CAFC Scandalized By “Vulgar” Mark For Sweet Product

by Downs Rachlin Martin PLLC
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http://theipstone.com/wp-content/uploads/2013/01/cocksuckerlogo.jpgToday we address suggestive marks – “suggestive” as in meretricious, not as one of the measures of trademark strength. It was three strikes and you’re out for Ms. Marsha Fox, who in 2001 applied to register COCK SUCKER and Design, as depicted, for rooster-shaped chocolate suckers. She stubbornly pursued federal registration of her witty trademark all the way to the U.S. Court of Appeals for the Federal Circuit.  The Vanderbilt Legal Clinic came to Ms. Fox’s aid; one can only assume it must have been a slow day in hard cases when it took on her cause.  In re Marsha Fox, Fed. Cir., No. 2012-1212, 12/19/12.

Section 2(a) of the Trademark Act (15 U.S.C. §1052(a)) forbids the registration of “immoral” or “scandalous” marks. No doubt it takes more shock value today than 50 years ago for a mark to be refused under §2(a), but In re Fox is a reminder that the proscription against scandalous marks stands firm.

Mark Is One of “Seven Dirty Words”

COCK SUCKER for a rooster-shaped lollipop might simply have been refused on grounds of descriptiveness under §2(e)(1), but Ms. Fox hoisted herself by her own petard in emphasizing the mark’s double entendre.  She protested that the trademark examiner’s elision of COCK and SUCKER into one word, as that common vulgarity is usually spelled, was unfair: “… 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.’ ” In re Fox at 5. Her mark, she admitted, would not be as rib-tickling (to her and the average 12 year old anyway) were it not for the vulgarity of the alternate meaning, but the separation of COCK from SUCKER enabled the doubled meaning. The CAFC did not hesitate to explain that alternate meaning with lots of words both clinical and dirty, as if to say, “You want vulgar? We’ll give you vulgar!”

Footnote 1 at p. 7 of the CAFC opinion says:

“We also note that ‘cocksucker’ is one of the famous ‘seven dirty words’ found by the Supreme Court to be generally ‘indecent.’ See FCC v. Pacifica Found., 438 U.S. 726, 738-41, 751 (1978). While the statutory contexts are different, and while the determination under §1052(a) must be made ‘in the context of contemporary attitudes,” [citation omitted] this determination lends credibility to the Board’s finding that ‘cocksucker’ is a vulgar term.”

That reference to the “famous seven dirty words” refers to the late George Carlin’s classic 1973 monologue Seven Words You Can Never Say on Television In FCC v. Pacifica, a noteworthy distinction was drawn – Carlin’s Seven Words routine was “indecent,” but not “obscene.” Unfortunately for Ms. Fox, §2(a) does not split that particular hair.

In contrast, the trademark GAMECOCK SUCKER for “lollipops” was permitted to register about one year ago, with no objection other than the requirement to disclaim “sucker.”  (Reg. No. 4,094,324, owned by Team Candy Suckers, LLC.) The double entendre there — if in fact it was “entendred” at all — was subtler: the GAMECOCK SUCKER lollipop’s fowl shape is a tribute to the South Carolina Gamecocks, the USC football team. A §2(a) issue may never have occurred to the GAMECOCK SUCKER examiner, (especially if he was unaware that the sucker is available in only one flavor – Black Cherry. )

Just for Kids?

The Gamecocks also has a kids’ sucker, only slightly less apt to draw snickers. The unregistered Cocky Pop – bubble gum flavor only — honors the team’s eponymous mascot Cocky. Cute, but George Carlin would have had his way with the shape of a sucker called Cocky.

§2(a) determinations are nothing if not subjective, starting with the trademark examiner.

In In re Fox, the CAFC affirmed the refusals of the PTO examiner and the TTAB to register COCK SUCKER and Design, finding that Section 2(a) forecloses registration of a double entendre mark “where, as here, one of the meanings is clearly vulgar.” (Emphasis supplied.) Like Justice Potter Stewart, the CAFC knows vulgar when it sees it. So how did GAMECOCK SUCKER, which overlaps Ms. Fox’s mark entirely, escape condemnation under 2(a)? Because it is ambiguous, in this writer’s view; its prurient double meaning, intentional or not, was not blatant enough to  make the examiner blush.

In short, stay away from Captain Obvious when creating risqué puns.

__________________

Ms. Fitzgerald specialized in the intersection of IP and vulgarity while in-house at a major men’s magazine.

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