Making a Name for Yourself: Trademark Registration Challenges

• Jurisdiction: United States,Federal
• Author: Shelly Rosenfeld
• Publication year: 2014
• Citation: Vol. 39 No. 1

Making a Name For Yourself: Trademark Registration Challenges

Shelly Rosenfeld

Lewis Brisbois Bisgaard & Smith

Everything from the Nike slogan, "just do it," to the name, "Coca-Cola," to the design of McDonald's golden arches has trademark protection. A trademark is a word, name, or symbol that identifies a product in a way that distinguishes it from others, and having a widely recognized trademark is a tremendous asset. Another type of intellectual property, patent, which protects new and useful inventions, is actually issued from the same office, the U.S. Patent and Trademark Office (USPTO). However, when it comes to the race to trademark a name versus obtaining a patent on products having a "racy" topic, they are not on equal footing. The law may not see an invention as patently offensive, but a trademark has to watch its words. In a time when businesses are looking to creatively grab a consumer's attention, leaving your mark when it comes to vulgarity may actually mean leaving your mark, such that a product is unable to obtain trademark protection from the USPTO. Perhaps one of the strongest cases of "Fowl Language" was In re Fox.¹

IN RE FOX

Trademark is governed by the Lanham Act, which says 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 compromises immoral, deceptive or scandalous matter...."² Marsha Fox had been selling her rooster-shaped lollipops with the name "COCK SUCKER." At issue in In re Fox was whether Ms. Fox, the applicant, could obtain a trademark registration for the name to describe these items. The court determined that Fox's mark was unregistrable because "taken as a whole and in context, [it] has a vulgar meaning that will be perceived by a substantial composite of the general public."³ In other words, the court found that the proposed trademark falls into the "scandalous" category of 15 U.S.C. § 1052.

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 'un-equivo-cal[ly]' assume their vulgar meanings.⁴

The USPTO has the burden of proving the mark unregistrable. Ms. Fox argued that the mark at issue literally meant rooster lollipop and "'bring[s] [nothing] more than perhaps a smile to the face of the prospective purchaser."'⁵ Although the product may reliably describe the rooster shaped lollipop such that consumers easily know to which good this name refers, this was not enough.

This is not a case in which the vulgar meaning of the mark's literal element is so obscure or so faintly evoked that a context that amplifies the non-vulgar meaning will efface the vulgar meaning altogether. Rather, the mark is precisely what Fox intended it to be: a double entendre, meaning both 'rooster lollipop' and 'one who performs fellatio.'⁶

In an opinion written by U.S. Circuit judge Timothy B. Dyk, the court noted that it recognized that Ms. Fox's mark was humorous, but that this did not take away from its scandalous nature. By way of example, the court referred specifically to the word "cocksucker" as one of comedian George Carlin's Filthy Words at issue in FCC v. Pacifica Found.⁷ Carlin's monologue generated laughs from the audience, as captured in its recording, but the Supreme Court in Pacifica still held that the content was indecent. Certainly the standards of what constitutes scandalous matter changes over time, but the court argued that refusing to trademark the name does not abridge the trademark applicant's first amendment rights. The court relied upon a previous Federal Circuit decision.⁸ The court said in its refusal, it "is clear that the PTO's refusal to register appellant's mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed."⁹ Based upon Mavety, the court held that First Amendment rights are not implicated because the PTO would not prevent someone like Ms. Fox from selling the product bearing the name, "COCK SUCKER;" rather, it merely prevents her from...