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Media Alerts - In re Fox - Federal Circuit
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December 21, 2012
  In re Fox - Federal Circuit
Headline: Are attempts to register risqué trademarks worth the effort and cost?

Area of Law: Trademarks

Issue(s) Presented: Whether the PTO erred in refusing a mark containing a double entendré with a vulgar meaning

Brief Summary: The court upholds a refusal to register without first publishing a "vulgar" mark for opposition.

Significance: The case is the latest in a line of cases involving risqué marks, few having been published for opposition, much less registered.

Extended Summary:

Since 1979, Marsha Fox has sold chocolate suckers in the form of roosters "primarily, [to] fans of the University of South Carolina and Jacksonville State University, both of which employ gamecocks as their athletic mascots." In 2001, she filed, pro se, to register a mark comprising an image of a gamecock and the literally true description "Cock Sucker."

Her application was refused under § 2(a) of the Lanham Act that precludes registration of immoral or scandalous marks. The Trademark Trial and Appeal Board affirmed in 2011, saying, "consumer statements... corroborate her argument that some consumers find her mark to be inoffensive. Nevertheless, the lollipops are available to all consumers, including parents shopping with children. Moreover, even if some consumers find the product whimsical and innocuous, they may still find that the mark is vulgar."

The court also affirmed the refusal to publish for opposition (opening the door for others to protest) for basically the same reasons. The opinion says, "We recognize that there are 'whimsical' and humorous aspects to Fox's mark. But the fact that something is funny does not mean that it cannot be 'scandalous.'" Copies of the mark are easily found on the Internet, so readers can assess that for themselves.

As the court notes, Fox's ability to use a mark does not depend on registration. Use could run afoul of another law, but thirty-three years of apparently unimpeded use suggests that the risk is small. Also, despite its literal descriptiveness, her mark, taken as a whole, seems fairly strong (meaning that another would have difficulty justifying a close copy), and would have protection under § 43(a)(1)(A) of the Lanham Act in any market she is serving. Were she to market on the Internet, that might include all or most of the country. A national marketing campaign would surely cost less than the fruitless proceedings spanning the past eleven years.

Panel (if known): Dyk, Prost and O'Malley, Circuit Judges

Date of Issued Opinion: Dec. 19, 2012

Docket Number: 2012-1212

Decided: Affirmed

Case Alert Author: Thomas G. Field, Jr.

Counsel: Michael Bressman, Vanderbilt Legal Clinic, for appellant; Thomas Casagrande, Assoc. Solicitor USPTO for appellee.

Author of Opinion: Dyk, Circuit Judge

Case Alert Circuit Supervisor: Thomas G. Field, Jr.

Edited: 01/02/2013 at 05:09 PM by Media Alerts Moderator

    Posted By: Thomas Field @ 12/21/2012 09:12 AM     Federal Circuit  

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