In a ruling bound to please 15 year-old boys everywhere, the USPTO Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal to register the trademark NUT SACK DOUBLE BROWN ALE (in standard character format) for “beer” on the ground that it was immoral and scandalous under Section 2(a) of the Trademark Act. In re Engine 15 Brewing Co., LLC, Serial No. 86038803 (October 29, 2015) [not precedential].
The applicant, a small brewery based in Jacksonville Beach, Florida, filed its application for NUT SACK as two separate words, and adding the descriptive DOUBLE BROWN ALE to form a composite whole.
That nuance and combination was not enough for the Trademark Examining Attorney, who issued a final refusal to register the trademark under § 2(a) of the Lanham Act. 15 USC § 1052(a). Section 2(a) of the Trademark Act prohibits registration of a trademark that “consists of or comprises immoral, deceptive, or scandalous matter….” In order to refuse registration under this provision of the Act, the USPTO “must demonstrate that the mark is shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … [or] calling out [for] condemnation.” In re Fox, 702 F.3d 633, 105 USPQ2d 1247, 1248 (Fed. Cir. 2012). The USPTO may prove that a mark is scandalous and refuse registration by establishing that the mark is “vulgar.” This demonstration must be made in the context of contemporary attitudes, in the context of the marketplace as applied to the goods described in the application, and from the standpoint of not necessarily a majority, but a substantial composite of the general public. That was the view of the Trademark Examining Attorney.
The TTAB reversed. The TTAB noted that where the meaning of a mark is ambiguous, mere dictionary evidence of a possible vulgar meaning may be insufficient to establish the absolute vulgarity of a mark. For example, In re Mavety Media Group, Ltd., 33 F.3d 1367 (Fed. Cir. 1994), the Federal Circuit reversed the TTAB’s refusal to register BLACK TAIL for an adult entertainment magazine featuring lascivious photographs of black women. In so doing, the Federal Circuit noted that TAIL had at least three definitions: (1) the vulgar definition of “female sexual partner,” (2) the “non-vulgar” definition of “a woman’s rear end,” and (3) the non-vulgar definition of “a type of evening coat worn by men on formal occasions.” Because the word “Tail” had multiple definitions, only one of which was vulgar, the Federal Circuit ruled that the mark as a whole was ambiguous, and therefore capable of registration.
In this case, the Examining Attorney made of record dictionary definitions from Urban Dictionary, Random House Historical Dictionary of American Slang Wiktionary, web-definition.com, and others, all defining “nut sack” as scrotum, and characterizing the term as “slang, vulgar.” For its part, Applicant argued that “Nut Sack” has an innocuous connotation: the word “nut” standing alone has an innocuous connotation when used in connection with “nut brown ale.” In the context of these particular goods, the word “nut” could clearly to describe a flavor or style of ale, rather than being an obvious reference to scrotums. The TTAB considered this connotation to be reinforced by the other components of the trademark, namely “Double Brown Ale,” which has a specific meaning in the beer industry.
What won the day for the applicant, however, was not the importance of the word “nut” as a character of the flavor of ale, but rather changing social mores: the TTAB’s judgment that “contemporary attitudes toward coarse language are more accepting than they had been in earlier eras.” The TTAB acknowledged that the term NUT SACK “may well raise eyebrows at a formal dinner party.” But as to whether it is “shocking …; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feeling; … calling out [for] condemnation,” the TTAB observed that many slang terms are used actually because the formally correct, clinical word for the thing itself seems to be “uncomfortably potent.” The TTAB found this precept to be particularly true with respect to parts of the human body, in which case speakers adopt the slang terms precisely because they seem less indelicate than the formally correct or technical terminology. The TTAB reasoned that some terms may seem “somewhat taboo in polite company, but are not so shocking or offensive as to be found scandalous within the meaning of the statute.” Moreover, beer is an adult beverage, often associated with or resulting in the relaxation of inhibitions.
The TTAB concluded that “beer drinkers can cope with Applicant’s mark without suffering meaningful offense.” Even when the consumer thinks of body parts or insults, he or she is still likely to see the mark as an attempt at humor. The TTAB reversed the refusal. Although non-precedential, the decision provides an interesting insight into the boundaries of vulgarity and “immoral and scandalous matter” before the TTAB.