In re Fox

Citation702 F.3d 633
Decision Date19 December 2012
Docket NumberNo. 2012–1212.,2012–1212.
PartiesIn re Marsha FOX.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

OPINION TEXT STARTS HERE

Michael B. Bressman, Vanderbilt Legal Clinic, of Nashville, TN, argued for appellant.

Thomas L. Casagrande, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, VA, argued for appellee. With him on the brief were Raymond T. Chen, Solicitor, and Christina J. Hieber, Associate Solicitor.

Before DYK, PROST, and O'MALLEY, Circuit Judges.

DYK, Circuit Judge.

Marsha Fox appeals from a decision of the Trademark Trial and Appeal Board (“Board”) affirming the refusal of the examiner to register her mark. The Board concluded that the mark was unregistrable under 15 U.S.C. § 1052(a). We affirm, holding that a mark that creates a double entendre falls within the proscription of § 1052(a) where, as here, one of its meanings is clearly vulgar.

Background
I

Section 2 of the Lanham Act, as amended, provides that [n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it[ ] (a) [c]onsists of or comprises immoral, deceptive, or scandalous matter.” 15 U.S.C. § 1052.

The prohibition on “immoral ... or scandalous” trademarks was first codified in the 1905 revision of the trademark laws, see Act of Feb. 20, 1905, Pub. L. No. 58–84, § 5(a), 33 Stat. 724, 725. This court and its predecessor have long assumed that the prohibition “is not an attempt to legislate morality, but, rather, a judgment by the Congress that [scandalous] marks not occupy the time, services, and use of funds of the federal government.” In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed.Cir.1994) (quotation marks omitted). Because a refusal to register a mark has no bearing on the applicant's ability to use the mark, we have held that § 1052(a) does not implicate the First Amendment rights of trademark applicants. See id.

As might be expected, what constitutes “immoral ... or scandalous matter” has evolved over time. See id. at 1372. The formal legal framework, however, has remained consistent: in order to refuse a mark, “the [Patent and Trademark Office (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.’ Id. at 1371 (second and third alterations in original) (quoting In re Riverbank Canning Co., 25 CCPA 1028, 95 F.2d 327, 328 (1938)). More concisely, and especially usefully in the context of this case, the PTO may prove scandalousness by establishing that a mark is “vulgar.” In re Boulevard Entm't, Inc., 334 F.3d 1336, 1340 (Fed.Cir.2003). 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 not necessarily a majority, but a substantial composite of the general public.” Mavety, 33 F.3d at 1371 (quotation marks omitted).

Where the meaning of a mark is ambiguous, mere dictionary evidence of a possible vulgar meaning may be insufficient to establish the vulgarity of the mark. See id. at 1373–74. But where it is clear from dictionary evidence “that the mark[ ] as used by [the applicant] in connection with the [products] described in [the] application” invokes a vulgar meaning to a substantial composite of the general public, the mark is unregistrable. See Boulevard, 334 F.3d at 1341.

II

The mark at issue here has two parts: a literal element, consisting of the words COCK SUCKER, and a design element, consisting of a drawing of a crowing rooster. Since 1979, Fox has used this mark to sell rooster-shaped chocolate lollipops, which she “displays ... in retail outlets in small replicas of egg farm collecting baskets to emphasize the country farmyard motif.” Appellant's Br. 6 (quotation marks omitted). The consumers targeted by Fox's business are, primarily, fans of the University of South Carolina and Jacksonville State University, both of which employ gamecocks as their athletic mascots.

In September 2001, Fox applied to register her mark for use in connection with [c]hocolate suckers molded in the shape of a rooster.” J.A. 14. On her application form, she indicated the literal portion of the mark as “CockSucker.” J.A. 16. In December 2001, the PTO examiner determined that the mark “consists of or comprises immoral or scandalous matter,” and is therefore unregistrable under § 1052(a). J.A. 21. Specifically, the examiner found that a dictionary defined “cocksucker” as “someone who performs an act of fellatio.” Id. (quotation marks and ellipsis omitted).

In June 2002, Fox filed a response, noting that that “Webster's Dictionary defines ... a cock as a rooster, and ... a sucker as a lollipop,” and asserting that these nonvulgar definitions, which match both the product design and the design element of the mark, are “more relevant” than the vulgar definition. J.A. 25. In December 2002, the PTO suspended further action on Fox's application, pending disposition of a potentially conflicting trademark application.

