Wednesday, August 21, 2013

Precedential No. 34: Findng "AWSHIT WORKS" to be Scandalous, TTAB Affirms Section 2(a) Refusal

Aw, shucks! Here we go again. The Board affirmed a Section 2(a) refusal to register the mark AWSHIT WORKS, in standard character form, for baseball caps and other clothing items, finding the mark to be scandalous. Dictionary definitions uniformly deemed the term "shit" to be vulgar or offensive. In addition, newspaper articles and other media evidence demonstrated that the word "shit" is considered offensive. And a recent Supreme Court opinion opted for the designation "s***" in place of the word "shit." Consequently, the Board had "no trouble" finding a violation of Section 2(a)'s ban on immoral or scandalous marks. In re Star Belly Stitcher, Inc., 107 U.S.P.Q.2d 2059 (TTAB 2013) [precedential].

The Board observed that the PTO may prove scandalousness by establishing that a mark is "vulgar." When it is clear from dictionary definitions alone that the mark is vulgar to a substantial composite of the public, the mark is unregistrable.

Here the evidence included a definitions of " aw shit" from the Urban Dictionary, an online slang dictionary whose definitions are submitted by visitors to the website. The Board recognized the inherent problems regarding the reliability of such a resource, but decided that it should be treated like the Wikipedia website: definitions will be accepted from the Urban Dictionary as long as the non-offering party has an opportunity to rebut the evidence. Here, Examining Attorney Linda Lavache submitted the Urban Dictionary definition at an early stage, and applicant failed to provide any alternative meanings of "aw shit."

Much of the media evidence related to former President George W. Bush's use of the word "shit" in an off-the-cuff remark. Many newspapers declined to print the word in full, and CBS bleeped the word from its newscast. Others stated that they would not normally print or broadcast the word, but did so in this case because it was said by the President.

In light of the evidence, the Board found that "aw shit" is an interjection that is scandalous or vulgar to the conscience of a substantial composite of the general public. The addition of the word WORKS to AWSHIT did not diminish the vulgarity of the mark.

Applicant contended that there are much more offensive trademarks already on the Register, listing five in its brief [I resist the temptation to call it a "s*** list" - ed.]. However, its list was both untimely and unaccompanied by copies of the registrations. Moreover, and most significantly, the Board is not bound by the actions of PTO Examining Attorneys in other cases.

The Board pointed out that applicant is not precluded by this decision from selling its merchandise under the proposed mark, "or from uttering the vulgar portion of its proposed mark upon its receipt of this decision." But as the CAFC stated in In re Fox, 105 USPQ2d 1247, 1252 (Fed. Cir. 2012), applicant "will be unable, however, to call upon the resources of the federal government in order to enforce [its] mark."

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 6:44 PM, Blogger Ronald said...

Actually, if applicant brings suit under 43(a) to enforce its mark, it may be able to utilize the federal government's resources.

At 6:47 PM, Blogger Ronald said...

Actually, the applicant will be able to use the resources of the federal government by bringing suit in federal court under Section 43(a).

At 4:17 PM, Anonymous Anonymous said...

Have to say I'm a little concerned about the determination re usage of "" I'm skeptical as to the tribunal's familiarity with that site. Wikipedia is one thing, occasionally you have a kid blanking out a page and writing "Dave Smith rules" or "Tigers can jump to the moon," but it's usually fairly obvious when those types of shenanigans are going on and they are quickly remedied in the vast majority of cases. In contrast, urbandictionary takes user submissions "as is" and the only modification is based on up or down votes from site visitors. I realize there is an opportunity for rebuttal but am not sure the site is all that reliable in the first place.


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