The U.S. Court of Appeals for the Federal Circuit agreed with the U.S. Patent and Trademark Office’s (PTO) Trademark Trial and Appeal Board’s (the Board) that the double entendré nature of a trademark does not necessarily cure its vulgarity. In re Fox, Case No. 12-1212 (Fed. Cir., Dec. 19, 2012) (Dyk, J.).
Marsha Fox used the mark COCK SUCKER since 1976 to sell rooster-shaped chocolate lollipops. In 2001, she applied to register her mark for use in connection with “chocolate suckers molded in the shape of a rooster.” The PTO examiner determined that the mark “consists of or comprises immoral or scandalous matter” and argued that a dictionary defined “cocksucker” as “someone who performs an act of fellatio.” Citing the dictionary, Fox argued that there are other non-vulgar and more relevant definitions of the mark and specifically that Webster’s Dictionary defines . . . a cock as a rooster, and . . . a sucker as a lollipop.” Given that she was labeling her products COCK SUCKERS (and not COCKSUCKERS) Ms. Fox argued that the public would be more prone to understand the non-vulgar meaning. The PTO examiner issued a final refusal, reiterating the view that the widely known and strong unitary meaning of the mark in society would lend the meaning penis sucker to the ordinary consumer. Fox appealed to the Board, which affirmed the examiner’s refusal. Fox then appealed to the Federal Circuit.
According to the Lanham Act, “no 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) consists of or comprises immoral, deceptive, or scandalous matter.” The PTO may prove scandalousness by establishing that a mark is vulgar, demonstrating that the mark is vulgar “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.”
The Federal Circuit agreed with the Board, concluding that the distinction between COCKSUCKER and COCK SUCKER is a distinction without a difference. The Court concluded that any association of the mark with a poultry-themed product does not diminish the vulgar meaning - it merely establishes an additional, non-vulgar meaning and a double entendré. Here, the Federal Circuit explained that the mark was intended to convey a double entendre, meaning both “rooster lollipop” and “one who performs fellatio.” The Court said that just because a mark is whimsical and humorous does not mean it is not also entendré scandalous (and therefore unregistrable).