October 07, 2015

[Expletive Deleted].

So said the TTAB in a recent non-precedential opinion. In In re Giorgio S.R.L., Ser. No. 79/141,996 the Board affirmed the examining attorney's refusal to register the mark:

on the ground that it is scandalous or immoral and thus precluded from registration under Section 2(a) of the Lanham Act. The case generated three opinions. The dissent would have held that the asterisks prevented the term from being scandalous. The concurring judge would have agreed with the dissent but for precedent, and thus sided with the majority, which said the asterisks do not reduce or mask the vulgarity of the term.

We will let you assess the term for yourself.

Section 2(a) has been in the news a great deal recently because of the U.S. District Court for the Eastern District of Virginia's decision affirming cancellation of marks disparaging to Native Americans in Pro-Football, Inc. v. Blackhorse et al., Case No. 1:14-cv-01043-GBL-IDD (E.D. Va. July 8, 2015) (currently on appeal) and the appeal from the TTAB's refusal to permit registration of a mark disparaging to Asian Americans, In re Tam, Ser. No. 85/472,044 (TTAB Sept. 23, 2013). Both of these cases focus on the part of Section 2(a) that prohibits registration of disparaging marks (as opposed to scandalous matter, the focus of the case cited at the beginning of this post).

Section 2(a) governs unregistrability of both scandalous/immoral matter and disparaging marks, but these refusal grounds are not synonymous. The first step of the analysis for each ground is determining the likely meaning of the term, but the tests differ at the second step. While determining whether a term is immoral or scandalous involves discerning the current mores of society, determining whether a term is disparaging requires evaluation of whether a substantial composite of the persons or institutions at issue perceive it as disparaging.

Last week, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in In re Tam, en banc Fed. Cir., No. 2014-1203. Coincidentally, the very same day, an examining attorney completed review of a series of applications filed by Rowdy Ronda, Inc. (associated with UFC Ronda Rousey). These applications seek to register the mark DO NOTHING B***H (except that the mark replaces the asterisks with "itc") in connection with a variety of goods and services. They are scheduled to be published next month. Ms. Rousey has explained that the tag line refers to the kind of woman her mother raised her not to be. And Ms. Rousey holds such a person in contempt.

Are you surprised this mark does not violate Section 2(a)?

A search of the PTO database reveals over 300 live applications and registrations for marks containing the pejorative slang term for "woman." Without an exhaustive review, I saw none that even had to make an argument to overcome an Section 2(a) refusal. Perhaps social mores have changed over time, or maybe few women perceive disparagement in the term. But I don't expect anyone to be more inclined to challenge Ms. Rousey in court on the issue than they are in the ring.