During this holiday season, those of us who practice intellectual property law need to remember to count our blessings, and surely one of them is Section 2(a) of the Lanham Act, a source of special gifts throughout the year.
The latest delightful present arrived less than a week before Christmas.
Section 2(a) of the Lanham Act, 15 U.S.C. sec. 1052(a), states that no trademark shall be refused registration unless it "consists of or comprises immoral, deceptive or scandalous matter." At least once a year, Section 2(a) results in a memorable published opinion arising out of the U.S. Trademark Office's refusal to register a trademark it deems "scandalous."
Up until this year, my favorite, which I include in the syllabus for the First Amendment class I teach at Washington University School of Law, has been In re Boulevard Entertainment, a 2003 decision by the Federal Circuit Court affirming the refusal to register the trademark 1-800-JACK-OFF for "entertainment in the nature of adult-oriented conversations by telephone," i.e., phone sex. The opinion recounts the applicant's efforts to argue, with a straight face, that "jack off" does not necessarily refer to masturbation and/or is not necessarily vulgar. The Court also rejected the applicant's more serious First Amendment argument, explaining that a refusal to register a mark under section 1052(a) "does not proscribe any conduct or suppress any form of expression because it does not affect the applicant's right to use the mark in question."
Just in time for Christmas this year, the Federal Circuit has given us another present: In re Marsha Fox. The trademark at issue consists of "the words COCK SUCKER and a design element consisting of a drawing of a crowing rooster." As the Court explains, Ms. 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.” Her target audience are "fans of the University of South Carolina and Jacksonville State University, both of which employ gamecocks as their athletic mascots."
In rejecting her application, the examiner at the Trademark Office "discovered" that a dictionary defined "cocksucker" as "someone who performs an act of fellatio." To which Ms. Fox replied that “Webster’s Dictionary defines . . . a cock as a rooster, and . . . a sucker as a lollipop,” and that "these nonvulgar definitions, which match both the product design and the design element of the mark, are “more relevant” than the vulgar definition.
And thus the Court faced that most profound of intellectual property questions: does the term "cock sucker" evoke "one who sucks a penis" or "a rooster-shaped lollipop"? See if you agree with their conclusion. And as you read the applicant's arguments, you may develop a a new appreciation for the term "oral advocacy."