Marsha Fox had only one option when the Trademark Trial and Appeal Board refused to register her trademark for a custom-candy line: Pray that the Federal Circuit Court of Appeals would have a sense of humor. Sadly, it didn't.
This week, the Federal Circuit agreed that Fox's mark was unregistrable because it creates a clearly vulgar double entendre.
So what turn of phrase was too offensive to trademark?
Fox applied to register her mark for use in connection with "chocolate suckers molded in the shape of a rooster." On her application form, she indicated the literal portion of the mark as "Cock-Sucker."
The PTO determined that the mark "consists of or comprises immoral or scandalous matter," and was unregistrable. Specifically, the examiner found that a dictionary defined "cocksucker" as "someone who performs an act of fellatio."
Fox responded, noting that that "Webster's Dictionary defines ... a cock as a rooster, and ... a sucker as a lollipop," and asserting that these non-vulgar definitions, which match both the product design and the design element of the mark, are "more relevant" than the vulgar definition.
(Yeah, PTO. Get your mind out of the gutter!)
Though the PTO acknowledged that Fox had an "equally relevant non-scandalous meaning," it concluded that "due to the strong meaning of 'cocksucker' in society in general," a "substantial composite of the general public will ... assign the scandalous meaning to the wording/mark."
(Geez, society. Get your mind out of the gutter!)
Fox tried again, presenting her intended term to be trademarked as "COCK SUCKER" (with a space), not "COCKSUCKER." The examiner again rejected her application, noting that "COCK is defined ... as 'penis,' and SUCKER as, 'one that sucks,'" and that both words are considered vulgar "as used in context."
And so Fox marched on to the Federal Circuit Court of Appeals.
The PTO may prove scandalousness by establishing that a mark is "vulgar." This demonstration must be made "in the context of contemporary attitudes," in the context of the marketplace as applied to only the goods described in the application," and "from the standpoint of ... a substantial composite of the general public." If it's clear from dictionary evidence "that the mark ... invokes a vulgar meaning to a substantial composite of the general public," the mark is unregistrable.
Here, the appellate court found, "The Board did not err in concluding that the distinction between COCKSUCKER and COCK SUCKER is a distinction without a difference. 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."
(It didn't help that "cocksucker" is one of the famous "seven dirty words" that the Supreme Court generally defines as "indecent.")
This is an amusing case -- and a welcome reprieve from the Federal Circuit's usual patent jargon -- but Fox never stood a chance. It'll be a cold day in hell before the Federal Circuit sides with "Cock Suckers."
- In Re: Marsha Fox (FindLaw's CaseLaw)
- Sole Decision: Everyone Wins in Louboutin-YSL Appeal (FindLaw's Second Circuit Blog)
- A Tale of Two Marks: Maker's Mark and the Red Wax Trademark (FindLaw's Sixth Circuit Blog)