There is, it turns out, a limit to as how far U.S. law will tolerate the registration of provocative and sexually suggestive trademarks. In a decision issued on December 19, 2012, the United States Court of Appeals for the Federal Circuit in In re Fox, 2012-1212 (Fed. Cir. Dec. 19, 2012) upheld the Trademark Office’s refusal to register the name COCK SUCKERS for rooster-shaped chocolate lollipops, on the basis that one of the meanings in the mark’s crude double entendre was “immoral and scandalous.” Section 2(a) of the Lanham Act expressly prohibits the registration of a mark that “consists of or comprises immoral, deceptive or scandalous matter.” 15 U.S.C. § 1052(a).
In this matter, there was no doubt that the applicant, Ms. Marsha Fox, was knowingly exploiting the sexual double entendre to her commercial advantage. To play up the non-sexual interpretation of the name, however, she packaged her products at retail in small replicas of egg farm collecting baskets, to suggest a country farmyard motif. She also claimed that the primary consumer targets for her product were fans of the University of South Carolina and Jacksonville State, both of which use gamecocks as their mascot for athletic events. At no point in the proceedings before the Trademark Office or the First Circuit, however, did she contest that her mark had a blatant sexual connotation.
The issue of legal interest presented by this case is the Federal Circuit’s ruling that where, as here, a trademark has two meanings — a “literal meaning” that is not scandalous (rooster lollipops) and an implied one, that clearly is scandalous, it is appropriate for the Trademark Office to refuse registration of that mark if a “substantial composite of the general public” perceives the mark, in context, to have a vulgar meaning. In the case, Fox had admitted that the intended humorous effect of the mark depended upon consumers grasping its sexual connotations, so the court based its decision on the admission, and did not address what evidence would satisfy such a test. The court rejected Fox’s argument that whether a mark was scandalous depended only on the literal meaning of the mark.
Ms. Fox likely would have been more successful if her mark had not been a mere double entendre, but a mark capable of more than two meanings. In a 1994 decision, In re Mavety Media Group, Ltd., 33 F.3d 1367 (Fed. Cir. 1994), the Federal Circuit reversed the Trademark Office’s refusal to register BLACK TAIL for an adult entertainment magazine featuring photographs of naked and scantily-clad African American women. In so doing, the Federal Circuit noted that TAIL had at least three definitions: (1) the vulgar definition of “female sexual partner,” (2) the “non-vulgar” (really?) definition of “a woman’s rear end,” and (3) the non-vulgar definition of “a type of evening coat worn by men on formal occasions.” Because TAIL had multiple definitions, only one of which was vulgar, the Federal Circuit ruled that the mark was ambiguous, and therefore capable of registration.
Also, Ms. Fox may have had more success if her mark created a double-entendre through use of initials. As of this writing, there appear to be eight federally registered trademarks that consist of, or use, the acronym FCUK. How the Fox decision squares with these registrations is far from clear.
Ms. Fox can take solace in the fact that, as noted by the Federal Circuit, the bar to registration does not prohibit her from using her brand name as an unregistered trademark or continuing to sell her product. Presumably, the publicity from this decision will help in that regard. For her next line of products, however, if she wants to register her mark, perhaps she should consider reconfiguring her pops into the shape of tropical birds and selling them under the name COCKATOO SUCKERS.