Federal Circuit’s COCKSUCKER Decision Sucks

December 20, 2012

cork soaker

As many long-time readers know, Section 2(a) of the Trademark Act is one of my pet peeves. This is the section of the Trademark Act that gives pretty much unfettered discretion to a trademark examiner to deny a trademark registration on the basis that the mark itself is “immoral” or “scandalous.” The Federal Circuit just decided In Re Fox, in which it reaffirmed some very bad law, and in which it lacked the integrity to address some Constitutional fictions upon which most 2(a) denials are based.

“[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it[] (a) [c]onsists of or comprises immoral, deceptive, or scandalous matter.” 15 U.S.C. § 1052.

One of the most absurd elements of a 2(a) denial is that the evidentiary standard is so open to abuse. An examiner may prove “immorality” or “scandalousness” by simply establishing that the mark is “vulgar.” In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003). Essentially, if the examiner finds a single online dictionary or chat board where someone says “that’s vulgar,” then that is usually enough for the examiner, the TTAB, and the Federal Circuit.

So, another 2(a) denial is just a “ho hum” event. But, this portion of the opinion shows just how little respect the Federal Circuit has for Constitutional issues. I mean, come on guys, at least try and make it look like you didn’t just mail it in.

The prohibition on “immoral . . . or scandalous” trademarks was first codified in the 1905 revision of the trademark laws, see Act of Feb. 20, 1905, Pub. L. No. 58- 84, § 5(a), 33 Stat. 724, 725. This court and its predeces- sor have long assumed that the prohibition “is not an attempt to legislate morality, but, rather, a judgment by the Congress that [scandalous] marks not occupy the time, services, and use of funds of the federal government.” In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994) (quotation marks omitted). Because a refusal to register a mark has no bearing on the applicant’s ability to use the mark, we have held that § 1052(a) does not implicate the First Amendment rights of trade- mark applicants. See id. (Op. at 2)

I find it outrageous not just because the court is wrong, but because the court was so glib and dismissive of the First Amendment.

Trademarks propose a commercial transaction; speech that proposes a commercial transaction is “commercial speech” and thus subject to First Amendment protection. Virginia State Bd. Of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748, 762 (1976). Trademarks convey messages about the type, cost and quality of the product or service associated with the mark. See Friedman v. Rogers, 440 U. S. 1, 11 (1979). The trademark is a tightly targeted bit of expressive activity that seeks to persuade a potential customer to choose one product over another, either due to the identification of goods or to the communicative element of the trademark itself.

Thus far, all USPTO decisions regarding the constitutionality of Section 2(A) rely upon the improperly decided case In re Robert L. McGinley, 660 F.2d 41 (Fed Cir. 1981).

McGinley is where we get the idea that since trademark applicants are still free to use the trademarks, then there is no abridgment of speech if your trademark is denied registration due to its content. However, this reasoning is simply shoddy and contrary to a 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.” Simon & Schuster v. New York State Crime Victims Bd., 502 U.S. 105, 115 (1991). In the Son of Sam case, the authors were still free to write, but were denied the financial benefits of their labors. That was the end of that law. This appears to completely dispense with the McGinley reasoning.

Bad Frog Brewery, Inc. v. New York States Liquor Authority, 134 F.3d 87 (2d Cir. 1998) analyzed a similar issue. In that case, the appellant sought to use a trademark of a frog giving the finger. 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. Not binding on the Fed. Cir., but I think that the Fed. Cir. is the wrong place to challenge McGinley. There is no indication that the Fed. Cir. will ever admit that it was wrong in McGinley, and every time it gets a chance, it doubles down.

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.”)

“Morality” is not a valid reason to confer or deny a governmental benefit – instead the government must articulate a reason why registration of a mark might be harmful, and then apply that reason to the particular circumstances at hand, in a narrow manner. The government has done none of this in this case, nor in any other 2(a) denial.

2(a) Delendum Est!


