March 2013 Issue

Federal Circuit Cases

In re Fox,
2012 WL 6602862 (Fed. Cir. Dec. 19, 2012)

CASE SUMMARY

FACTS
Marsha Fox filed an application to register a mark consisting of the wording COCK SUCKER and a design element featuring a drawing of a crowing rooster for lollipops.  The Examining Attorney refused registration of the mark, determining that it consisted or comprised immoral or scandalous matter based on the dictionary definition of “cocksucker,” which was “someone who performs an act of fellatio.”  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.  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.”  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].”  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.  Fox appealed to the Federal Circuit.

ANALYSIS
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 appeals 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” under 15 U.S.C. § 1052(a) and, thus, is unregistrable.  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 TTAB’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 scandalous matter and, accordingly, was unregistrable.

CONCLUSION
According to the Federal Circuit, there is no requirement in the Lanham Act that a mark’s vulgar meaning must be the only meaning, or even the most relevant meaning, to warrant refusal under 15 U.S.C. § 1052(a).  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 is not entitled to registration.