In July 2008, after the conflicting mark was abandoned, the PTO issued a final refusal. The examiner conceded that Fox had presented “evidence potentially supporting an equally relevant non-scandalous meaning,” but concluded that “due to the strong meaning of ‘cock-sucker’ in society in general,” a “substantial composite of the general public will ... assign the scandalous meaning to the wording/mark.” J.A. 37.

Fox filed a motion for reconsideration, in which she clarified that “the intended term to be trademarked was COCK SUCKER [ (with a space) ], not COCKSUCKER,” and included a revised image of her mark in which the two words were clearly separated. J.A. 65. Fox protested that by “driv[ing the words] together,” the examiner had “stripp[ed] the mark of any possibility of double entendre from which the relevant humor of the mark is derived,” and also reiterated that the rooster design was intended to “guid[e] the potential purchaser to the less risqué of the two definitions.” J.A. 65.

In August 2009, the examiner responded, noting that “COCK is defined ... as penis, and SUCKER as, one that sucks, and that both words are considered vulgar “as used in context.” J.A. 121 (emphasis in original). Conceding that this vulgar meaning is not the primary meaning of “cock,” the examiner asserted that “taking COCK in context with SUCKER, the primary meaning of this wording as a whole is ‘one who sucks a penis,’ and that “the strong and commonly known meaning of COCKSUCKER in the general public” ensures that the two component words, when used together, will “unequivocal[ly] assume their vulgar meanings. J.A. 122. The examiner continued the refusal, however, to allow Fox to respond to several questions.

In her May 2010 response, Fox argued that her proposed definitions of the disputed terms (“rooster” and “lollipop,” respectively) would be “ more relevant ” than those put forward by the examiner. J.A. 155 (emphasis in original). Fox also argued at length that in light of contemporary attitudes, the mark was not vulgar.

In a final office action in May 2011, the examiner reiterated the view that “the widely known and strong unitary meaning of ‘cocksucker’ in society would lend [the meaning ‘penis sucker’] to the individual ... wordings COCK & SUCKER as opposed to the ‘rooster lollipop’ meaning.” J.A. 170.

Fox appealed to the Board, which affirmed the examiner's refusal. In her brief, Fox once again did not argue that the examiner's proposed definition was entirely inapposite, but rather asserted that the non-vulgar definition was, “in [her] opinion, more relevant in light of consumer perceptions of “the product as a whole.” J.A. 182 (emphasis in original). The Board concluded 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.” J.A. 6. The Board noted that [t]he term ‘Cocksucker’ is uniformly identified as a vulgar term in dictionaries,” and “g[a]ve very little weight to [Fox's] argument [that] COCK SUCKER has a different meaning than COCKSUCKER.” J.A. 7. The Board concluded that “the evidence supports the fact that the term COCK SUCKER is vulgar and, therefore, is precluded from registration under [§ 1052(a) ].” J.A. 8.

Fox timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

Discussion

“The determination that a mark comprises scandalous matter is a conclusion of law based upon underlying factual inquiries.” Mavety, 33 F.3d at 1371. Factual findings of the Board are reviewed for the presence of substantial evidence, In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed.Cir.2003), while its ultimate conclusion as to registrability is reviewed de novo. Mavety, 33 F.3d at 1371. The burden of proving that the proposed mark is unregistrable under 15 U.S.C. § 1052(a) rests on the PTO. Id.

I

Fox first argues that the Board lacked substantial evidence to support its finding that her mark has a vulgar meaning. Properly interpreted, Fox argues, the literal element of her mark means only “rooster lollipop.”

This argument is without merit. As an initial matter, Fox concedes that “cocksucker” is a vulgar term in its common usage, and the dictionary evidence is devoid of an alternate, non-vulgar definition for that word. 1 Fox urges, however, that [i]n the present case, the space between the words makes all the difference.” Reply Br. 10. However, Fox concedes that a mark's “sound” is central to its “commercial impression” for purposes of § 1052. See Appellant's Br. 32 (citing Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372 (Fed.Cir.2005)). Fox,...

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