Something can be both Funny and Improperly Scandalous, even a Federal Circuit Opinion

By Dennis Crouch

In re Fox (Fed. Cir. 2012)

Since 1979, Ms. Fox has been selling rooster-shaped chocolate lollypops. These sell well in my birthplace of Columbia South Carolina – home of the Gamecocks. Naturally, Fox calls her lollypops “Cock Suckers.”

The USPTO refused to register her trademark on the phrase – calling it scandalous since the common definition of a cocksucker is someone who performs fellatio. On appeal, the Federal Circuit has affirmed – holding that a double entendre nature of the mark does not cure its vulgarity.

So too the association of COCK SUCKER with a poultry-themed product does not diminish the vulgar meaning—it merely establishes an additional, non-vulgar meaning and a double entendre. 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.” . . .

We therefore see no reason why the PTO is required to prove anything more than the existence of a vulgar meaning to a substantial composite of the general public in order to justify its refusal. . . .

We recognize that there are “whimsical” and humorous aspects to Fox’s mark. But the fact that something is funny does not mean that it cannot be “scandalous.”

Toward the end of the opinion, the court attempted to offer some libertarian condolences to Ms. Fox – writing that

Nothing in this decision precludes Fox from continuing to sell her merchandise under the mark at issue. . . . If Fox is correct that the mark at issue “bring[s] [nothing] more than perhaps a smile to the face of the prospective purchaser,” then the market will no doubt reward her ingenuity. But this does not make her mark registrable.

Left unsaid is that, based upon the results of this decision, the market will also copy her ingenuity.

As an aside, the nice thing about the rule against scandalous marks is that you never have to worry about trademark infringement when cursing up a storm.

30 thoughts on “Something can be both Funny and Improperly Scandalous, even a Federal Circuit Opinion

  1. 30

    Does anyone think it odd that they deny registration for “scandalous” trademarks but permit patents for sex toys, and copyright for pornography?

    I realize that there is a difference in the statutes, but many morality clauses are ignored or explicitly rendered null by “evolving standards”

  2. 29

    Another thought occurs to me: Would a US court deny copyright protection to Carlin for the reason that his text contains the seven words?

  3. 26

    the only Cock Sucker in town.

    Sure, but the only one in the country? That would create some serious work flow issues.

  4. 22

    Excellent, how educational this column can be. I had imagined that I should pronounce the name “Dyke”. But I see now, that doesn’t fit at all.

  5. 20

    Registration does not merely provide a presumption of validity, it also allows for enhanced damages and nationwide priority.

  6. 18

    I don’t follow the court’s argument regarding the First Amendment not being implicated.

    Could Congress enact legislation that would allow the PTO to not register marks that recite certain political slogans related to a particular ideology, e.g., “workers unite!” disfavored by the majority?

  7. 14

    I just noted, having done a quick search to see if the above was still on the “books”, that the decision was ultimately reversed on appeal given its use in conjunction with t-shirts/undershirts.

  8. 13

    What is it about the USPTO and roosters? Case in point, the refusal years ago to register the mark “Big Pecker” for men’s undershirts? Why? scandalous, of course.

    Now, had the class of goods comprised men’s underwear, I would have rejected it because in large measure (pun intended) it would have been deceptively misdescriptive.

    I am adding this to my “rooster” list…

  9. 12

    Here, it may be scandalous to the general public; but is that the relevant universe?

    Shashank, I don’t think the particular market for the good is relevant. The issue is whether the U.S. government wants to be involved with scandalous trademark matters at all. Congress has decided that it does not. As the Federal Circuit said, the statute doesn’t purport to prevent the producers or consumers from participating.

  10. 11

    First comment, the case does not really say who is the consumer to whom the mark is scandalous. In traditional likelihoood of confusion analysis, one must identify the relevant universe of consumers against whom the confusion is measured. Here, it may be scandalous to the general public; but is that the relevant universe?
    Second comment, I like it when the CAFC kinda adds this little humour at the end of the opinion. Just like it did in the Hasbro v. USA GI Joe doll case (concerning whether GI Joe is a doll or toy soldier as the import duty varies). See here: “Accordingly, although Hasbro has fought valiantly that these figures are not dolls, we are unable to agree. Even though G.I. Joe has lost this battle, hopefully he will not lose his courage for combat, despite being officially designated by the United States Customs Service as a “doll.”

  11. 8

    Although the statute itself is focused only denying registration for scandalous marks, the leading theory is that the scandalous nature of an unregistered mark would  negatively impact whether a court would enforce that mark. I do admit, however, that we don't have a case-on-point squarely ruling one way or the other. 

  12. 7

    I am not following you. Scandalousness is not relevant to a mark’s validity in a 43a action. Validity here would almost certainly be a jury issue, or possibly could be adjudicated summarily in the mark owner’s favor (assuming he can show secondary meaning). The PTO’s rejection of the mark as scandalous would probably be irrelevant and would most certainly be 403 so a jury is not going to hear about it. And even if it did, the accused infringer is going to benefit from that how? They decided that they wanted to associate their goods with a scandalous mark — what does that prove?

    In short, if someone else starts selling lollipops called cock suckers and the lollipops are shaped like roosters or other birds, I am pretty confident in the case here (especially, if it were in the same geographic area).

    Registration of trademarks is very overrated. The presumption of validity on registration is not worth much and is nothing like the presumption of validity a patent carries.

  13. 6

    I found this interesting “Because a
    refusal to register a mark has no bearing on the applicant’s
    ability to use the mark, we have held that § 1052(a)
    does not implicate the First Amendment rights of trademark

    Congress can’t ban or limit violence games/movies because of the 1st amendment (Brown v Entertainment). But it seems like it could pass a law not giving certain violent games/movies or porn copyright.

    Taking away copyright would have an effect of regulating content because said content would not be profitable to make anymore.

  14. 4

    Clearly this is a patent-centric blog. Mark is right. Trademark rights don’t require registration, the registration just gives the owner some evidentiary short-cuts. One who comes later and copies the mark would still be liable for infringement.

  15. 3

    Free to copy? Wouldn’t you still have 43a rights (i.e., “common law” rights) in a non-registered mark? Registration merely shifts the burden of proof on validity at an infringement proceeding in court. You can still sue for infringement if you prove likelihood of confusion.

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