Mavety Media Group Ltd., In re, 93-1464

• Decision Date: 23 August 1994
• Docket Number: No. 93-1464,93-1464
• Citation: 33 F.3d 1367,31 USPQ2d 1923
• Parties: , 31 U.S.P.Q.2d 1923 In re MAVETY MEDIA GROUP LTD.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1367

33 F.3d 1367

63 USLW 2184, 31 U.S.P.Q.2d 1923

In re MAVETY MEDIA GROUP LTD.

No. 93-1464.

United States Court of Appeals Federal Circuit.

Aug. 23, 1994.

Lawrence E. Abelman, Abelman, Frayne & Schwab, New York City, submitted for appellant. With him on the brief were Jeffrey A. Schwab and Marie A. Mastrovito.

Albin F. Drost, Deputy Sol., Office of the Sol., Arlington, VA, submitted for appellee. With him on the brief was Fred E. McKelvey, Sol.

Before CLEVENGER, Circuit Judge, SKELTON, Senior Circuit Judge, and SCHALL, Circuit Judge.

CLEVENGER, Circuit Judge.

Mavety Media Group Ltd. appeals the May 5, 1993 decision of the Trademark Trial and Appeal Board (Board) of the United States Patent and Trademark Office (PTO) affirming the Examiner's refusal to register Mavety's trademark because it comprises immoral or scandalous matter under 15 U.S.C. Sec. 1052(a) (1988). In re Mavety Media Group Ltd., Ser. No. 74/066,893 (TTAB May 5, 1993). We vacate and remand.

I

Mavety is the publisher of Black Tail, an adult entertainment magazine featuring photographs of both naked and scantily-clad African-American women. On June 7, 1990, Mavety filed an application in the PTO seeking federal registration of its trademark BLACK TAIL under 15 U.S.C. Sec. 1051(b) (1988), based on Mavety's bona fide intention to use the mark in connection with goods identified as "Magazines." On July 25, 1990, Mavety filed an Amendment to Allege Use declaring July 2, 1990 as the date of the first use of the mark. In accordance with the regulation governing the filing of an Amendment to Allege Use, Mavety provided published issues of its magazine Black Tail. See 37 C.F.R. Sec. 2.76(b)(2) (1993) (requiring three specimens to support the declared date of the first use of the mark in commerce).

On November 20, 1990, the Examiner issued an Office Action requiring Mavety to identify the goods as "adult entertainment magazines" and to "disclaim the descriptive wording 'Black' apart from the mark." Despite Mavety's compliance with the Examiner's mandates on January 29, 1991, the Examiner issued a second Office Action on May 31, 1991, stating:

[U]pon further consideration, the [Examiner] refuses registration because the mark [BLACK TAIL] consists of or comprises immoral or scandalous matter (citations omitted).

The Examiner expressly relied upon a dictionary reference defining "tail" as "SEXUAL INTERCOURSE--usu. considered vulgar." Webster's New Collegiate Dictionary 1178 (1981).

On August 15, 1991, Mavety responded to the second Office Action by contending that "[c]onsidering the more popular meanings of TAIL and BLACK TAIL ..., a substantial composite of the population would not interpret the mark to be a reference to sexual intercourse." In particular, Mavety argued that the primary sense of "tail" in the dictionary cited by the Examiner is "the rear end," a meaning not usually considered vulgar. Mavety asserted that as used in the mark BLACK TAIL on the identified magazines, "tail" suggests a woman's rear end. The magazine specimens of record illustrated Mavety's contention, depicting the use of the mark, for example, on the magazine cover above a photograph of a woman displaying, inter alia, her derriere. Mavety also provided newspaper articles to support its assertion that "a large number of consumers would interpret BLACK TAIL as a reference to a type of evening coat or the full evening dress worn by men at formal occasions." Such a connotation would suggest the quality, class and experience of an expensive lifestyle, consistent with the familiar genre of adult entertainment magazines such as Playboy and Penthouse. Mavety also argued that the federal trademark register contained numerous marks consisting of words with non-sexual primary meanings that nonetheless had sexual connotations. To illustrate, Mavety included a slang dictionary reference showing almost two pages of sexual innuendos of "occupy." Slang and Euphemism 291-93 (1982). Mavety therefore urged the Examiner not to conclude that the mark BLACK TAIL would necessarily evoke the vulgar connotation of "tail" in the minds of a substantial composite of the general public, especially given the existence of at least two common non-vulgar meanings of "tail" that could also be evoked in this context.

