In re Boulevard Entertainment, Inc.

• Decision Date: 09 July 2003
• Docket Number: No. 02-1585.,02-1585.
• Citation: 334 F.3d 1336
• Parties: In re The BOULEVARD ENTERTAINMENT, INC.
• Court: U.S. Court of Appeals — Federal Circuit

334 F.3d 1336

In re The BOULEVARD ENTERTAINMENT, INC.

No. 02-1585.

United States Court of Appeals, Federal Circuit.

July 9, 2003.

COPYRIGHT MATERIAL OMITTED

David Gurnick, Arter & Hadden LLP, of Woodland Hills, CA, argued for appellant. With him on the brief was Tal S. Grinblat.

John M. Whealan, Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for appellee. With him on the brief were Cynthia C. Lynch, and Raymond T. Chen, Associate Solicitors. Of counsel was Nancy C. Slutter, Associate Solicitor.

Before NEWMAN, BRYSON and LINN, Circuit Judges.

BRYSON, Circuit Judge.

This appeal from the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("PTO") involves section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), which precludes registration of marks that consist of or comprise "immoral, deceptive, or scandalous matter." Appellant The Boulevard Entertainment, Inc. ("Boulevard") seeks to register "1-800-JACK-OFF" and "JACK-OFF" as marks on the Principal Register for "entertainment in the nature of adult-oriented conversations by telephone." The examining attorney refused to register the marks under section 1052(a), and the TTAB affirmed the refusal to register on the ground that the marks consist of or comprise scandalous matter. Because substantial evidence supports the TTAB's finding that the term "jack-off" is an offensive and vulgar reference to masturbation and that Boulevard's use of the marks refers to that meaning, we affirm.

I

Boulevard provides adult entertainment services over the telephone. Customers can dial alphanumeric numbers to contact Boulevard's telephone actors and actresses, who offer adult-oriented conversations for a fee. Boulevard alleges that it receives more than 1.2 million phone calls per year to its "JACK-OFF" brand phone numbers.

On January 6, 1998, Boulevard applied to register "1-800-JACK-OFF" based on its "actual use of that mark for telephone entertainment services, namely interpersonal telephone services for adults." On January 21, 1998, Boulevard applied to register "JACK-OFF" based on an intent to use that mark for the same services. Boulevard subsequently modified the description of its services to "entertainment in the nature of adult-oriented conversations by telephone."

In office actions dated June 9, 1998, the examining attorney refused registration of the marks on the ground that they comprised immoral and scandalous matter. The examining attorney relied on definitions in four dictionaries to conclude that the term "jack-off" is offensive and vulgar. The examining attorney consulted Webster's Collegiate Dictionary, which defines the term to mean "masturbate" and notes that it is "usu. considered vulgar." The examining attorney also found the word in Forbidden American English, a book intended "for persons who seek guidance in avoiding giving offense with potentially offensive vocabulary." The examining attorney explained that two other specialized dictionaries, American Slang and Historical Dictionary of American Slang, define the term as meaning "to masturbate" and that both designate the word as vulgar. Several of the dictionaries, the examining attorney pointed out, provide an alternative definition as meaning "a stupid, incompetent person = jerk," a "worthless jerk" and "a dolt; idiot," but each of those alternative definitions is also designated as vulgar or "forbidden."

The examining attorney noted that Boulevard had submitted evidence from the Lexis/Nexis Research Database consisting of four items that included the term "jack-off." In response, the examining attorney conducted a search of the same database for the period October 1, 1998, through October 1, 1999. She reported that the search produced unrelated references, such as "she dropped Jack off at school" and references to a rock music group known as "Jack off Jill," but she attached 15 excerpts that used the term in a relevant manner. Those 15 excerpts, she pointed out, appeared only in non-mainstream publications, which she regarded as evidence of the offensive nature of the term "jack off" to a substantial composite of the general public.