Pussy TTAB upholds pussy Examiner and says that Americans are too pussified to deal with “PUSSY”

May 15, 2009
The TTAB says you can't handle this.

The TTAB says you can't handle this.

Jonathan Shearer launched a new energy drink that he cheekily named PUSSY. When he applied for trademark registration for the logo shown above, the examining attorney denied registration under Section 2(a) of the trademark act — the section that allows examining attorneys and/or their supervisors to impose their personal morality on any trademark before them. See In re: Shearer (TTAB May 14, 2009) (not precedential)

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.”).

Lets see if Mr. Gibbons is right. In rejecting the mark under Section 2(a), the Examining Attorney wrote:

The applied-for mark PUSSY is slang for ‘female genitalia’ or reference to women sexually and is thus scandalous because such term is described as vulgar, offensive, taboo, obscene and coarse. (Op. at )

The Examining Attorney is clearly not all that bright, since he threw “obscene” in there. If anyone would like to educate him on the legal meaning of “obscenity,” perhaps a little remedial reading of a little known case called “Miller v. California” would be helpful. But, lets read some more of his justification.

… the continually evolving meaning of the term “pussy” has come to mean something more, (sic) than merely a cat, or a catkin, a pus wound, or even that of a weak and cowardly male. In today’s attitudes and mind set, the term “pussy” is used in a most offensive and vulgar manner. Specifically, the term “pussy” refers to female genitalia, desire for sexual intercourse with women and ultimately women as sexual objects.”

I don’t know, I think that any man who thinks that the term “pussy” is something that is “immoral and scandalous” would be a good definition for a fucking pussy too.

The Applicant countered:

“Applicant respectfully submits that its mark is not scandalous on the grounds that (1) the mark is not obscene under its ordinary meaning; (2) the general public does not perceive the mark to be scandalous; and (3) any ambiguity as to the meaning of the mark must be construed in favor of the Applicant.” Applicant’s Brief at 5. In this regard, Applicant argues that the Examining Attorney has failed to meet the burden of showing that the entire mark is scandalous and that the Examining Attorney has disregarded “… the numerous common meanings [of PUSSY] that are not scandalous or vulgar.” Id. at 7.

Applicant continues, “While it may be a slang term for female genitalia, this meaning clearly does not apply to Applicant’s all natural energy drinks, whether explicitly or implicitly. At best, the term is a double entendre that has been used for more over (sic) 100 years.” Id.

In his reply brief Applicant argues further that we must look at his mark in its entirety, stating, “Nothing about this design is suggestive of female genitalia.” (Op. at 7)

The TTAB clearly had its mind made up before examining the case. All three judges were appointed in 2005 and 2006 — the high water mark of the religious conservatives’ grip on power in Washington. You can rest assured that none of these three douchebags got where they are by respecting the constitution or due process, and why should they begin now.

A joyful little quote from the TTAB:

Section 2(a) may be difficult to define, we reject the notion that those boundaries are coextensive with the boundaries of permissible, that is, uncensored, artistic expression. Neither vaudeville nor South Park provide a useful guide for applying Section 2(a). (Op. at 21)

However, the TTAB has it precisely wrong here. If a highly-rated show like South Park does, indeed, use a term regularly, and even basic cable doesn’t censor it, that should be highly persuasive evidence that the American people can handle the word. Nevertheless, the nanny-staters decided that in modern-day America, we must endeavor to never offend anyone, lest their little hearts break into a million Jesus-shaped pieces. Even the double entendre, previously approved of in everything from James Bond movies to daytime television, is no longer acceptable to the TTAB.

We reject out of hand the argument that, in the context of beverages, including natural energy drinks, the public would view the term PUSSY as conveying a double meaning. This case is distinguishable from the Hershey case where the Board found a credible double entendre in the BIG PECKER mark based on the display of a chicken with a beak along with the BIG PECKER word mark in the specimen of record. In re Hershey, 6 USPQ2d at 1470, 1472 (TTAB 1988).

