Dictionary evidence that 'jack-off' is vulgar precludes registration

In In Re The Boulevard Entertainment Inc, the US Court of Appeals for the Federal Circuit has affirmed the Trademark Trial and Appeal Board's (TTAB) refusal to register 1-800-JACK-OFF and JACK-OFF as trademarks in connection with, among other things, adult-oriented conversations by telephone pursuant to Section 2(a) of the Lanham Act.

Under Section 2(a), a mark may be refused registration by the US Patent and Trademark Office (PTO) if it "consists of or comprises immoral, deceptive or scandalous matter". The Federal Circuit noted that evidence that a mark is vulgar is sufficient to establish that it is precluded from registration. In addition, the court pointed out that to meet the burden of Section 2(a), the PTO must consider the mark in the context of the marketplace as applied to the goods or services covered under the application, and must consider the mark from the standpoint of a substantial composite of the general public in the context of contemporary attitudes.

In the subject case, the evidence presented to establish that the term 'jack-off' is offensive and vulgar included, among other things, excerpts from Webster's Collegiate Dictionary, American Slang and The History of American Slang. All of them define the term 'jack-off' as meaning 'to masturbate' and consider it vulgar. While some dictionaries provided alternative definitions, such as 'stupid', 'incompetent', 'a jerk' or 'an idiot', each alternative was also considered vulgar.

Initially, the Federal Circuit settled an open question as to whether dictionary definitions alone are sufficient to support the refusal of a mark on the grounds that it is immoral or scandalous in violation of Section 2(a) of the Lanham Act. The Federal Circuit held:

"In a case such as this one, in which multiple dictionaries, including at least one standard dictionary, uniformly indicate that a word is vulgar, and the applicant's use of the word is clearly limited to the vulgar meaning of the word [...] the PTO can sustain its burden of showing the mark comprises or consists of scandalous matter by reference to dictionary definitions alone."

Thus, although additional evidence in the form of articles from Lexis/Nexis was submitted by the PTO to support its case - primarily to respond to submissions from Boulevard Entertainment from that same database - the dictionary evidence alone was sufficient to show that the term 'jack-off' is regarded as vulgar by a substantial composite of the public.

Accordingly, the Federal Circuit rejected the application.

Lynda J Zadra-Symes, Knobbe Martens Olson & Bear LLP, Newport Beach

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