In Re Marsha Fox , 702 F.3d 633 ( 2012 )

United States Court of Appeals
for the Federal Circuit
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IN RE MARSHA FOX
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2012-1212
(Serial No. 76/315,793)
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
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Decided: December 19, 2012
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MICHAEL B. BRESSMAN, Vanderbilt Legal Clinic, of
Nashville, Tennessee, argued for appellant.
THOMAS L. CASAGRANDE, Associate Solicitor, United
States Patent and Trademark Office, of Alexandria,
Virginia, argued for appellee. With him on the brief were
RAYMOND T. CHEN, Solicitor, and CHRISTINA J. HIEBER,
Associate Solicitor.
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Before DYK, PROST, and O’MALLEY, Circuit Judges.
DYK, Circuit Judge.
Marsha Fox appeals from a decision of the Trademark
Trial and Appeal Board (“Board”) affirming the refusal of
the examiner to register her mark. The Board concluded
IN RE FOX 2
that the mark was unregistrable under 15 U.S.C.
§ 1052(a). We affirm, holding that a mark that creates a
double entendre falls within the proscription of § 1052(a)
where, as here, one of its meanings is clearly vulgar.
BACKGROUND
I
Section 2 of the Lanham Act, as amended, provides
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 comprises im-
moral, deceptive, or scandalous matter.” 15 U.S.C. § 1052.
The prohibition on “immoral . . . or scandalous”
trademarks was first codified in the 1905 revision of the
trademark laws, see Act of Feb. 20, 1905, Pub. L. No. 58-
84, § 5(a), 33 Stat. 724, 725. This court and its predeces-
sor have long assumed that the prohibition “is not an
attempt to legislate morality, but, rather, a judgment by
the Congress that [scandalous] marks not occupy the
time, services, and use of funds of the federal govern-
ment.” In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374
(Fed. Cir. 1994) (quotation marks omitted). Because a
refusal to register a mark has no bearing on the appli-
cant’s ability to use the mark, we have held that § 1052(a)
does not implicate the First Amendment rights of trade-
mark applicants. See id.
As might be expected, what constitutes “immoral . . .
or scandalous matter” has evolved over time. See id. at
1372. The formal legal framework, however, has remained
consistent: in order to refuse a mark, “the [Patent and
Trademark Office (PTO)] must demonstrate that the
mark is ‘shocking to the sense of truth, decency, or propri-
ety; disgraceful; offensive; disreputable; . . . giving offense
3 IN RE FOX
to the conscience or moral feelings; . . . [or] calling out
[for] condemnation.’” Id. at 1371 (second and third altera-
tions in original) (quoting In re Riverbank Canning Co.,
95 F.2d 327, 328 (CCPA 1938)). More concisely, and
especially usefully in the context of this case, the PTO
may prove scandalousness by establishing that a mark is
“vulgar.” In re Boulevard Entm’t, Inc., 334 F.3d 1336,
1340 (Fed. Cir. 2003). This demonstration must be made
“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.” Mavety, 33 F.3d at 1371 (quotation marks
omitted).
Where the meaning of a mark is ambiguous, mere dic-
tionary evidence of a possible vulgar meaning may be
insufficient to establish the vulgarity of the mark. See id.
at 1373-74. But where it is clear from dictionary evidence
“that the mark[] as used by [the applicant] in connection
with the [products] described in [the] application” invokes
a vulgar meaning to a substantial composite of the gen-
eral public, the mark is unregistrable. See Boulevard, 334
F.3d at 1341.
II
The mark at issue here has two parts: a literal ele-
ment, consisting of the words COCK SUCKER, and a
design element, consisting of a drawing of a crowing
rooster. Since 1979, Fox has used this mark to sell
rooster-shaped chocolate lollipops, which she “displays . . .
in retail outlets in small replicas of egg farm collecting
baskets to emphasize the country farmyard motif.” Appel-
lant’s Br. 6 (quotation marks omitted). The consumers
targeted by Fox’s business are, primarily, fans of the
University of South Carolina and Jacksonville State
IN RE FOX 4
University, both of which employ gamecocks as their
athletic mascots.
