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More on Allegedly Offensive Trademarks:

The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office refuses to register the trademark "Pussy", for use on various drinks, both alcoholic and nonalcoholic. Such a mark, the TTAB ruled, was prohibited by the statute, because it "consists of or comprises immoral or scandalous matter" (in the statute's words). Here's a nice block quote from the decision, itself quoted from an opinion that held the mark "Black Tail" (to be used for sexually themed magazines) was not immoral or scandalous, apparently because an alternative meaning of "tail" was simply "buttocks or the hindmost or rear end":

Compare In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993) (OLD GLORY CONDOM CORP, with stars and stripes design on condoms suggesting the American flag, not scandalous); In re In Over Our Heads Inc., 16 USPQ2d 1653 (TTAB 1990) (MOONIES on dolls, whose pants can be dropped to expose their buttocks, not scandalous); In re Hershey, 6 USPQ2d 1470 (TTAB 1988) (BIG PECKER BRAND on T-shirts not scandalous); In re Leo Quan Inc., 200 USPQ 370 (TTAB 1978) (BADASS for bridges of stringed musical instruments not scandalous); In re Madsen, 180 USPQ 334 (TTAB 1973) (WEEK-END SEX on magazines not scandalous); In re Hepperle, 175 USPQ 512 (TTAB 1972) (ACAPULCO GOLD on suntan lotion not scandalous); Ex parte Parfum L'Orle, Inc., 93 USPQ 481 (Pat. Off. Exam'r-Chief 1952) (LIBIDO on perfumes not scandalous) with In re Tinseltown, Inc., 212 USPQ 863 (TTAB 1981) (BULLSHIT on personal accessories scandalous); In re Runsdorf , 171 USPQ 443 (TTAB 1971) (BUBBY TRAP for brassieres scandalous); In re Sociedade Agricola E. Comerical Dos Vinhos Messias, S.A.R.L., 159 USPQ 275 (TTAB 1968) (MESSIAS on wine and brandy scandalous); In re Reemtsma Cigarettenfabriken G.m.b.H., 122 USPQ 339 (TTAB 1959) (SENUSSI on cigarettes scandalous); In re P.J. Valckenberg, GmbH, 122 USPQ 334 (TTAB 1959) (MADONNA on wine scandalous); Ex parte Summit Brass & Bronze Works, Inc., 59 USPQ 22 (TTAB 1943) (AGNUS DEI on metallic tabernacle safes scandalous); In re Riverbank Canning Co., 95 F.2d 327, 37 USPQ 268 (CCPA 1938) (MADONNA on wine scandalous); Ex parte Martha Maid Mfg. Co., 37 USPQ 156 (Comm'r Pats. 1938) (QUEEN MARY on women's underwear scandalous)....

[See also] In re Boulevard Entertainment Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) (1-800-JACK-OFF and JACK-OFF for entertainment in the nature of adult-oriented conversations by telephone held scandalous); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (SEX ROD for clothing held scandalous); In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) (BULLSHIT for various alcoholic and nonalcoholic beverages, including energy drinks, and related services held scandalous); In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) (DICK HEADS' and design for bar and restaurant services held scandalous).

(The opinion acknowledges that these decisions very much depend on the standards of the time, so that some of the older decisions might well not be followed today.)

Recall that after such a decision people remain free to sell and advertise products using the term; it's just that they don't get special protection against infringement that they would get if the mark were registered.

Three side notes: (1) The opinion relies heavily on online sources, including the results of Google searches and Wikipedia, as well as foulmouthshirts.com

(2) "This case is distinguishable from the Hershey case where the Board found a credible double entendre in the BIG PECKER mark based on the display of a chicken with a beak along with the BIG PECKER word mark in the specimen of record." Yeah. Right.

(3) Compare this item (paragraph 3) with this follow-up (paragraph 5).

Thanks to How Appealing for the pointer.

einhverfr (mail) (www):
If "Big Pecker" brand is not scandalous but "Pussy" is, would this violate relevant sexual discrimination laws?
5.22.2009 12:41am
MLS:
My recollection is the "Big Pecker" brand, which was for t-shirts, was deemed "scandalous" and registration denied.

