“Sex Rod” is “Immoral and Scandalous”

A New Yorker, (yeah, it figures) attempted to secure a registration (on an intent to use basis) for the trademark “Sex Rod” — stylized to parody the Boston Red Sox RED SOX mark. Given the similarity of the marks, the Boston Red Sox filed an opposition to the registration. The Sox alleged “that applicant’s mark, displayed in the particular stylized font, is intended and will be understood to refer to the Boston Red Sox Major League Baseball club.” (source at 3)

The Boston Red Sox' Well-Known Trademark

The Boston Red Sox' Well-Known Trademark

The Mark that the Applicant (unconvincingly) alleged he had an Intent to Use

The Mark that the Applicant (unconvincingly) alleged he had an Intent to Use

The Sox prevailed, but not for the reasons you might have predicted. John Welch at the TTABlog reports:

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. (source)

John does a fine job of discussing most of the issues, and a duplicative blog post would do little to increase the collective body of knowledge. So, if you want to read about the trademark issues, go read John’s post.

I agree that the Opposition should have been sustained for a lack of a bona fide intent to use the mark in commerce. That is without question, and the TTAB should have simply stopped there. Unfortunately, the panel decided to give us all a lesson on immorality. See Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (September 9, 2008) (source at 15-18). In all fairness, my beloved Boston Red Sox raised the issue in the first place. The Red Sox put forth “evidence” of the immorality and scandalousness of the term “Rod” by supplying the opinion of a single dictionary editor that the term was “vulgar” when used to refer to the penis. The Panel then took judicial notice that the New Oxford Dictionary agreed, and thus determined that since the mark was so likely to harm society, it should not be registered.

The significance of “rod” when preceded by the word “sex” denotes only one meaning. In the context of applicant’s goods, with the mark perhaps emblazoned across a t-shirt or some other item of apparel, and in the context of the marketplace, which would include all public places where the clothing would be worn or purchased, the mark would convey, not a sexually suggestive connotation as applicant contends, but rather a sexually explicit message to the viewer. We agree with opposer that the use of the term on children’s and infant clothing makes the term particularly lurid and offensive. (source at 17)

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.” In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (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.

Llewellyn Joseph Gibbons said it well in his article, Semiotics of the Scandalous and the Immoral and the Disparaging: Section 2(a) Trademark Law after Lawrence v. Texas, 9 MARQ. INTELL. PROP. L. REV. 187, 248 (2005) at n. 89 (“At best, this ‘substantial portion’ of the general public is a vacuous point on a nebulous continuum. One that is often chosen post-hoc to justify the decision-maker’s preconceived determination.”).

Thus far, all USPTO decisions regarding the constitutionality of Section 2(A) rely upon the improperly decided case of In re McGinley, 660 F.2d 481, 484 n.6, 211 USPQ 668, 672 n.6 (C.C.P.A. 1981), aff’g 206 USPQ 753 (TTAB 1979) (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and interpersonal relationship topics” and for “social club services,” held scandalous).

Even if McGinley were properly decided, it has been superseded by multiple cases that have calcified the previously more amorphous area of commercial speech law and the law surrounding the constitutionally of restrictive laws based on morality.

McGinley held that since trademark applicants were still free to use the trademarks, then there was no abridgment of speech. However, this reasoning is simply shoddy and unsupported by a vast body of First Amendment jurisprudence. For example, in striking down New York’s “Son of Sam” law, which prohibited criminals from profiting from writing books about their crimes, the Supreme Court held “[a] statute is presumptively inconsistent with the First Amendment if it imposes a financial burden on speakers because of the content of their speech.” The authors were still free to write, but were denied the financial benefits of their labors. This appears to completely dispense with the McGinley reasoning — but the TTAB doesn’t seem to have gotten that memo.

In Bad Frog Brewery, Inc. v. New York States Liquor Authority,134 F.3d 87 (2d Cir. 1998) the Second Circuit analyzed a similar issue. In that case, the appellant sought to use a trademark of a frog “giving the finger” to any and all passerby on bottles of liquor. 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 or promoting temperance, nor was it narrowly tailored to serve that purpose.

Finally, there can be no clearer authority for the death of Section 2(A) than Lawrence v. Texas. “The fact a State’s governing majority has traditionally viewed a particular practice as immoral is not a sufficient reason for upholding a law prohibiting the practice.”

Unfortunately, for the time being, it seems that the USPTO is governed by Victorian morality, and it intends to make sure that we don’t forget it.