In September 2001, Fox applied to register her mark
for use in connection with “[c]hocolate suckers molded in
the shape of a rooster.” J.A. 14. On her application form,
she indicated the literal portion of the mark as “Cock-
Sucker.” J.A. 16. In December 2001, the PTO examiner
determined that the mark “consists of or comprises im-
moral or scandalous matter,” and is therefore unregistra-
ble under § 1052(a). J.A. 21. Specifically, the examiner
found that a dictionary defined “cocksucker” as “someone
who performs an act of fellatio.” Id. (quotation marks and
ellipsis omitted).
In June 2002, Fox filed a response, noting that that
“Webster’s Dictionary defines . . . a cock as a rooster, and .
. . a sucker as a lollipop,” and asserting that these non-
vulgar definitions, which match both the product design
and the design element of the mark, are “more relevant”
than the vulgar definition. J.A. 25. In December 2002, the
PTO suspended further action on Fox’s application, pend-
ing disposition of a potentially conflicting trademark
application.
In July 2008, after the conflicting mark was aban-
doned, the PTO issued a final refusal. The examiner
conceded that Fox had presented “evidence potentially
supporting an equally relevant non-scandalous meaning,”
but concluded that “due to the strong meaning of ‘cock-
sucker’ in society in general,” a “substantial composite of
the general public will . . . assign the scandalous meaning
to the wording/mark.” J.A. 37.
Fox filed a motion for reconsideration, in which she
clarified that “the intended term to be trademarked was
COCK SUCKER [(with a space)], not COCKSUCKER,”
and included a revised image of her mark in which the
5 IN RE FOX
two words were clearly separated. J.A. 65. Fox protested
that 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,”
and also reiterated that the rooster design was intended
to “guid[e] the potential purchaser to the less risqué of the
two definitions.” J.A. 65.
In August 2009, the examiner responded, noting that
“COCK is defined . . . as ‘penis,’ and SUCKER as, ‘one that
sucks,’” and that both words are considered vulgar “as
used in context.” J.A. 121 (emphasis in original). Conced-
ing 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-
equivocal[ly]” assume their vulgar meanings. J.A. 122.
The examiner continued the refusal, however, to allow
Fox to respond to several questions.
In her May 2010 response, Fox argued that her pro-
posed definitions of the disputed terms (“rooster” and
“lollipop,” respectively) would be “more relevant” than
those put forward by the examiner. J.A. 155 (emphasis in
original). Fox also argued at length that in light of con-
temporary attitudes, the mark was not vulgar.
In a final office action in May 2011, the examiner reit-
erated the view that “the widely known and strong uni-
tary meaning of ‘cocksucker’ in society would lend [the
meaning ‘penis sucker’] to the individual . . . wordings
COCK & SUCKER as opposed to the ‘rooster lollipop’
meaning.” J.A. 170.
Fox appealed to the Board, which affirmed the exam-
IN RE FOX 6
iner’s refusal. In her brief, Fox once again did not argue
that the examiner’s proposed definition was entirely
inapposite, but rather asserted that the non-vulgar defini-
tion was, “in [her] opinion, more relevant” in light of
consumer perceptions of “the product as a whole.” J.A. 182
(emphasis in original). The Board concluded that “[t]he
word portion of applicant’s mark . . . , when used in con-
nection with applicant’s products, creates a double enten-
dre[, where] one meaning is one who performs fellatio[]
and the other meaning is a rooster lollipop.” J.A. 6. The
Board noted that “[t]he term ‘Cocksucker’ is uniformly
identified as a vulgar term in dictionaries,” and “g[a]ve
very little weight to [Fox’s] argument [that] COCK
SUCKER has a different meaning than COCKSUCKER.”
