CAFC finds "Cock Sucker" mark to have vulgar meaning
In the case In re Marsha Fox , the Court of Appeals for the Federal Circuit addressed the trademark registerability of "Cock Sucker", to designate a lollipop, but with an obvious other meaning.
Of background law:
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 govern- ment.” 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 appli- cant’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.
More concisely, and especially usefully in the context of this case, the PTO may prove scandalousness by establishing that a mark is “vulgar.” In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003). This demonstration must be made “in the context of contemporary attitudes,” “in the context of the marketplace as applied to only the goods described in [the] application,” and “from the standpoint of not necessarily a majority, but a substantial composite of the general public.” Mavety, 33 F.3d at 1371 (quotation marks omitted).
Of details:
In August 2009, the examiner responded, noting that “COCK is defined . . . as ‘penis,’ and SUCKER as, ‘one that sucks,’” and that both words are considered vulgar “as used in context.” J.A. 121 (emphasis in original). Conced- ing that this vulgar meaning is not the primary meaning of “cock,” the examiner asserted that “taking COCK in context with SUCKER, the primary meaning of this wording as a whole is ‘one who sucks a penis,’” and that “the strong and commonly known meaning of COCKSUCKER in the general public” ensures that the two component words, when used together, will “un- equivocal[ly]” assume their vulgar meanings. J.A. 122. The examiner continued the refusal, however, to allow Fox to respond to several questions.
The Board had denied registration:
The Board concluded that “the evidence supports the fact that the term COCK SUCKER is vulgar and, therefore, is precluded from registration under [§ 1052(a)].” J.A. 8.
As to burdens-->
“The determination that a mark comprises scandalous matter is a conclusion of law based upon underlying factual inquiries.” Mavety, 33 F.3d at 1371. Factual findings of the Board are reviewed for the presence of substantial evidence, In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003), while its ultimate conclusion as to registrability is reviewed de novo. Mavety, 33 F.3d at 1371. The burden of proving that the proposed mark is unregistrable under 15 U.S.C. § 1052(a) rests on the PTO. Id.
Of sound
Fox urges, however, that “[i]n the present case, the space between the words makes all the difference.” Reply Br. 10. How- ever, Fox concedes that a mark’s “sound” is central to its “commercial impression” for purposes of §1052. See Appellant’s Br. 32 (citing Palm Bay Imps. v. Veuve Clic- quot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005)). Fox, moreover, has admitted that her mark at least in part has a vulgar meaning. She acknowledged that “the . . . humor of the mark is derived” from “[the] possibility of [a] double entendre,” consisting of a vulgar and a non-vulgar meaning. See J.A. 181; see also Appellant’s Br. 25 n.1. At oral argument, she con- ceded that her mark, if used to sell sweaters, would be unregistrable as vulgar. We think that the Board did not err in concluding that the distinction between COCKSUCKER and COCK SUCKER is a distinction
without a difference. So too the association of COCK SUCKER with a poultry-themed product does not dimin- ish the vulgar meaning—it merely establishes an addi- tional, non-vulgar meaning and a double entendre. This is not a case in which the vulgar meaning of the mark’s literal element is so obscure or so faintly evoked that a context that amplifies the non-vulgar meaning will efface the vulgar meaning altogether. Rather, the mark is precisely what Fox intended it to be: a double entendre, meaning both “rooster lollipop” and “one who performs fellatio.”
George Carlin came up
We recognize that there are “whimsical” and humor- ous aspects to Fox’s mark. See Appellant’s Br. 43. But the fact that something is funny does not mean that it cannot be “scandalous.” Indeed, the Supreme Court in Pacifica, in determining that the use of the word “cocksucker” is generally patently “indecent” under 18 U.S.C. § 1464, made a point of noting that “[t]he transcript of [humorist George Carlin’s] recording . . . indicates frequent laughter from the audience.” FCC v. Pacifica Found., 438 U.S. 726, 729 (1978).
Fox can use the label, but can't register it:
Nothing in this decision precludes Fox from continu- ing to sell her merchandise under the mark at issue, or from seeking trademark protection for some other, other- wise registrable element of her product’s design, dress, or labeling. If Fox is correct that the mark at issue “bring[s] [nothing] more than perhaps a smile to the face of the prospective purchaser,” Appellant’s Br. 43 (second altera- tion in original), then the market will no doubt reward her ingenuity. But this does not make her mark registra- ble.