9 Responses to “Sex Rod” is “Immoral and Scandalous”

  1. Anonymous says:

    I think the name is John Welch, not Jon Welch
    Regards,
    John Welch

  2. My bad! My beloved cousin is “Jon” … so when I think of a “John:” that I really like, I think of him. :) Wait… but my dad is “John” …

    Well, as someone who gets called “Mark” all the time… mea culpa. ;)

  3. Tara says:

    Love the addition of the poll! Great idea!

  4. Michael Hall says:

    Marc,

    I disagree with your comments about the TTAB not getting the constitutional memo and the USPTO being “governed by Victorian morality, and it intends to make sure that we don’t forget it.”

    First, whether the Board agrees or disagrees with your First Amendment analysis is irrelevant, because the Board simply “has no authority to determine, either generally or with respect to respondent, whether Section 2(a) is overbroad or vague, or to declare provisions of the Trademark Act unconstitutional.” Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705, 1710 (T.T.A.B. 1999), rev’d on other grounds, 68 U.S.P.Q.2d 1225 (D.D.C. 2003).

    Second, in 2003 the Federal Circuit expressly rejected a constitutional challenge to Section 2(a) and, citing McGinley and Mavety, stated, “We adhere to the reasoning set forth in those cases and reject [the applicant's] First Amendment challenge.” In re Boulevard Entertainment Inc., 67 U.S.P.Q.2d 1475, 1480 (Fed. Cir. 2003).

    Your beef is with the Federal Circuit, not the Board or the PTO.

  5. No, my beef is also with the TTAB for relying upon such shoddy “evidence” as a simple dictionary entry as “evidence” that the term is vulgar, then making the leap to a conclusion that the term is therefore “immoral and scandalous.”

    In City of Los Angeles v. Alameda Books, 535 U.S. 425 (2002), the U.S. Supreme Court held that
    if the government seeks to restrict First Amendment protected activity in order to combat compelling
    harms such as prostitution, crime, and lower property values, it may only do so if it reasonably relies upon competent evidence to do so.

    The Board has no authority to determine that 2(a) is unconstitutional, that is true. However, the Board does have the authority (and the obligation) to consider the First Amendment and whether evidence is actually persuasive in its application of Section 2(a).

    In all fairness to the Panel, it seems that the Applicant provided scant evidence of his own – and confronted with bad evidence on both sides, the TTAB simply relied on the lousy evidence that fit its preconceived notion. However, the Panel had no need to even rule on the 2(a) issue. Given that there was no bona-fide intent to use, the inquiry was over. This expansive (and Victorian) interpretation of 2(a) was neither necessary nor proper.

  6. Michael Hall says:

    I read your post to state that McGinley has been impliedly overruled by subsequent Supreme Court case law “but the TTAB doesn’t seem to have gotten that memo.” My point was that that memo can only go to the Federal Circuit, not the TTAB.

    As for evidence, in this case the Board had two dictionary definitions from reputable dictionaries (Random House and The New Oxford American Dictionary) indicating that the word “rod” is vulgar, and the applicant even admitted that SEX ROD “is intended to possess a sexual connotation.”

    In Boulevard Entertainment, the Federal Circuit explicitly held that “in a case in which the evidence shows that the mark has only one pertinent meaning, dictionary evidence alone can be sufficient to satisfy the PTO’s burden.” 67 U.S.P.Q.2d at 1478. Given the two dictionary definitions of record here, and the applicant’s admission, I guess I don’t share your view that the evidence was “shoddy.” I suppose we’ll just have to agree to disagree.

  7. Fair enough… your opinion is valid and welcomed, even if it is not shared.

    And, you’re right about Boulevard Entertainment. It does hold that. However, in that case, “JACK OFF” was held scandalous where all dictionary definitions were considered vulgar. See also In re Tinseltown, Inc., 212 USPQ 863 (TTAB 1981) (BULLSHIT held scandalous where all dictionary definitions of that term were considered vulgar).

    However, I think that it is shabby reasoning to say that just because a dictionary editor (or even *all* dictionary editors) think that a term is “vulgar,” then the term is automatically “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.”

    Furthermore, I think that the brush-off that the TTAB gives to the “trademarks as commercial speech” issue is unsupportable.

    I agree that the TTAB is never going to reverse course without getting the Fed. Cir. to force its hand. Trust me, I’m waiting for the opportunity to do so. :)

  8. Mark Kernes says:

    Hmmm… maybe someone in the porn industry should try to trademark the mark; it’d be hard to claim that an adult video producer had no intent to use it!

  9. True, but it would have to be someone willing to push the issue to an appeal after the TTAB once they rejected it on immoral and scandalous grounds.

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