Is that mark funny, scandalous or both?

United States of America

In In re Fox (Case 12-1212, December 19 2012), the US Court of Appeals for the Federal Circuit has agreed with the US Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB) that the double entendre nature of a trademark does not necessarily cure its vulgarity.

Marsha Fox had used the mark COCK SUCKER since 1976 to sell rooster-shaped chocolate lollipops. In 2001 she applied to register her mark for use in connection with “chocolate suckers moulded in the shape of a rooster”. The USPTO examiner determined that the mark “consists of or comprises immoral or scandalous matter” and argued that a dictionary defined 'cocksucker' as “someone who performs an act of fellatio”. Citing the dictionary, Fox argued that there are other non-vulgar and more relevant definitions of the mark, and specifically that Webster’s Dictionary defines "a cock as a rooster, and... a sucker as a lollipop”. Given that she was labelling her products COCK SUCKERS (and not COCKSUCKERS), Fox argued that the public would be more prone to understand the non-vulgar meaning.

The USPTO examiner issued a final refusal, reiterating the view that the widely known and strong unitary meaning of the mark in society would lend the meaning 'penis sucker' to the ordinary consumer. Fox appealed to the TTAB, which affirmed the examiner’s refusal. Fox then appealed to the Federal Circuit.

According to the Lanham Act:

no 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) consists of or comprises immoral, deceptive, or scandalous matter...”

The USPTO may prove scandalousness by establishing that a mark is vulgar, demonstrating that the mark is vulgar “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”.

The Federal Circuit agreed with the TTAB, concluding that the distinction between COCKSUCKER and COCK SUCKER is a distinction without a difference. The court concluded that any association of the mark with a poultry-themed product does not diminish the vulgar meaning - it merely establishes an additional, non-vulgar meaning and a double entendre. Here, the Federal Circuit explained that the mark was intended to convey a double entendre, meaning both “rooster lollipop” and “one who performs fellatio”. The court said that just because a mark is whimsical and humorous does not mean it is not also scandalous (and therefore unregistrable).

Ulrika E Mattsson, McDermott Will & Emery LLP, Chicago

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