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Applicant’s COCK SUCKER Mark for Chocolate Rooster-Shaped Suckers Is Vulgar and Unregistrable

December 19, 2012

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Last Month at the Federal Circuit - January 2013

Judges: Dyk (author), Prost, O'Malley

[Appealed from: TTAB]

In In re Fox, No. 12-1212 (Fed. Cir. Dec. 19, 2012), the Federal Circuit affirmed the TTAB’s decision refusing registration of Marsha Fox’s COCK SUCKER and design mark for chocolate suckers molded in the shape of a rooster on the ground that it comprised immoral, deceptive, or scandalous matter, and thus was unregistrable under 15 U.S.C. § 1052.

Fox filed an application to register her mark, which consisted of the wording COCK SUCKER and a design element featuring a drawing of a crowing rooster. The Examining Attorney refused registration of the mark, determining that it consisted of or comprised immoral or scandalous matter based on the dictionary definition of “cocksucker,” which is “someone who performs an act of fellatio.” Slip op. at 4 (citation omitted). Fox responded to the refusal by arguing, among other things, that the dictionary defines a cock as a “rooster” and a sucker as a “lollipop,” and that these nonvulgar definitions were “more relevant” than the vulgar definitions offered by the Examining Attorney. Id. The Examining Attorney maintained the refusal and Fox appealed to the TTAB.

The TTAB affirmed the Examining Attorney’s refusal, concluding that “[t]he word portion of applicant’s mark . . . , when used in connection with applicant’s products, creates a double entendre[, where] one meaning is one who performs fellatio[] and the other meaning is a rooster lollipop.” Id. at 6 (alterations in original) (citation omitted). The TTAB also noted that “[t]he term ‘Cocksucker’ is uniformly identified as a vulgar term in dictionaries,” and the TTAB “g[a]ve very little weight to [Fox’s] argument [that] COCK SUCKER [with a space between the words] has a different meaning than COCKSUCKER [all one word].” Id. (citation omitted) Thus, the TTAB held that the evidence supported the Examining Attorney’s finding that the term COCK SUCKER is vulgar and that Fox’s mark was unregistrable.

On appeal, Fox argued that the TTAB lacked substantial evidence to support its finding that her mark had a vulgar meaning because the literal element of the mark means only “rooster lollipop.” The Court disagreed, finding that the TTAB properly concluded that the distinction between COCKSUCKER (one word) and COCK SUCKER (two words) was a distinction without a difference and that the association of COCK SUCKER with a poultry-themed product did not diminish its vulgar meaning (it merely established an additional, nonvulgar meaning and a double entendre). In reaching this conclusion, the Court noted that Fox had conceded that “cocksucker” (one word) was a vulgar term in its common usage, that the dictionary evidence was devoid of any alternative, nonvulgar definition for that word, that the mark’s “sound” was central to its commercial impression, that her mark had at least in part a vulgar meaning, and that the humor of the mark was derived from the possibility of a double entendre, consisting of a vulgar and a nonvulgar meaning.

Fox also argued that even if found to have a vulgar meaning, the mark was still entitled to registration because it was a double entendre with one vulgar and one nonvulgar meaning, and the PTO had not demonstrated that the public would “choose” the nonvulgar meaning. The Court rejected this argument, holding that there was no requirement in the Lanham Act that a mark’s vulgar meaning must be the only relevant meaning, or even the most relevant meaning. Rather, as long as a “substantial composite of the general public” perceives the mark, in context, to have a vulgar meaning, the mark as a whole “consists of or comprises . . . scandalous matter,” and thus is unregistrable. Id. at 8-9 (quoting 15 U.S.C. § 1052(a)). The Court further found that the fact that there were “whimsical” and humorous aspects to Fox’s mark did not mean that it was not scandalous.

Finally, Fox argued that because there was arguably doubt as to how the general public would view her mark, the Court should permit the mark to be published for registration and rely on opposition proceedings to bring to light any public objections to the mark. The Court explained that this approach was only appropriate where the registrability of the mark was uncertain, and it was not uncertain in this case.

In sum, the Court found that substantial evidence supported the Board’s determination that Fox’s COCK SUCKER and rooster design mark, taken as a whole and in context, would be perceived by a substantial composite of the general public as having a vulgar meaning. Thus, the Court held that the TTAB did not err in finding the mark comprised of scandalous matter and, accordingly, was unregistrable. 

Summary authored by Stephanie H. Bald, Esq.