“I know it when I see it.”
Federal trademark law prohibits the registration of a mark that includes “immoral, deceptive, or scandalous matter.” 15 U.S.C. § 1052(a). Today in In re Fox, the Federal Circuit affirmed a scandalous-based rejection under § 1052(a), effectively holding that one of these things is not like the other:
“Cock Sucker” is scandalous, according to the Federal Circuit, even if in context is has another non-vulgar meaning. Here the non-vulgar meaning is regional: Fox’s target consumers are fans of the University of South Carolina or Jacksonville State University, each of which has a gamecock as a mascot.
Scandalousness can be established by showing that a mark is “vulgar.” In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003). Applying that reasoning, In re Fox holds that where a mark has two meanings, the non-vulgar meaning is not sufficient to allow registration:
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.”
Anticipating a possible First Amendment objection, the court noted that the registration bar for scandalous marks raises no free-speech issue because a refusal to register a mark has no bearing on a person’s ability to use the mark. This freedom, in turn, makes the refusal to register ironic: a failed registrant cannot police unauthorized use of the mark. (The opinion makes no mention of whatever state-law rights Ms. Fox may have.) Had Ms. Fox been allowed to register her mark, she could prevent others from selling rooster lollipops using the mark. But because the mark cannot be registered, anyone is free to sell rooster-shaped chocolate lollipops using crude references to fellatio.
The TTABlog has a nice summary of various positions the PTO has taken with respect to various scandalous or vulgar marks. Interestingly, the PTO has registered at least one vulgar trademark: Reg. No. 3,453,145.
Posted on December 19, 2012, in Invalidity, Other IP, Trademark and tagged foxes, Jacobellis v. Ohio, Potter Stewart, scandal, Trademarks Gone Wild, vulgar. Bookmark the permalink. Comments Off on “I know it when I see it.”.