Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE STEVEN HERSHEY, DBA SEASIDE GRAPHICS
Serial No. 500,340
March 10, 1988
Hearing: January 21, 1988
Ellsworth M. Jennison and Kathryn Jennison Shultz for applicant
Trademark Examining Attorney
Law Office 5
(Paul E. Fahrenkopf, Managing Attorney)
Before Simms, Krugman and Cissel
Steven Hershey has applied to register "BIG PECKER BRAND" ("BRAND" disclaimed) as a trademark for imprinted clothing and sportswear, namely, T-shirts. [FN1]
Registration has been refused on the ground that the mark comprises scandalous matter and is thus prohibited registration under Section 2(a) of the Trademark Act. Specifically, it is the Examining Attorney's position that scandalous marks are those which are offensive or shocking to a substantial composite of the general public, and include innuendo, vulgarity and profanity; that "pecker" is a slang or vulgar expression for "penis" as evidenced by dictionary definitions made of record herein; that while other meanings for "pecker" exist, the record shows that the term has retained its vulgarity and its popular recognition, as evidenced by excerpts from articles taken from the NEXIS research data base; that the term "big" contributes to the vulgarity of the mark sought to be registered referring to the size of a penis and that the descriptive, disclaimed word "brand" does not have any trademark significance.
The Examining Attorney has relied on definitions of "pecker" from the Dictionary of American Slang (Second Supplemental Edition, 1975), wherein the term is defined as: "1. The penis. colloq., rapidly becoming archaic"; The American Thesaurus of Slang (1947), wherein slang references to male genitalia include the term "pecker," and Webster's Third New International Dictionary (1981), which defines "pecker," inter alia, as "3. Penis--often considered vulgar." The Examining Attorney has further relied on articles retrieved from the NEXIS research data base from various publications such as Playboy, Medical Economics, Financial Times and Newsweek wherein the word "pecker" is used to refer to a penis.
Applicant has appealed, arguing that the term "pecker," as used by applicant, refers to a chicken or a rooster; that the trend in case law demonstrates a more contemporary attitude toward language and evidences a more liberal approach to what constitutes scandalous or vulgar language; that many marks have been allowed registration which contain words having different meanings and possible innuendos; that the term "pecker" has various dictionary definitions including "(1) one that pecks: as (a): an instrument for pecking (as a pick) (b): woodpecker (c): a bird's bill (2) nose...." (Webster's Third New International Dictionary, 1981); that the term also is a surname, as evidenced by various telephone directories made of record, and that registration should be allowed. [FN2]
Applicant, in support of its position, has relied on a number of dictionary definitions, telephone directories and file wrappers of applications for other trademarks by third parties.
*2 As stated by our reviewing court in its most recent decision regarding a Section 2(a) refusal on the ground that the mark comprises immoral or scandalous matter, to determine whether a designation is properly refused as scandalous, the mark must be considered in the context of the marketplace as applied to the goods or services described in the application. See: In re McKinley, 660 F.2d 481, 211 USPQ 668 (CCPA 1981). Whether the mark is scandalous must be ascertained from the standpoint of not necessarily a majority, but a substantial composite of the general public. Id. In determining what is a "scandalous" use of a mark, the Court noted various dictionary definitions of the term meaning "giving offense to the conscience or moral feelings, exciting reprobation, calling out condemnation ... disgraceful to reputation...." (Webster's New International Dictionary 2nd. ed., 1942); "shocking to the sense of truth, decency or propriety; disgraceful, offensive, disreputable, as scandalous conduct" (Funk & Wagnalls New Standard Dictionary, 1945).
Recognizing that the above guidelines are somewhat vague and that a determination that a mark is scandalous is necessarily a highly subjective one, we do not find "BIG PECKER BRAND" to be a scandalous mark as applied to T-shirts and we reverse the refusal of registration.
While the Examining Attorney has demonstrated that "pecker" is a slang expression for penis, one reference, The American Thesaurus of Slang, bears a 1947 copyright notice indicating that said reference is over forty years old. The more recent reference, the 1975 edition of The Dictionary of American Slang, indicates that use of the term "pecker" meaning penis is rapidly becoming archaic. Accordingly, these references, while relevant, do not carry great weight in determining whether a substantial number of the general public even recognize the term "pecker" as a slang word for penis. The Examining Attorney's remaining evidence consists of the 1981 Webster's Third New International Dictionary in which the third definition of "pecker" is "penis-- often considered vulgar" and some six articles retrieved from the NEXIS data base where the term is used to refer to a penis. In our view, this evidence, standing alone, is at best marginal to demonstrate that the mark is a vulgar, slang reference to male genitalia and would be recognized as such a reference by a substantial composite of the general public. Moreover, applicant has demonstrated from dictionary definitions of "pecker" that its primary meanings to the public are innocuous, namely, one that pecks, a woodpecker or a bird's bill.
