Friday, January 03, 2014

Test Your TTAB Judge-Ability: Is "no $#!+" Scandalous for an Entertainment Website?

Nicholas Jones sought to register the mark no $#!+, in standard character form, for "entertainment services, namely, providing a web site featuring photographic, video and prose presentations featuring news, humor, and memes," but Examining Attorney David C. Reihner deemed the mark immoral or scandalous, and refused registration  under Section 2(a). Jones appealed, arguing that, although the word SHIT is vulgar, symbols used to replace that word are not themselves vulgar. How would you decide? In re Nicholas Jones, Serial No. 85855449 (December 13, 2013) [not precedential].

The examining attorney submitted dictionary evidence indicating that both the word SHIT and the phrase NO SHIT are considered vulgar, and he argued that that "the commercial impression of the designation [NO $#!+] is the same as the properly spelled designation NO SHIT … and [is] understood to be a vulgar and offensive expression ...."

There was no dispute that SHIT and NO SHIT are vulgar. Applicant Jones contended that the symbols are being used in place of an offensive word are not themselves vulgar, that a single Urban Dictionary excerpt regarding "$#!+" is not sufficient to establish that the mark is immoral or scandalous, that substitutes for vulgar terms are not themselves vulgar, and that the PTO has allowed a "similar arrangement" in a third-party registration.

The evidence showed that Internet "swear filters," which modify text to remove offensive words, look for symbols to block the word SHIT, including $HIT, $hl+, $hi+, and S#i+.

[W]e find that the public would clearly perceive the term NO SHIT, both in meaning and pronunciation, when presented with the proposed mark NO $#!+, in particular, the proposed mark NO $#!+, in particular, in connection with applicant’s services, which are specifically identified as being provided online through a website and the evidence shows use of such symbols to spell vulgar words online. This finding is further supported by the fact that the symbols used appear very similar to the letters, i.e., $ for S, # for H, ! for I and + for T or t. Here, there is no ambiguity in meaning when viewing the mark as a whole. Having found that the proposed mark NO $#!+ has the meaning and would be pronounced as NO SHIT, the refusal under Section 2(a) is appropriate.

The Board found this case to be similar to its nonprecedential decision finding "THE COMPLETE A**HOLE’S GUIDE TO ..." to be scandalous, and it distinguished its nonprecedential decisions reversing refusals to register BIG EFFEN GARAGE and BIG F’N GARAGE because here "the symbols spell out and look like the vulgar word and not an acceptable substitute."

Finally, the fact that the mark "$#!+ MY DAD SAYS" is registered provided no help to Jones. "Although consistent treatment under the Trademark Act is an administrative goal, the existence of third-party registrations that may be equally immoral or scandalous, or more immoral or scandalous, is not justification for the registration of another immoral or scandalous mark."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note: This application was filed on February 20, 2013, and Jones had a decision from the Board less than ten months later. Do you think this case qualifies as a WY#@?

Text Copyright John L. Welch 2014.


At 9:39 AM, Anonymous Anonymous said...

The Board needs to stop with this $#!+, NOW. While it's true that they are bound to 15 U.S.C. 1052(a), they have the ability to determine what is "scandalous", and it's not the 1950s anymore.

People have been offering meaningful goods and services under "vulgar" names for decades now with no public "scandal".

At 9:48 AM, Anonymous Anonymous said...

By the way, the argument that the government is not violating the First Amendment and "equal protection under the law" by declining to register these marks because "they can still use them" is flawed because in refusing registration they are denying all of the benefits of owning a U.S. Reg.

At 10:44 AM, Anonymous Anonymous said...

I think this just highlights that it's time to repeal or curtail the statutory restriction on immoral/scandalous marks.

At 11:12 AM, Anonymous Roberto Ledesma said...

Is "shit" really still scandalous/immoral? It's often not censored on television and commonplace to hear the word on basic cable. While some "dirty words" are "shocking to the sense of ... decency" - it seems we've become desensitized to the word "shit" and the FCC gets that - but the USPTO does not. This is a shitty decision.

At 12:37 PM, Anonymous Anonymous said...

Good grief, what's next? Will they forbid the use of "son of a biscuit" and "gosh darn" because these are words we substitute for more offensive ones?