J.A. 7. The Board concluded that “the evidence supports
the fact that the term COCK SUCKER is vulgar and,
therefore, is precluded from registration under
[§ 1052(a)].” J.A. 8.
Fox timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(B).
DISCUSSION
“The determination that a mark comprises scandalous
matter is a conclusion of law based upon underlying
factual inquiries.” Mavety, 33 F.3d at 1371. Factual
findings of the Board are reviewed for the presence of
substantial evidence, In re Coors Brewing Co., 343 F.3d
1340, 1343 (Fed. Cir. 2003), while its ultimate conclusion
as to registrability is reviewed de novo. Mavety, 33 F.3d at
1371. The burden of proving that the proposed mark is
unregistrable under 15 U.S.C. § 1052(a) rests on the PTO.
Id.I
Fox first argues that the Board lacked substantial
7 IN RE FOX
evidence to support its finding that her mark has a vulgar
meaning. Properly interpreted, Fox argues, the literal
element of her mark means only “rooster lollipop.”
This argument is without merit. As an initial matter,
Fox concedes that “cocksucker” is a vulgar term in its
common usage, and the dictionary evidence is devoid of an
alternate, non-vulgar definition for that word.1 Fox urges,
however, that “[i]n the present case, the space between
the words makes all the difference.” Reply Br. 10. How-
ever, Fox concedes that a mark’s “sound” is central to its
“commercial impression” for purposes of § 1052. See
Appellant’s Br. 32 (citing Palm Bay Imps. v. Veuve Clic-
quot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
1372 (Fed. Cir. 2005)). Fox, moreover, has admitted that
her mark at least in part has a vulgar meaning. She
acknowledged that “the . . . humor of the mark is derived”
from “[the] possibility of [a] double entendre,” consisting
of a vulgar and a non-vulgar meaning. See J.A. 181; see
also Appellant’s Br. 25 n.1. At oral argument, she con-
ceded that her mark, if used to sell sweaters, would be
unregistrable as vulgar. We think that the Board did not
err in concluding that the distinction between
COCKSUCKER and COCK SUCKER is a distinction
1 The American Heritage Dictionary defines “cock-
sucker” as “[o]ne who performs an act of fellatio” or “[a]
mean or despicable person,” and indicates that the word is
“[v]ulgar [s]lang” in either use. The American Heritage
Dictionary of the English Language 355 (5th ed. 2011). 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,” Boule-
vard, 334 F.3d at 1340, this determination lends credibil-
ity to the Board’s finding that “cocksucker” is a vulgar
term.
IN RE FOX 8
without a difference. So too the association of COCK
SUCKER with a poultry-themed product does not dimin-
ish the vulgar meaning—it merely establishes an addi-
tional, non-vulgar meaning and a double entendre. 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.”
II
Next, Fox argues that even if the mark is found to
have a vulgar meaning, our precedent affords the mark
special solicitude as a double entendre.2 In particular, Fox
argues that when a mark is a double entendre, with one
vulgar and one non-vulgar meaning, the PTO must dem-
onstrate that the public would “choose” the non-vulgar
meaning. We believe that Fox misreads our precedent.
As an initial matter, there is no requirement in the
statute that a mark’s vulgar meaning must be the only
relevant meaning—or even the most relevant meaning.
Rather, as long as a “substantial composite of the general
2 The Board defined a “double entendre” as “a term
that has . . . a double meaning[, or] a word or expression
used in a given context so that it can be understood in
[two] ways, esp[ecially] when one meaning is risqué.” J.A.
6 (quotation marks omitted). Fox provides a similar
definition, derived from the PTO’s regulations regarding
merely descriptive marks: “[a] double entendre is a word
or expression capable of more than one interpretation . . .
[and] that has a double connotation or significance as
applied to the goods or services.” Appellant’s Br. 20 (quo-
tation marks omitted) (emphasis, omission, and second
alteration in original).
