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.

USPTO Has Really Busy Year - Record Number of Patents Issued

According to IFI, the United States Patent and Trademark Office granted 219,614 patents in 2010.  This is 31% more than was granted in 2009 and 29% more than granted in the next busiest year (2007).  Granted applications took a big jump around 1998 when software patents began to be granted with more regularity (thanks, State Street Bank case).

Not everybody is happy about this, as some see this as merely an effort by the USPTO to reduce their backlog (now standing at 720,000+) and not as an increase in efficiency and quality.

In any event, a lot of patents were issued and the pace seems to be increasing.  Happy days are here again.

Apple Seeks To Trademark "App Store". Microsoft says "Not So Fast".

Apple filed a trademark application for the term "App Store" in 2008.  Microsoft is opposing such application and has filed a motion for summary judgment with the USPTO alleging, among other things, that the term is generic.  As you know, if a term or word merely describes what it is, then it is generic and will usually not be granted trademark protection.  Examples of generic phrases that were turned down as marks are cited in Microsoft's brief in support of their summary judgment motion and include "The Computer Store", "Shoe Warehouse" and "Discount Auto Parts Warehouse".


Want to know what the odds are that the USPTO is apt to axe "App Store"?  There should be an app for that.

Patent Office Relaxes Rules for Green Technologies

In an effort to spur more green technology innovation and business development, the USPTO has decided to alter the application process for green technology related patents.  The initiative is a part Green Technology Pilot Program that allows a fast-track process for patents relating to green technology.  Under the pilot program, inventions related to green technology include:

  • discoveries related to renewable energy
  • more efficient use of energy resources
  • a reduction in greenhouse gas emissions

The average review time for green technology patents is 30 months.  The USPTO hopes to shorten that time frame and examine over 3,000 patents in the first year.  So far, under the Green Technology Pilot Program there have been over 950 requests for accelerated review and only 342 requests granted.  These new rules are aimed to alleviate that problem.