The Federal Circuit has concluded that it can, as a matter of law, determine when a trademark is not entitled to federal trademark registration because the mark is vulgar. In doing so, the court appears to have ignored or changed the standard of proof requirement that has been part of the law for nearly 20 years. The recent opinion from the Federal Circuit, In re Marsha Fox, decided Dec. 19, 2012, is one that counsel should consider when seeking registration for trademarks that can have multiple meanings, one of which may present risqué overtones.
In the U.S. Patent and Trademark Office (PTO), Marsha Fox sought a registration on a dual-element mark, consisting of a literal element of two words and a design element of a rooster-shaped chocolate lollipop. The application specified the goods as “chocolate suckers molded in the shape of a rooster.” According to the applicant, the goods were primarily sold in area of the University of South Carolina and Jacksonville State University because of the athletic mascot of both teams. The literal element of the mark at issue in Fox is one that, if stated in this article, would be blocked by most spam filters. Consequently, that element will simply be referred to as the NSFW (not safe for work) Mark.
As background, Section 1052(a) of the Lanham Act provides that a trademark may be denied registration if it “[c]onsists of or comprises immoral, deceptive, or scandalous matter.” Under the court’s precedent, whether a mark comprises scandalous matter is a conclusion of law based on underlying factual inquiries, with the factual findings of the board reviewed for substantial evidence. The court has previously provided a three-element framework for the PTO and the board to follow when addressing Section 1052(a). First the PTO must demonstrate that the mark is shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; gives offense to the conscience or moral feelings; or calls out for condemnation. Second, the PTO must consider the mark in the context of the marketplace as applied to only the goods described in the application for registration. Finally, whether the mark comprises scandalous matter is to be determined from the standpoint of a substantial composite of the general public, not necessarily a majority, and in the context of contemporary attitudes. As to the applicant’s substantial evidence argument, the Federal Circuit seemed to ignore its precedent. Indeed, the court pointed to the dictionary definitions of each of the two-word literal elements, as well as the definition of those two words when they are written as one word, that were relied on by the examiner and concluded that the literal element is a vulgar term in common usage. The court observed that the dictionaries’ comments about the word(s) indicated that they were usually vulgar. The court also noted that the applicant admitted that the “humor of the mark is derived” from the “possibility of [a] double entendre.” The court, however, did not address the lack of PTO evidence regarding the use of the mark in the marketplace as applied to the goods recited in the application or the lack of evidence as to how a substantial composite of the general public would perceive the mark. Thus, the dictionary definitions and applicant’s double-entendre admission seemed to constitute substantial evidence sufficient for the court.
As noted, the applicant also argued that the overall mark could be considered a double entendre, and consequently, the PTO must present evidence as to how the general public would perceive the mark, given at least two different meanings. On this point, however, the applicant acknowledged that the mark’s effect as a humorous double entendre requires the consumer to understand the non-vulgar and risqué meanings of the mark.