9 IN RE FOX
public” perceives the mark, in context, to have a vulgar
meaning, the mark as a whole “consists of or comprises . .
. scandalous matter.” See 15 U.S.C. § 1052(a) (emphasis
added); Boulevard, 334 F.3d at 1340. The word “com-
prises,” at the time of the statute’s enactment in 1905,
meant “includes.” See Webster’s Academic Dictionary 121
(Springfield, Mass., G. & C. Merriam Co. 1895). Congress
thus chose to extend the prohibition not only to marks
that “[c]onsist[] of . . . scandalous matter,” but also to
marks that include scandalous matter. Fox concedes that
the mark’s effect as a humorous double entendre requires
the consumer to “understand[]” the risqué as well as the
banal meaning of the mark. Appellant’s Br. 25 n.1. We
therefore see no reason why the PTO is required to prove
anything more than the existence of a vulgar meaning to
a substantial composite of the general public in order to
justify its refusal.
Nor do we agree with Fox that the precedent excludes
double entendres from the statutory bar. Fox attempts to
derive this rule from two of our cases: Mavety, 33 F.3d
1367, and Boulevard, 334 F.3d 1336.
In Mavety, the court considered the mark BLACK
TAIL as applied to “an adult entertainment magazine
featuring photographs of both naked and scantily-clad
African-American women.” Mavety, 33 F.3d at 1368-69.
The Board affirmed the examiner’s refusal to register the
mark, citing a vulgar dictionary definition of “tail” as “a
female sexual partner.” Id. at 1369-70. The applicant
appealed, citing the ambiguity created by the presence of
two alternative, non-vulgar meanings: “a woman’s rear
end,” and “a type of evening coat . . . worn by men at
formal occasions.” Id. The court reversed, holding that
“[i]n view of the existence of . . . an alternate, non-vulgar
definition” (a woman’s rear end), the Board erred by
refusing registration based solely on the existence of a
IN RE FOX 10
vulgar dictionary definition, without identifying any
“[extrinsic] evidence as to which of these definitions the
substantial composite would choose.” Id. at 1373-74.
Nowhere in its opinion did the court describe the constel-
lation of meanings at issue as a “double entendre”; to the
contrary, it described the different meanings as “alter-
nate[s].” Id. Mavety is thus a case about ambiguous
marks, and does not control a case, such as this one, in
which the conceded effect of the mark is to invoke a
“double meaning.” See 3 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 19:77 (4th ed.
2012) (describing Mavety as turning on the presence of
“reasonable ambiguity” regarding the mark’s interpreta-
tion).
In Boulevard, this court dealt with a situation in
which the only pertinent definition of the term at issue
was vulgar. Boulevard, 334 F.3d at 1339-40. The court
upheld the Board’s decision affirming the PTO’s refusal,
even though the PTO had relied exclusively on dictionary
evidence. Id. at 1340-41. The court also distinguished
other examples of marks approved for registration as
involving “double entendres.” Id. at 1341, 1343. Boulevard
does not suggest, however, that a mark that includes a
double entendre is exempt from the prohibition of
§ 1052(a) when the mark would be seen by a substantial
composite of the general public as having both a vulgar
and a non-vulgar meaning. Id. at 1341.3
3 Fox also relies on the Board’s decision in In re
Hershey, 6 U.S.P.Q.2d 1470 (T.T.A.B. 1988). Because
Hershey does not bind us as precedent, we do not decide
whether Hershey supports Fox’s position, or whether
Hershey was correctly decided. To the extent, however,
that Hershey can be read to suggest that a mark that
clearly is recognizable as a double entendre is exempt
11 IN RE FOX
Nor could treating double entendres differently be
justified in light of the statutory objectives. A double
entendre is a term that has a “double meaning,” or a
“double connotation.” See supra note 2. That is, in order to
be a double entendre, the term must rely on the public to
perceive and understand both meanings. Fox concedes as
much, stating that “the essence of a double entendre”
requires the consumer to “understand[] and draw[] a
distinction between the [two] meanings.” Appellant’s Br.