In this case Applicant posits that his PUSSY NATURAL ENERGY mark, when used on an energy drink, on the one hand would suggest either a cat, a weak or cowardly man or boy, a catkin of the pussy willow, or a pussy wound, and simultaneously on the other hand, might suggest PUSSY in the vulgar sense.

We do not find this proposition credible, nor has Applicant provided any support for the proposition. We see no double entendre in this context. We conclude so whether we view the term PUSSY alone or as part of Applicant’s full mark. Furthermore, there is nothing in the display of the mark or the additional wording, “natural energy” which affects the perception of the term PUSSY. Accordingly, we
reject Applicant’s double-entendre argument. (Op. at 22)

The Board then looked at the relevant marketplace and concluded that since the energy drink market is one that seeks to grab the consumer’s attention, that it should be held to a different standard than other products.

The Examining Attorney has provided additional evidence which not only confirms that the term PUSSY is vulgar, but evidence that the attention-grabbing meaning is the only reasonable meaning to conclude the relevant public would perceive in this context. An excerpt from factexpert.com discusses the highly competitive marketing of energy drinks, stating:

Energy drink packaging is more often flashy and bright than subtle and understated. The primary consumer group of energy drinks includes extreme sports enthusiasts, young adults and teenagers, and the hip-hop crowd. … Because this group is a group excited by speed, energy, flash and instant thrill, most energy drink packaging appeals to these tastes.

In this context, it is not reasonable to conclude that the relevant public will perceive PUSSY as referring to a cat, a weak or cowardly man or boy, a catkin of the pussy willow or a pussy wound. The offensive, vulgar meaning is the only one which makes sense in this context. (Op. at 24).

Finally, the Board concluded that a substantial composite of the public, “in particular women,” (as evidenced by the Examiner’s quotation of unsigned comments on a typepad blog) would find that PUSSY has a vulgar, offensive, sexual meaning.

Here is some poetry for the pussy Examiner and the pussy judges. By that, I use the definition of “pussy” that refers to those with little courage.


Who Are You Callin’ An A-Hole?

February 13, 2009

Oh the irony meter is just off the charts with this one.

JibJab media filed for a trademark registration for A-HOLE PATROL. Apparently JibJab uses the term to describe its “Online social club that screens jokes submitted by users to control offensive and inappropriate content.” From the JibJab website:

The A-Hole Patrol is JibJab’s volunteer community police force that is entrusted with helping keep the JibJab community safe from pornographers, hate mongers and extremists. The A-Hole Patrol (1) reviews new submissions to JibJab (2) investigates reports of abuse in the community and (3) re-reviews jokes that have been reported as offensive by JibJabbers. (source)

The examining attorney determined that A-HOLE is short for “asshole,” (rather than being its own word — which it is) and then rejected the trademark application as “immoral and scandalous.”

The examining attorney, relying upon several dictionary definitions and printouts of articles retrieved from the Internet, contends that because A-HOLE in applicant’s mark is a term for the word “asshole,” the mark is accordingly scandalous. Specifically, in support of her position, the examining attorney submitted the following definitions:

(1) asshole: Vulgar Slang.

1. The anus.
2. A thoroughly contemptible, detestable person.
3. The most miserable or undesirable place in a particular area.

(2) asshole:

1 usually vulgar: ANUS;
2a usually vulgar: a stupid, incompetent, or detestable person; b usually vulgar: the worst place — used in phrases like asshole of the world.

(3) asshole: Definition 1. (vulgar) the anus.
Definition 2. (slang) a contemptible or stupid person.
Definition 3. (slang) the worst part of a thing or place.

(4) asshole: Noun Vulgar 1. anus. 2. Slang. A. a stupid, mean or contemptible person. B. the worst part of a place or thing. Adjective 3. Slang. Stupid, mean, or contemptible.