Boulevard appealed the rejection to the TTAB, which affirmed the refusal to register the marks. The TTAB determined that while the dictionaries cited by the examining attorney contain two definitions for "jack-off," both definitions are vulgar. The TTAB also concluded that Boulevard's use of the marks in relation to adult entertainment refers only to masturbation and not to the alternative meaning of a stupid or incompetent person. In addition, the TTAB found that the evidence reviewed by the examining attorney made clear that Boulevard uses the words in a vulgar or derogatory manner. The TTAB therefore concluded that the examining attorney had established a prima facie case that the marks were scandalous. Because the TTAB found Boulevard's proffered evidence insufficient to overcome that prima facie case, it affirmed the examining attorney's determination that the term "jack-off" was offensive to a substantial composite of the general public and thus precluded from registration under section 1052(a). Boulevard has appealed the TTAB's decision to this court.

II

To justify refusing to register a trademark under the first clause of section 1052(a), the PTO must show that the mark consists of or comprises "immoral, deceptive, or scandalous matter." In re Mavety Media Group, Ltd., 33 F.3d 1367, 1371 (Fed.Cir.1994). A showing that a mark is vulgar is sufficient to establish that it "consists of or comprises immoral ... or scandalous matter" within the meaning of section 1052(a). See id. at 1373-74 (analyzing a mark in terms of "vulgarity"); In re McGinley, 660 F.2d 481, 485 (CCPA 1981) (quoting with approval In re Runsdorf, 171 USPQ 443, 443-44 (TTAB 1971), which refused registration of a mark on grounds of vulgarity). In meeting its burden, the PTO must consider the mark in the context of the marketplace as applied to the goods described in the application for registration. McGinley, 660 F.2d at 485. In addition, whether the mark consists of or comprises scandalous matter must be determined from the standpoint of a substantial composite of the general public (although not necessarily a majority), and in the context of contemporary attitudes, id., keeping in mind changes in social mores and sensitivities, Mavety, 33 F.3d at 1371. We review the TTAB's findings for substantial evidence. In re Save Venice N.Y., Inc., 259 F.3d 1346, 1351 (Fed.Cir.2001).

In finding Boulevard's marks to be vulgar, the examining attorney consulted four dictionaries, including the mainstream dictionary Webster's Collegiate Dictionary, all of which indicated that the word "jack-off" is offensive or vulgar when used to refer to masturbation. Boulevard argues that it was improper for the examining attorney to rely only on dictionary definitions and personal opinion to reject its application for registration. While it is true that the personal opinion of the examining attorney cannot be the basis for a determination that a mark is scandalous, dictionary definitions represent an effort to distill the collective understanding of the community with respect to language and thus clearly constitute more than a reflection of the individual views of either the examining attorney or the dictionary editors.

This court has not previously decided whether dictionary definitions alone can ever provide a sufficient basis for holding a particular mark to be scandalous. In In re Mavety Media Group, Ltd., the court reversed the PTO's refusal to register a mark under section 1052(a) in a case in which the PTO relied solely on dictionary definitions. Because the evidence in that case showed that the mark at issue had multiple meanings, including a non-vulgar meaning, the court found the dictionary evidence offered in that case to be insufficient to support the PTO's finding that the mark was unregistrable on grounds of vulgarity. The court declined, however, to decide whether dictionary definitions alone would be sufficient to support a finding that a mark is scandalous in a case in which the mark has no alternative meaning. As the Mavety court explained, "[We] leave for another day the resolution of whether a standard dictionary definition and an accompanying editorial designation of vulgarity alone sufficiently demonstrates that a substantial composite of the general public considers that word scandalous, and consequently, whether the PTO may refuse under § 1052(a) to register a mark based solely on such standard dictionary evidence." Mavety, 33 F.3d at 1374.

In this case, we answer the question left open in Mavety by holding that, in a case in which the evidence shows that the mark has only one pertinent meaning, dictionary evidence alone can be sufficient to satisfy the PTO's burden. The dictionary definitions that the examining attorney reviewed in this case uniformly characterize the word "jack-off" as an offensive or vulgar reference to masturbation. Boulevard contends that the dictionaries also indicate that the term "jack-off" is sometimes used to mean a stupid or incompetent person. Irrespective of the fact that the dictionaries also characterize the term "jack-off" as vulgar or "forbidden" when used to refer to a stupid or incompetent person, it is clear that the...