At 12:59 PM, Anonymous Anne Gilson LaLonde said...

This result wasn't really that surprising -- the Board refused to register THE COMPLETE A**HOLE'S GUIDE TO . . . . in 2005 and A-HOLE PATROL in 2009, noting that the terms weren't really "cleaned up." But I think the applicant did have a (very) small chance of prevailing. The Board did allow registration of BIG EFFIN GARAGE and BIG F'N GARAGE IN 2010. Nevertheless, this seems more like A**HOLE'S GUIDE than BIG F'N GARAGE.

At 2:00 PM, Anonymous Anonymous said...

True, result is not surprising b/c the TTAB's position here is a joke and has been for a long time.

How can a word be scandalous/vulgar when it is used millions (billions?) of times a day in all manner of contexts, in art, literature, entertainment, news, etc.

Such a word is inherently acceptable in our society.

At 2:58 PM, Anonymous Anonymous said...

I find "$#!+ MY DAD SAYS" to be vulgar and scandalous. Someone should petition to cancel the registration. If the word SHIT were not vulgar, would film audiences roar with laughter each time a toddler says the word?

Prof David Perlsack

At 3:14 PM, Anonymous Anonymous said...

My problem with this decision is the approach the PTO and the Board take to justify inconsistency in examination and registration. This applies to disclaimers as well. The Board controls the shots (or the shit, as the case may be), leaving trademark owners and practitioners to guess what will pass muster. Why bother with Section 1052 at all?

At 3:16 PM, Anonymous Jesse Medina said...

Perhaps the considerations should be focused less on whether a mark is 'immoral or scandalous' and more on whether a mark is immoral or scandalous based on offering it will be used for. As adults, words such as "shit" do not have much of an impact on us. However, put into the mindset of a child, or a parent that wants to keep their children from hearing or seeing such language, there is some importance to refusing such marks. Maybe a mark should be considered "immoral or scandalous" if the offering it will be used for is targeted or can be targeted to audiences where it would be deemed inappropriate. Something like "no $#!+" should be allowed, as the target audience for their entertainment services is likely not for children. Something like, for example, "S#!+ Sacks" for a new brand of diapers should not be allowed registration, as they would be used for children and would most likely be seen by children, making it "immoral or scandalous".

At 3:28 PM, Anonymous Rob said...

The tyranny of political correctness and multiculturalism overrides any consideration having to do with trademark law.

This is a not a WYHA, but a WYAATWTTSC (wouldn't you appeal all the way to the supreme court?)

At 5:35 PM, Anonymous Anonymous said...

Gol Darn it! Stratagems such as $#!+, F**K and the like are coined and used precisely because they are considered NON-vulgar terms that can be used without giving offense in such mediums as newspapers and the like. Accordingly, the Board's position is tantamount to declaring feces itself to be vulgar, or at least anything that calls feces to mind. I suggest someone test this theory by applying to register OH FECES, INTERCOURSE YOU, or the like.

At 10:50 AM, Anonymous Anonymous said...

I find it interesting that former USPTO decisions are not given precedential value, even for registrations that are still active. The court discusses how "A**HOLE GUIDE TO..." was ineligible, but also how "$#!+ my dad says" was eligible. Clearly, there is some inconsistency and a lot of discretion for the decision-maker. Because the court sites many more instances where similar marks are denied, for consistency's sake, I believe this is the correct decision.

Almost anyone knows what is really meant by the mark. Perhaps "shit" is a much more relaxed word from what it used to be, and should no longer be considered immoral. But by pushing the line so that "shit" is outside of the immoral category, does not really make decisions like this any less arbitrary. The "N" word and the "C" word are used casually in movies and maybe late night television. Should those be given registrations? Should we care?

At 9:42 AM, Anonymous Anonymous said...

Would they find Shinola immoral or scandalous?

At 10:43 AM, Blogger John L. Welch said...

I can't tell.

At 10:24 AM, Blogger Don Mac Gregor said...

I guess the spice, BBQ sauce & dip maker from Texas named Special Shit couldn't register their mark.
I tried doing a search. Didn't see it.
Anyone else have any luck finding it?


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