Friday, February 13, 2009

Finding "A-HOLE PATROL" Scandalous for Online Social Club Screening, TTAB Affirms 2(a) Refusal

Applicant JibJab found itself in a hole after the PTO's Section 2(a) refusal of A-HOLE PATROL for an "Online social club that screens jokes submitted by users to control offensive and inappropriate content." JibJab's effort at self-extrication through TTAB appeal yielded only the Board's agreement with Examining Attorney Gina Hayes that the mark is scandalous and therefore unregistrable. In re Jibjab Media, Inc., Serial No. 78951377 (February 4, 2009) [not precedential].

The PTO relied on dictionary definitions of "asshole" and "A-hole" [I won't bother to repeat them here, since you know them when you see them - ed.] to show that A-HOLE means asshole and is therefore scandalous.

JibJab pulled several arguments out of its arsenal, but none were successful. First, it agreed that "asshole" is not "appropriate as a trademark," butt it contended that A-HOLE is a more polite and "sanitized" substitute. Second, it asserted that A-HOLE has an alternate meaning as "a shorthand reference to 'analog hole.'" Third, it pointed to a third-party registration for the mark shown here (for calendars, decals, caps, and t-shirts), as well as to numerous third-party registration for marks containing the word "ass." And fourth, its Director of Operations averred that JibJab has never received a complaint about the mark during two years of use.

The Board observed that a showing that a mark is "vulgar" suffices to establish that it "consists of or comprises immoral ... or scandalous matter" within the meaning of Section 2(a). The mark must be considered in the context of the marketplace for the goods, and the determination must be made from the standpoint of a "substantial composite of the generic public (although not necessarily a majority) and "in the context of contemporary attitudes ... keeping in mind changes in social mores and sensitivities."

The Board perceptively concluded that JibJab uses A-HOLE as a slang term "to refer to a detestable person, and not an anatomical feature." The referenced single use of A-HOLE as shorthand for "analog hole" was unclear in meaning and unpersuasive, and in any case was irrelevant to the meaning of A-HOLE here. Thus this case is distinguishable from the BLACK TAIL decision [In re Mavety, 31 USPQ2d 1923 (Fed. Cir. 1994) [BLACK TAIL not scandalous for adult magazines], where the term at issue had both a vulgar and a non-vulgar meaning. [Can you state them? - ed.].

Moreover, the Board concluded that A-HOLE is not a sanitized term. It may be less vulgar than "asshole," the Board conceded, but that does not make it a "non-vulgar, non-scandalous term."

The third-party registration for the A HOLE design mark was cancelled, and therefore is not evidence of anything "except that it issued." Also, the highly stylized presentation "suggests that A HOLE as it appears therein may allow for a broader range of interpretation than the term A-HOLE as it appears in applicant's A-HOLE PATROL mark." [Any thoughts as to what those other interpretations might be? - ed.]. The "ass"-formative registrations were dismissed as irrelevant because the marks did not include the term ASSHOLE or A-HOLE.

Finally, as to JibJab's contention regarding the lack of complaints despite receipt of one million hits per day at its website, the Board "appreciated the irony that the services offered under applicant's A-HOLE PATROL mark are intended to control and excise from applicant's Internet humor site materials that are offensive ...." Nonetheless, the record and the law support a finding that "applicant's mark consists in part of a term that is considered vulgar by a substantial portion of the general public, not simply users of applicant's website." [One might argue that, paraphrasing Charles Dickens, if that's what the law says, then the law is a ass! - ed.].

TTABlog note: At least the Board is consistent: See its 2005 decision in In re Zaharoni, Serial No. 76351811 (January 4, 2005) [not citable] [affirming a Section 2(a) refusal of "THE COMPLETE A**HOLE'S GUIDE TO ..." for "series of books providing information relating to advice, counseling, self-help, and humor."] [TTABlogged here].

What about the following mark: the letter "A" in a circle? Would it pass Section 2(a) muster? What if it were followed by the word PATROL? Please discuss amongst yourselves.

TTABlog postscript: Marc Randazza, at his blog, The Legal Satyricon, takes a dim view of this decision (here).

Text Copyright John L. Welch 2009.


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