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 See In re James T. Kirby, Serial No. 77006212 (Not Precedential).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.
The Applicant’s Procedural Bungles
The TTAB’s judges are not Article III judges. They are government employees, and are thus either appointed due to political orthodoxy or they know that their tenure won’t last long if they don’t toe the line – or at least pay the party line some deference. Accordingly, if you are trying to defend a mark that is under rejection for an immoral and scandalous rejection, you had better bring your “A game.”
Redux did not.
To support his position, the examining attorney, Michael Engel, submitted news articles quoting various drug-war crusaders condemning Redux’s brand name choice. This was not the strongest evidence, and even a weak effort should have been able to refute it.
Redux’s attorney submitted… let me look here… nothing As the TTAB wrote, “[a]pplicant has submitted no evidence to support its position that the mark is not immoral or scandalous.” Redux relied simply upon arguments of counsel, in lieu of submitting evidence. In part, Redux argued:
“the US Patent and Trademark Office has allowed registration of (or published for opposition) a variety of drug-related marks for use in conjunction with energy drinks, including EXTAZY, BLACK OPIUM, METH, BONG WATER, DIESEL, JUICE and KRONIK. All of these marks are named after illicit drugs or, in the case of BONG WATER, illicit paraphernalia.”
However, prior registrations are of limited value in these cases as the PTO and the TTAB generally look at each application on its own merits. Prior decisions of other examining attorneys are unpersuasive, as the TTAB does not wish for single examining attorneys to make decisions that could wind up being binding upon other examining attorneys.
Furthermore, the TTAB has a little rule that only a
flunkie government bureaucrat could love — even though the TTAB can easily verify the entire file for a prior registration by using the PTO’s own website, if you want the TTAB to consider a prior registration, you must print out that registration file and submit it as evidence. Although this is probably one of the dumbest rules ever, any trademark attorney knows it — if for no other reason than the fact that all trademark practitioners make fun of it and complain about it. Unfortunately, Redux did not get the memo.
The TTAB’s 2(a) Decision
The TTAB began by articulating the test for “immorality” in the context of trademark registrations.
[T]he PTO must demonstrate that the mark is “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 Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 CCPA 1938) (citations omitted). The PTO must consider the mark in the context of the marketplace as applied to only the goods described in [the] application for registration. In re McGinley, 660 F.2d 481, 485, 211 USPQ 668, 673 (CCPA 1981). Furthermore, whether the mark…, including innuendo, comprises scandalous matter is to be ascertained (1) from “the standpoint of not necessarily a majority, but a substantial composite of the general public,” id., 211 USPQ at 673, and (2) “in the context of contemporary attitudes,” In re Old Glory Condom Corp., 26 USPQ2d 1216, 1219 (TTAB 1993).
Although this seems to be a very high standard, in practice, it is applied like this: Would the mark bring a blush to the cheeks of the “church chat” lady? If so, then the mark is rejected.
Nevertheless, the TTAB did something worthy of mention — they applied the test in the context of the goods and services — not merely in a vacuum. Unfortunately, Redux bungled this too. Redux argued that the relevant marketplace was not the beverage-consuming public, but rather the energy drink-consuming public. This otherwise-meritorious argument flopped.
Applicant’s argument is undercut by his own failure to submit any evidence on the marketplace other than his counsel’s statement. Furthermore, the evidence of the examining attorney supports the conclusion that the marketplace for energy drinks is not as tolerant of clearly drug-related terms as applicant suggests.
The TTAB concluded that the relevant marketplace was the soft-drink purchasing public, and not the energy-drink purchasing public. Since “teens and children” buy these kinds of soft drinks, the influence on their little minds would be too much for
Bushistan America to bear.
The evidence shows that applicant’s website “suggests that the carbonated beverage should be mixed with alcohol – offering recipes for cocktails with names like Liquid Cocaine, Cocaine Smash, Cocaine Blast and Cocaine Snort.” http://www.nytimes.com. Applicant has promoted his product as “Speed in A Can,” “Liquid Cocaine” and “Cocaine – Instant Rush.” Because the product is an inexpensive “highly caffeinated soft drink” that can be purchased by teens and children and is advertised in a manner so as to suggest an illegal drug-like effect, it has a scandalous meaning when used in association with these goods.
Got that? The TTAB judges are not content to make decisions based upon trademark law, they are now the FTC, the FCC, and the partnership for a drug free America.
The TTAB’s inappropriate moralizing aside, the decision rests on some pretty foolish logic. The logic upon which the TTAB seems to have rested seems to be that since children might drink this stuff, calling it “Cocaine” is immoral and scandalous. Of course, any parent who lets their kids drink an energy drink should be sterilized (without anesthesia). Furthermore, refusing the registration doesn’t prevent Redux from using the mark — it just puts the government in the morality business. The USPTO should have approved this mark for publication so that any so-motivated anti-drug group could move to oppose.
Despite the abject stupidity of this decision, I can’t necessarily blame the TTAB for rendering its decision. As discussed above, the Applicant had ample opportunity to refute the examiner’s evidence. Their counsel was obviously unfamiliar with the particular land mines that await those who choose to litigate before the TTAB, and he unfortunately stepped on a couple of them.
HT: The great John Welch for bringing this case to my attention.