Do you hear that sound? It is the IRONY ALARM going off its rocker! Because frankly, anyone who thinks that A-HOLE PATROL is too “immoral and scandalous” for the American public to handle is clearly a thoroughly contemptible and detestable person. And, the USPTO, for supporting such a victorian view of reality and such a dim view of the First Amendment is truly the most miserable part of a thing or place.

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.” See In re Mavety Media Group Ltd., 33 F.3d 1367, 1371 (Fed. Cir. 1994). Whether a term is scandalous 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.

I ask you, if you walked into your pastor and said “those ACLU people, they are just A-HOLES,” do you think even a Bible-belt pastor would blush? I think not. Nevertheless, the TTAB decided to side with the examiner.

Well, the contemptible and stupid win again. The morality police sided with the examiner and her supervisor — no doubt appointed by the same process that squeezed out Monica Goodling. We’re not even allowed to suggest or think “asshole” — of course, it is difficult to think of any other term when reading this opinion.

HT: TTABlog


“HEEB” is Disparaging — no Matter what you Jews Say!

December 16, 2008

John Welch on a recent 2(a) refusal of a trademark registration for HEEB. The Examining Attorney determined that it was a disparaging term for Jews, and of course, it can be. However, the applicant and applicant’s attorney happened to be Jewish, and were using the term as a term of empowerment. Although I love blogging on 2(a) issues, Obi Wan Welch’s post says it all. See Disparagement Refusal of “HEEB” for Clothing and Entertainment Services.


“Cocaine” Trademark for Soft Drinks Deemed “Immoral and Scandalous”

October 24, 2008
You can't handle seeing this

You can't handle seeing this

Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), bars the registration of trademarks that are deemed “immoral” or “scandalous.” For the past few years, the USPTO has been on a Section 2(a) rampage, and this decision is the latest step in the PTO’s quest to become the commercial morality police. See In re James T. Kirby, Serial No. 77006212 (Not Precedential).

Mr. Kirby and his company, Redux Beverages, started marketing the soft drink in 2006, and they were immediately descended upon by the Food and Drug Administration. The primary complaint was that “certain claims rendered the product an unapproved new drug.” (source) However, it appears that Redux worked their issues out with the FDA, only to run into trouble with the USPTO.

Redux sought trademark protection for its stylized logo, and the examining attorney determined that the mark was not registrable because:

“Cocaine is an illegal drug, with harsh penalties for its possession or use. Its use as a product name for energy drinks has been widely condemned.”

The TTAB agreed that the mark was, indeed, immoral and scandalous and affirmed the Examiner’s rejection. I have some issues with this decision, but I think that the blame belongs on both sides of the case.
Read the rest of this entry »


“Sex Rod” is “Immoral and Scandalous”

October 15, 2008

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.


New Yorkers in Red Sox Nation

July 7, 2008

This is what happens when you let a New York law firm represent the Boston Red Sox.

A Bostonian filed an Intent to Use application for the mark “RAD SEX.” (source). The Boston Red Sox filed an opposition on the grounds of likelihood of confusion, false connection, disparagement of the RED SOX mark, and (drum roll) because the mark is “immoral and scandalous.”

The applicant filed his answer, but the case is still in its infancy.

I’m rooting against the Red Sox — just this once. Not only do I hope that Red Sox Nation loses this dispute, but I’m pretty confident that they will. I can’t see how one entity could claim exclusive trademark rights in the four letters, RDSX. (Maybe if this were Hebrew or some other vowel-challenged language, but not in Tip O’Neil’s English). Perhaps if the applicant used a design with the same colors, or font, or something else that created some kind of mental association with the baseball team — or, if another baseball team wanted to be called the ROD SUX, then the Fenway favorites might have something to say. This just seems too tenuous of a connection for likelihood of confusion or false connection to attach. The 2(a) claim is frivolous, and I would like to see sanctions imposed against the idiot who thought to put that in the complaint.

Question: Of all the excellent law firms in Boston, the Red Sox had to go get some New York barneys to represent them? That’s freakin’ weak. No wonder they put a 2(a) claim in this complaint.

Hat Tip: TTABlog.


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