In addition, while not part of the mark sought to be registered, the specimens of record comprise labels showing a design of a bird appearing below the mark. A photocopy is reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
We fully recognize that the bird design may be removed at any time, but the specimens do serve to buttress the applicant's contention that the mark is not intended to refer to male genitalia but, rather, refers to the more common meaning of a bird's beak. [FN3] Moreover, we think the inclusion of the bird design would make it less likely that purchasers would attribute any vulgar connotation to the word mark and we note that it is proper to look to the specimens of record to determine connotation or meaning of a mark. See: Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (CAFC 1984).
*3 We conclude, therefore, that the term "BIG PECKER BRAND" is, at most, a double entendre, one meaning of which may be a vulgar reference to male genitalia. However, considering the relative paucity of evidence concerning the public's perception of "pecker" as referring to penis and considering the bird head design on the specimens reinforcing the more conventional meaning of the term, we believe the mark neither offends morality nor raises scandal, and we reverse the refusal of registration under Section 2(a).
Decision: The refusal of registration is reversed.
R. L. Simms
G. D. Krugman
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN2. Applicant has raised two other nonsubstantive matters which need to be disposed of at this point. Applicant notes that this application was published for opposition but that, subsequently, jurisdiction over the case was restored to the Examining Attorney. Applicant questions the propriety of restoration of jurisdiction over the case to the Examining Attorney and contends that the Examining Attorney did not have jurisdiction over the case and his subsequent actions were improper. The Board disagrees. The record shows that jurisdiction was restored to the Examining Attorney by the Assistant Commissioner for Trademarks on January 24, 1986. A paper to that effect is in the application file. While applicant, at an oral hearing held before this panel, argued that the Board should overturn the Commissioner's restoration of jurisdiction, applicant has cited no authority for this proposition and we know of none that exists. The Board has no such authority to overturn a Commissioner's ruling and, accordingly, applicant's arguments concerning the restoration of jurisdiction to the Examining Attorney are not believed to be well taken.
Applicant has also contended, during the prosecution of this application, that the NEXIS materials of record should be excluded from consideration for the reason that the articles themselves constitute the best evidence. However, the Board has consistently held that such material may be submitted in lieu of the articles themselves where, as here, the material is offered only to show that the term appeared in the article cited rather than to prove the truth of any of the statements made therein. See: In re Murphy Door Bed Co., Inc., 223 USPQ 1030 (TTAB 1984); In re Capital Formation Counselors, Inc., 219 USPQ 916 (TTAB 1983). Accordingly, applicant's objections to the NEXIS material are not well taken.
FN3. We note the Examining Attorney's contention that use of the word "big" in conjunction with "pecker" evidences the term's connotation relating to penis. However, while we concede that the use of "big" to modify "pecker" does lend some credence to the Examining Attorney's position, we nevertheless believe, based on the entire record before us, that the mark is not a scandalous one. The use of the adjective "big" with the term "pecker" is equally susceptible of referring to a large-sized beak, as evidenced by the representation of the bird in the specimens, and we decline to hold this mark scandalous based on mere speculative argument.
*4 R. F. Cissel
I am in complete agreement with the reasoning communicated above. To suggest that a significant number of potential purchasers of applicant's shirts would be offended by applicant's trademark for them is as unfounded as would be the suggestion that a significant portion of the readers of this opinion have been offended by the manner in which the writer is identified above. I would add to the words of my colleague only to emphasize the lack of support in the record for the notion that "pecker" is merely a slang synonym for "penis". There is no persuasive evidence demonstrating that either term, as applied to these goods, would bring anything more than perhaps a smile to the face of a prospective purchaser of these T-shirts, much less that the word "pecker", appearing as it does on the specimen of record next to a stylized representation of a bird, would be deemed so offensive as to fall within the proscription of the Lanham Act as "scandalous" or "immoral," even when it is evaluated against this vague standard in the least favorable light. In fact, the only evidence on this point is directly to the contrary. Applicant apparently enjoys a reasonable business in selling its goods under this mark. If the double entendre were in fact objectionable, why is it that business has developed to the point where the mark is worth the effort and expense of protecting it with registration? If it were actually so offensive, people simply would not purchase products bearing it.
Admittedly, this is not a constitutional issue involving the right to free speech. Applicant has used and might well continue to use this mark whether or not we find it is entitled to registration under the Lanham Act. Nonetheless, without clearer evidence proving not just that the term refers to a penis, but that such reference would be perceived by the purchasing public as vulgar or scandalous as applied to applicant's goods, applicant is entitled to the benefits of registration.