and at almost no cost and without "forward planning." The Board found that testimony "simply not credible." Such testimony "detracts from, rather than supports, the bona fide nature of applicant's intention."

Scandalousness: Applicant Sherman contended that SEX ROD is a parody of the RED SOX stylized mark, comprising an "elegant and symmetrical transposition" of RED SOX, a subtle play on words that "enhances the humor." According to Sherman, "the elegance of the execution mitigates any perceived vulgarity of the resulting turn of phrase." In his view, the mark "represents the at once clever yet sophomoric sense of humor that prevails in those venues in which apparel bearing the SEX ROD Stylized mark would likely be worn, e.g., ballparks, sports bars, and university campuses."

The Board, however, noted that the marketplace includes all public places where clothing would be worn or purchased. Sherman's mark would convey "not a sexually suggestive connotation as applicant contends, but rather a sexually explicit message to the viewer." Use of the term on children's and infant clothing "makes the term particularly lurid and offensive." Whether Sherman intended the mark to be humorous, or whether some people would see it as humorous, is immaterial. A substantial portion of the public would see it as vulgar. [TTABlog note: For Marc Randazza's comments on this issue, see the blog posting here at his blog, The Legal Satyricon]

Disparagement: As to disparagement, the Board observed that the stylized RED SOX logo has been in use for more than 70 years and has received extensive public exposure in all forms of visual media. Indeed, Sherman admitted that this logo "is identified and associated with opposer." The Board concluded that "many consumers, and in particular Red Sox fans, upon seeing the mark displayed on a t-shirt or a jersey, will recognize it as referring to the Red Sox symbol." Sherman admitted that his mark is intended to refer to opposer, and that admission is "strong evidence that he will accomplish his purpose, and that the mark will be perceived by the public as referring to opposer."

The Board then found that Sherman's mark "would be viewed as a sexually vulgar version of the club's symbol and as making an offensive comment on or about the club." Sherman pointed out that the Red Sox were "popularly know[n] as 'Idiots' just three years ago due to the edgy image that they portrayed both on and off the field, often with the tacit consent of the Club." The Red Sox admitted that its players and fans referred to the team "affectionately" as the "idiots" and that the Club has used such suggestive phrases as "You Have RED SOX Envy" on t-shirts. But, the Board noted, there is a difference between "good-natured ribbing and applicant's crude, overtly sexual mark." Because his mark is offensive and its offensive message will be associated with the opposer, the mark is disparaging under the Statute.

[Fellow Massachusetts denizen Pam Chestek comments at her Property, intangible blog (here)].

Likelihood of Confusion: Despite the fame of the RED SOX mark, the presumed identity of trade channels and classes of consumers, the nature of many of the goods as "impulse purchase" items, and the visual similarity of the marks, the Board found the marks SEX ROD and RED SOX too different in sound and meaning to permit a finding of likely confusion. "The fact that ... Applicant's mark may evoke or bring to mind opposer's mark does not itself necessarily compel a finding of likelihood of confusion as to source." In fact, the vulgar and disparaging nature of Sherman's mark makes it less likely that confusion of source will occur: consumers are not likely to believe that the Red Sox have sponsored or approved Sherman's goods.

Section 2(a) False Association: For the same reasons that the Board found the marks dissimilar for Section 2(d) purposes, the Board concluded that Sherman's mark "is not a close approximation of opposer's identity." Again, given the disparaging nature of the mark, "the public would not believe that opposer, a famous and reputable organization, would be associated with a mark that disparages itself."

And so the Board sustained the opposition on three of the five pleaded grounds.

TTAB comment: As I've said before, the "lack of bona fide intent" attack is becoming increasingly important. Foreign trademark owners who rely on Section 44 and 66 should be particularly concerned about challenges to their applications and registrations on the ground that their required assertion of a bona fide intention to use their marks in commerce cannot be supported. For more discussion, see Section II of this article.

Text Copyright John L. Welch 2008.


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