I have always wondered what would have been the basis for denying registration had it been for underwear. Deceptively misdiscriptive perhaps?
5.22.2009 12:53am
Eugene Volokh (www):
Your recollection was right -- registration was denied. But, unsurprising, the TTAB's opinion was also right: The holding of the TTAB decision that it cites was that "Big Pecker" was not scandalous; the examiner's refusal to register the mark, it turns out, was reversed.
5.22.2009 1:27am
Patent Lawyer:
I've heard from coworkers who work on trademark prosecution for porn sites (and, as a side note, I really need to find a way to get staffed on those matters), that the PTO's stance on whether sexually suggestive marks are "immoral or scandalous" is nearly completely arbitrary, and you just hope you get an open-minded examiner. Apparently the silliness continues at the TTAB level. I'm surprised they don't just establish "I know it when I see it" as the applicable standard.

Have you looked into what the Federal Circuit's done with those TTAB decisions? I don't expect it to be any more consistent.
5.22.2009 1:35am
Smokey Behr:
Just as with SCOTUS decisions, USPTO decisions regarding "scandalous" trademarks have changed. The pattern seems to be that if it's blatantly blasphemous, or is blatantly vulgar, it's probably NOT going to get approved.

Although "BUBBY TRAP" (Booby Trap?) is more of a cutesy thing than vulgar, and 1-800-JACK-OFF tells the truth (IYKWIM), I think there's enough vulgarity in there for it to be scandalous.
5.22.2009 2:10am
ValentinoRossi:
Head sports equipment
5.22.2009 6:42am
Connie:
Per George Carlin, context is everything. Even in a Disney movie, you can say, "We're going to snatch that pussy &put it in a box." (From memory, probably not verbatim.)
5.22.2009 9:13am
Houston Lawyer:
Thanks for posting this. That 1-800-JACK-OFF posting almost made me spit out my drink.
5.22.2009 9:22am
Rock Chocklett:
Why would there even be a question about "Acapulco Gold"? What am I missing there?
5.22.2009 10:00am
Dilan Esper (mail) (www):
thanks for the laugh.

since the guy's name was 'hershey' in the big pecker case, why didn't he register 'hershey highway' instead?
5.22.2009 10:17am
Ken Arromdee:
Why would there even be a question about "Acapulco Gold"? What am I missing there?

It's a marijuana reference.
5.22.2009 10:42am
Sparky:
Hello? First Amendment?!?

Especially since a scandalous mark can still be used, and is merely denied special protection against infringement? What's the compelling governmental interest there?
5.22.2009 10:55am
Javert:
The Virgin Group
5.22.2009 10:57am
MLS:
Mr. Volokh,

Thank you for the information. I did review the 1984 denial reported in the advance sheets of the USPQ and thought no more of the matter. I was not aware that several years later the refusal to register was reversed.

M. Slonecker
5.22.2009 1:35pm
Fub:
Here's a nice block quote from the decision, itself quoted from an opinion that held the mark "Black Tail" (to be used for sexually themed magazines) was not immoral or scandalous, apparently because an alternative meaning of "tail" was simply "buttocks or the hindmost or rear end"
So Big Ass Fans is acceptable. [Worksafe, unless your boss is bereft of humor or common sense.]
5.22.2009 2:54pm
Jacob T. Levy (mail) (www):
To save others the trouble of baffled googling, to figure out why "Senussi" is scandalous on cigarettes: it's the name of a Muslim sect that prohibits tobacco.
5.22.2009 3:07pm
Tony Tutins (mail):
The Canadians are seemingly more pussified than we are: Look at the logo for Alberta's Big Rock Beer, and tell me what the original name must have been.
5.22.2009 4:03pm
Harry Eagar (mail):
As usual, the school ma'ms get conniptions if sex is involved but have no taste otherwise.

My evidence: the Big Buddha line of oriental condiments manufactured in Chicago.
5.22.2009 11:19pm

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