25 n.1.
Nonetheless, Fox urges us to apply to vulgar double
entendres the presumption of registrability applied by the
PTO to double entendres one of whose meanings is merely
descriptive under § 1052(e)(1). See TMEP § 1213.05(c)
(8th ed. 2011). Apart from the fact that we are not bound
by the PTO’s regulations, however, we find this analogy
unpersuasive. Section 1052(a)’s ban on vulgar marks is
demonstrably different from § 1052(e)(1)’s prohibition on
descriptive marks. Section 1052(e)(1), unlike § 1052(a),
omits the words “or comprises,” and further specifies that
a mark must be “merely descriptive.” § 1052(e)(1) (empha-
sis added). Thus, § 1052(e)(1) is inapplicable if any one of
the meanings is not merely descriptive.
We recognize that there are “whimsical” and humor-
ous aspects to Fox’s mark. See Appellant’s Br. 43. But the
fact that something is funny does not mean that it cannot
be “scandalous.” Indeed, the Supreme Court in Pacifica,
in determining that the use of the word “cocksucker” is
generally patently “indecent” under 18 U.S.C. § 1464,
made a point of noting that “[t]he transcript of [humorist
George Carlin’s] recording . . . indicates frequent laughter
from the audience.” FCC v. Pacifica Found., 438 U.S. 726,
from § 1052(a) for that reason alone, that is an incorrect
reading of the statute.
IN RE FOX 12
729 (1978).
Nothing in this decision precludes Fox from continu-
ing to sell her merchandise under the mark at issue, or
from seeking trademark protection for some other, other-
wise registrable element of her product’s design, dress, or
labeling. If Fox is correct that the mark at issue “bring[s]
[nothing] more than perhaps a smile to the face of the
prospective purchaser,” Appellant’s Br. 43 (second altera-
tion in original), then the market will no doubt reward
her ingenuity. But this does not make her mark registra-
ble.
III
Finally, Fox urges that because there is doubt as to
how the general public would view her mark, the court
should permit the mark to be published for registration,
relying on opposition proceedings under 15 U.S.C. § 1063to bring to light any public objections to the mark. Fox is
correct to note that this court has sometimes in the past
suggested this approach where the registrability of the
mark is uncertain. See Ritchie v. Simpson, 170 F.3d 1092(Fed. Cir. 1999); Mavety, 33 F.3d at 1374. Here there is no
uncertainty. Where, as here, the PTO has properly deter-
mined that a mark is “scandalous” within the meaning of
§ 1052(a), there is no obligation to publish the mark for
potential opposition proceedings. Congress has empow-
ered the PTO to serve as the first line of defense against
“scandalous” marks (subject to review by the Board, this
court, and, if necessary, the Supreme Court), and this
court has no authority to read such a power out of exis-
tence. Cf. United States v. Tohono O’odham Nation, 563
U.S. __, __, 131 S. Ct. 1723, 1730 (2011) (“Courts should
not render statutes nugatory through construction.”). If
Congress decides that this initial screening is an unwise
use of the PTO’s limited resources, it is, of course, free to
13 IN RE FOX
amend § 1052.
To reiterate, the outcome of our decision is that Fox
will remain free to use her mark in commerce. She will be
unable, however, to call upon the resources of the federal
government in order to enforce that mark.
CONCLUSION
We find that substantial evidence supports the
Board’s determination that Fox’s mark, taken as a whole
and in context, has a vulgar meaning that will be per-
ceived by a substantial composite of the general public.
The Board did not err in concluding that this finding is
sufficient to establish that the mark “[c]onsists or com-
prises . . . scandalous matter” within the meaning of 15
U.S.C. § 1052(a), and is not registrable.
AFFIRMED