November 04, 2015

“NUT SACK” BEER GETS APPROVAL

by Guest Blogger


Beer can sometimes be described as having a nutty flavor. Some brands have NUT in the name. But, what if the beer is called NUT SACK? Is it offensive or humorous?

Engine 15 Brewing Co., located in Jacksonville Beach, Florida, is trying to register the trademark NUT SACK DOUBLE BROWN ALE for the name of one of its beers. Here is the label:

Nut

Engine 15's application for a trademark registration was initially refused registration based on the examiner's determination that the mark is immoral and scandalous because "nut sack" is slang for a part of the male anatomy. The examiner found the mark NUT SACK DOUBLE BROWN ALE would be perceived as offensive to a substantial composite of the general public. Thus, the application was refused registration under Section 2(a) of the Trademark Act, which prohibits registration of immoral and scandalous marks.

Engine 15 appealed the refusal to the Trademark Trial and Appeal Board and succeeding in getting the refusal reversed. The Board considered the prevalent use of the term "nut" and "nutty" in connection with beer flavor profiles and found that target consumers with "contemporary attitudes" would see the attempt at humor rather than being offended. The Board also threw in a Christian Grey reference, noting that determinations of whether marks are too scandalous to be registered "involve various shades of grey."

The U.S. Patent and Trademark Office and the courts have wrestled with the shades of grey to try to discern the boundaries of what should be refused registration as improper under contemporary attitudes about vulgarity, disparagement, and acceptability. Section 2(a) of the Trademark Act governs unregistrability of both scandalous/immoral marks and disparaging marks, but these refusal grounds are not synonymous.

Several trademark registrations owned by the Washington Redskins were ordered to be cancelled based on determinations that REDSKINS is an offensive and disparaging term to Native Americans. The Washington Redskins are appealing the decision to the United States Court of Appeals for the Fourth Circuit in Virginia. In a bold tactic, their appeal brief cites a slew of other registrations issued by the U.S. Patent and Trademark Office that contain terms that are racist or offensive but which are allowed to be registered and challenges the government's ability to strip them of their registrations based on the free speech protections of the First Amendment to the Constitution.

Football

Another pending case involves a band comprised of all Asian-Americans who calls themselves The Slants. The U.S. Patent and Trademark Office refused registration of their band name, finding "slants" to be disparaging to Asians. The band argued, however, that they should be allowed to comment on Asian stereotypes under their right of free speech and call themselves whatever they want. Their case is pending before the United States Court of Appeals for the Federal Circuit.

Band

Other recent scandalous cases have concerned the use of expletives in trademarks. As we previously blogged here, the Board affirmed the U.S. Patent and Trademark Office's refusal to register the mark

fk

as being scandalous or immoral. While no one has successfully registered a mark containing the expletive "F@!K", several registrations have issued that contain the expletive "B!@ch". A series of applications filed by Rowdy Ronda, Inc. (associated with UFC Ronda Rousey) were recently approved for registration. These applications seek to register the mark DO NOTHING B***H (except that the mark replaces the asterisks with "itc"). Ms. Rousey has explained that her tag line refers to the kind of woman her mother raised her not to be.

If we are viewing trademarks through the lens of "contemporary attitudes", whether something is too immoral, scandalous, or disparaging to be registered as a trademark no longer is measured by what your mother would think. We may soon find out what the Supreme Court thinks if either the Washington Redskins case or The Slants case gets further appealed. If the Court ultimately agrees that either mark is unregistrable, there will still remain a question as to whether the marks can still be used by the groups even if not registered, and what protections they may be afforded. Stay tuned for more developments.

The television show South Park, in its true-to-form irreverence, had a field day with the Washington Redskins trademark battle. If you are not offended by South Park generally, or if you are offended by South Park but are more offended by use of the term "Redskins", you may find this funny:

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