SEX ROD held to be disparaging of Red Sox

In Boston Red Sox Baseball Club Limited Partnership v Sherman (Opposition 91172268, September 9 2008), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has upheld Boston Red Sox Baseball Club Limited Partnership's opposition against the registration of the trademark SEX ROD.
Brad Francis Sherman applied to register the stylized mark SEX ROD for over 100 apparel items, including t-shirts and infant wear. The Red Sox opposed the application based on the following grounds: 
  • there was a likelihood of confusion with the earlier registered trademark RED SOX;
  • the mark SEX ROD consisted of immoral and scandalous matter;
  • the mark disparaged the Red Sox; and
  • the mark falsely suggested a connection with the Red Sox.
First, the TTAB held that the SEX ROD mark was vulgar and scandalous. The TTAB considered the mark from the viewpoint of a substantial composite of the general public in the context of the goods, the relevant marketplace and contemporary attitudes. In support of its claim, the Red Sox introduced a 15-year-old dictionary entry defining the term 'rod' as “slang [...] (b) vulgar, the penis”. While “[d]ictionary evidence alone can be sufficient to establish that a term has a vulgar meaning”, given the transitory nature of American slang, it is unclear how such a dated definition supported the contemporary attitudes of a substantial composite of the general public. Perhaps recognizing this to be an issue, the TTAB took judicial notice of a more recent (three-year-old) dictionary definition, which similarly defined the term 'rod' as “vulgar slang, a penis”. The TTAB's opinion was nevertheless devoid of any discussion about evidence that a substantial composite of the general public recognizes the slang term 'rod' as having the same meaning attributed to it 15, or even three, years ago. 
While the Red Sox introduced arguably dated dictionary evidence, Sherman did little to advance his contention that his mark was not vulgar and thus registrable. Rather, Sherman described his mark as a parody of the RED SOX stylized mark intended to have a sexual connotation. He further argued that the mark:
"represents the at once clever, yet sophomoric, sense of humour that prevails in those venues in which apparel bearing the SEX ROD stylized mark would likely be worn (eg, ballparks, sports bars and university campuses)." 
Unamused, the TTAB held that “the mark would convey [...] a sexually explicit message to the viewer”. Moreover, using the mark SEX ROD in connection with children’s and infant clothing “ma[de] the term particularly lurid and offensive”.
In light of its finding that the mark was scandalous, the TTAB logically found that Sherman's visually similar mark disparaged the Red Sox. The TTAB concluded that Sherman's mark “would be viewed as a sexually vulgar version of the [Red Sox’s] symbol and as making an offensive comment on or about the [Red Sox]”.
After Sherman produced no documents evidencing his preparation to use the mark in connection with the vast array of goods identified in the application, the Red Sox amended its opposition to assert a claim that Sherman lacked a good-faith intent to use the mark at the time the application was filed. In what may be the TTAB's first precedential decision on the issue, the TTAB found that Sherman's lack of objective evidence to support a good-faith intention to use a mark in commerce was fatal.
Attempting to carry its burden to come forth with objective evidence of intent, Sherman relied on:
  • his marketing experience, internet searches and investigations performed after the filing of the application; and
  • his claim that he could launch a clothing line consisting of over 100 items “essentially overnight” and “with no forward planning”. 
The TTAB found Sherman's evidence unsupported, unbelievable and ultimately insufficient to support Sherman's alleged good-faith intent to use the mark in commerce at the time the application was filed.
However, the TTAB dismissed both the likelihood of confusion and false connection claims. In doing so, the TTAB concluded that Sherman's mark was too dissimilar in sound and meaning to sustain these claims. Moreover, due to the vulgar and disparaging nature of Sherman's mark, the TTAB concluded that consumers were unlikely to believe that the Red Sox sponsored, endorsed or was otherwise connected to Sherman's goods. 
Tywanda Harris Lord, Kilpatrick Stockton LLP, Atlanta

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