Austin Technology Law Blog
USPTO Comes Down Squarely Somewhere On the Sliding Scale of Scandoulousity. Why Is C**ksucker More "Scandalous" Than Big P*cker?
Section 15 U.S.C. § 1052(a) prohibits the registration of a trademark that is "...immoral, deceptive, or scandalous".
In September of 2001, Ms. Marsha Fox, an enterprising marketeer, applied for a trade mark for "Cock Sucker" accompanied with a picture of a male chicken. This mark was to be applied to a chocolate candy sucker shaped like a rooster. The target market was likely followers of college teams with Game Cocks as a mascot, such as the University of South Carolina, who have displayed a consistent fetish with double entendres relating to the work "cock" even though the original reference was to a Revolutionary War hero, Thomas Sumter, for his small size and fierce attitude.
The USPTO rejected the application by finding that it was scandalous or vulgar. The USPTO recognized that there was a non-vulgar meaning to the phrase but that the vulgar meaning was so egregious that it overrode the right of the applicant to register the mark. This was true even though the USPTO has allowed such marks as "Big Pecker", "Tits", "Big Cock Ranch" and "Cock Rub". The Court neglected to consider that an alternate meaning to Cock Sucker might be to refer to the people who shell out good money to purchase such a confection, although I am sure they are preferred party favors at fraternity parties all over Columbia.
Right before the holidays, the Court of Appeals for the Federal Circuit upheld the USPTO's rejection, including rejecting a First Amendment argument because the court reasoned that the applicant could still use the mark, she just couldn't register and protect it.
So, where does this leave the aspiring applicant of a killer mark that has both a scandalous and non-scandalous meaning? Good question. If you can make a distinction on any of these, it would seem that if it is listed in the Urban Dictionary as a sex act, it is in peril. If it is only a reference to a body part, maybe a little safer. The USPTO will let you know when they see it.