A final Office Action issued on November 14, 1991, continuing to refuse registration of Mavety's trademark BLACK TAIL. The Examiner stated:

The record reflect[s] the current attitudes of the term tail as Webster's Ninth New Collegiate Dictionary (1990) defines it as a female sexual partner-USU. considered vulgar. The mere fact that tail is defined in this context is very persuasive as to [the] issue involve[d], for it can be assume[d] that a substantial composite of the general public would have reason to consult a dictionary and as such become aware of new definitions of words which may in the past [have] had slang meanings but now are defined in such standard dictionaries.

In its request for reconsideration, Mavety submitted examples from the federal trademark register of marks containing "tail" and marks containing words with sexual connotations. The Examiner rejected Mavety's request for reconsideration on May 14, 1992. Mavety thus appealed to the Board.

II

In a 2-1 decision, the Board affirmed the Examiner's refusal to register Mavety's trademark BLACK TAIL. In re Mavety Media Group Ltd., slip op. at 13. In addition to the dictionary references that the Examiner made of record, the majority took judicial notice of the respective definitions of "tail" from six additional dictionary sources, four of which were slang dictionaries. Both the dissent in the Board decision and Mavety in its briefs before this court challenged the propriety of judicial notice of slang dictionaries because the accuracy of such sources are subject to reasonable dispute. Id., slip op. at 15 (Simms, Member, dissenting). We need not decide whether judicial notice of slang dictionaries is proper, however, because the majority in the Board decision clearly stated that "even in the absence of the slang dictionary evidence, we would affirm the refusal on the basis of the evidence made of record by the [Examiner]." Id., slip op. at 6 n. 5. Furthermore, even if reference to the additional dictionaries cited by the Board constitutes error, the error is harmless. The additional sources teach nothing beyond that already made clear by the Examiner's dictionary citation, namely, that one of the many meanings of "tail" was usually considered vulgar.

Based solely on the dictionary definitions it cited, the Board concluded:

[T]he mark BLACK TAIL essentially conveys, in vulgar terms, the idea of African-American women as sexual objects. This innuendo is an affront to a substantial composite of the general public. Although we believe that women in general and African-American women in particular would be especially offended by the mark, we think that others, including a substantial number of men, likewise would be offended. In looking at the mark in the context of contemporary attitudes, we are mindful of the heightened public awareness and social consciousness of women's issues. Although we live in liberal times and recognize that marks which [would] have been found to be scandalous in the past hardly would raise an eyebrow today, we are convinced that a substantial composite of the general public would find the mark to be "offensive," "disreputable," "disgraceful to reputation," and shocking to their "sense of decency or propriety."

Id., slip op. at 10. Mavety timely appealed the Board decision to this court.

III

On appeal, Mavety contends that the Board erred in refusing registration based on its incorrect conclusion that the trademark BLACK TAIL comprises scandalous matter under 15 U.S.C. Sec. 1052(a). ^* Specifically, Mavety challenges the propriety of such a conclusion based solely on the evidence of various dictionary definitions of "tail." In addition, Mavety argues that Sec. 1052(a) is a facially unconstitutional abridgement of Mavety's freedom of speech guaranteed by the First Amendment, or alternatively that the Board applied Sec. 1052(a) in an unconstitutionally arbitrary manner. For the following reasons, we hold that the Board erred in concluding that the mark BLACK TAIL comprises scandalous matter based solely on the evidence of record. In addition, we reject Mavety's challenges to Sec. 1052(a) as unconstitutional on its face or as applied.

IV

The determination that a mark comprises scandalous matter is a conclusion of law based upon underlying factual inquiries. Cf. Frederick Gash, Inc. v. Mayo Clinic, 461 F.2d 1395, 1397, 174 USPQ 151, 152 (CCPA 1972) ("The inquiry under [15 U.S.C. Sec. 1052(a) ] is similar to that under ... 15 U.S.C. Sec. 1052(d), which is likelihood of confusion of the marks as applied to the respective goods and/or services."); Weiss Assocs., Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1547-48, 14 USPQ2d 1840, 1841 (Fed.Cir.1990) ("The likelihood of confusion is a question of law to be decided by the court. This court must accept the [Board's] factual findings unless they are clearly erroneous." (citations omitted)). Therefore, while we review the Board's underlying fact findings for clear error, we review de novo the Board's ultimate legal conclusion of scandalousness.

The PTO has the burden of proving that a trademark falls within a prohibition of Sec. 1052. See In re Standard Elektrik Lorenz Aktiengesellschaft, 371 F.2d 870, 873, 152 USPQ 563, 566 (CCPA 1967). In order to prove that Mavety's mark BLACK TAIL is scandalous, the PTO must demonstrate that the mark is "shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; ... giving offense to the conscience or moral feelings; ... [or] calling out [for] condemnation." In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (CCPA 1938) (citations omitted). The PTO must consider...