Of background law:
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 govern- ment.” 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 appli- cant’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.
More concisely, and especially usefully in the context of this case, the PTO may prove scandalousness by establishing that a mark is “vulgar.” In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003). This demonstration must be made “in the context of contemporary attitudes,” “in the context of the marketplace as applied to only the goods described in [the] application,” and “from the standpoint of not necessarily a majority, but a substantial composite of the general public.” Mavety, 33 F.3d at 1371 (quotation marks omitted).
Of details:
In August 2009, the examiner responded, noting that “COCK is defined . . . as ‘penis,’ and SUCKER as, ‘one that sucks,’” and that both words are considered vulgar “as used in context.” J.A. 121 (emphasis in original). Conced- ing that this vulgar meaning is not the primary meaning of “cock,” the examiner asserted that “taking COCK in context with SUCKER, the primary meaning of this wording as a whole is ‘one who sucks a penis,’” and that “the strong and commonly known meaning of COCKSUCKER in the general public” ensures that the two component words, when used together, will “un- equivocal[ly]” assume their vulgar meanings. J.A. 122. The examiner continued the refusal, however, to allow Fox to respond to several questions.
The Board had denied registration:
The Board concluded that “the evidence supports the fact that the term COCK SUCKER is vulgar and, therefore, is precluded from registration under [§ 1052(a)].” J.A. 8.
As to burdens-->
“The determination that a mark comprises scandalous matter is a conclusion of law based upon underlying factual inquiries.” Mavety, 33 F.3d at 1371. Factual findings of the Board are reviewed for the presence of substantial evidence, In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003), while its ultimate conclusion as to registrability is reviewed de novo. Mavety, 33 F.3d at 1371. The burden of proving that the proposed mark is unregistrable under 15 U.S.C. § 1052(a) rests on the PTO. Id.
Of sound
Fox urges, however, that “[i]n the present case, the space between the words makes all the difference.” Reply Br. 10. How- ever, Fox concedes that a mark’s “sound” is central to its “commercial impression” for purposes of §1052. See Appellant’s Br. 32 (citing Palm Bay Imps. v. Veuve Clic- quot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005)). Fox, moreover, has admitted that her mark at least in part has a vulgar meaning. She acknowledged that “the . . . humor of the mark is derived” from “[the] possibility of [a] double entendre,” consisting of a vulgar and a non-vulgar meaning. See J.A. 181; see also Appellant’s Br. 25 n.1. At oral argument, she con- ceded that her mark, if used to sell sweaters, would be unregistrable as vulgar. We think that the Board did not err in concluding that the distinction between COCKSUCKER and COCK SUCKER is a distinction
without a difference. So too the association of COCK SUCKER with a poultry-themed product does not dimin- ish the vulgar meaning—it merely establishes an addi- tional, non-vulgar meaning and a double entendre. This is not a case in which the vulgar meaning of the mark’s literal element is so obscure or so faintly evoked that a context that amplifies the non-vulgar meaning will efface the vulgar meaning altogether. Rather, the mark is precisely what Fox intended it to be: a double entendre, meaning both “rooster lollipop” and “one who performs fellatio.”
George Carlin came up
We recognize that there are “whimsical” and humor- ous aspects to Fox’s mark. See Appellant’s Br. 43. But the fact that something is funny does not mean that it cannot be “scandalous.” Indeed, the Supreme Court in Pacifica, in determining that the use of the word “cocksucker” is generally patently “indecent” under 18 U.S.C. § 1464, made a point of noting that “[t]he transcript of [humorist George Carlin’s] recording . . . indicates frequent laughter from the audience.” FCC v. Pacifica Found., 438 U.S. 726, 729 (1978).
Fox can use the label, but can't register it:
Nothing in this decision precludes Fox from continu- ing to sell her merchandise under the mark at issue, or from seeking trademark protection for some other, other- wise registrable element of her product’s design, dress, or labeling. If Fox is correct that the mark at issue “bring[s] [nothing] more than perhaps a smile to the face of the prospective purchaser,” Appellant’s Br. 43 (second altera- tion in original), then the market will no doubt reward her ingenuity. But this does not make her mark registra- ble.
posted by Lawrence B. Ebert at 8:31 PM
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