*1 THIS OPINION IS CITABLE AS PRECEDENT OF THE T.T.A.B.
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE WILCHER CORP.
Serial No. 74/306,662
June 13, 1996
W. Scott Brown of Vinson & Elkins L.L.P. for applicant
Trademark Examining Attorney
Law Office 6
(Myra Kurzbard, Managing Attorney)
Before Rice, Quinn and Hairston
Administrative Trademark Judges
Administrative Trademark Judge
An application has been filed to register the mark shown below
for restaurant and bar services. [FN1]
Registration has been finally refused under Section 2(a) of the Trademark Act of 1946, 15 U.S.C. 1052(a), on the ground that applicant's mark consists of or comprises immoral or scandalous matter. Applicant has appealed.
In the recent case of In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994), our primary reviewing court, the Court of Appeals for the Federal Circuit, recounted certain principles governing a refusal to register, under Section 2(a) of the Act, on the ground that the applicant's mark consists of or comprises immoral or scandalous matter. [FN2] Specifically, the Court noted that (1) the Patent and Trademark Office ("PTO") has the burden of proving that a mark consists of or comprises immoral or scandalous matter; (2) that in order to meet this burden of proof, the PTO 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" (quoting from In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (CCPA 1938)); (3) that the question of whether a mark is immoral or scandalous must be determined by considering the mark in the context of the marketplace as applied to the goods specified in the applicant's application; and (4) that whether a mark, including innuendo, comprises scandalous matter is to be ascertained from "the standpoint of not necessarily a majority, but a substantial composite of the general public," (quoting from In re McGinley, 660 F.2d 481, 485, 211 USPQ 668, 673 (CCPA 1981)) and "in the context of contemporary attitudes" (quoting from In re Old Glory Condom Corp., 26 USPQ2d 1216, 1219 (TTAB 1993)).
Other pertinent portions of the Court's opinion in Mavety, supra, at pages 1926-1928, are set forth below:
... Although constantly at odds, progressive views and conservative or traditional thinking participate alike in the formation of the composite of the general public. While we recognize the inherent difficulty of fashioning a single objective measure like a substantial composite of the general public from the myriad of subjective viewpoints, we are duty bound to apply the standard set forth by our predecessor court. ...
*2 In addition, we must be mindful of everchanging social attitudes and sensitivities. Today's scandal can be tomorrow's vogue. Proof abounds in nearly every quarter, with the news and entertainment media today vividly portraying degrees of violence and sexual activity that, while popular today, would have left the average audience of a generation ago aghast. ...
In this case, the record is devoid of factual inquiry by the Examiner or the Board concerning the substantial composite of the general public, the context of the relevant marketplace, or contemporary attitudes. ...
Armed with only personal opinions and dictionary sources, the Board concluded that the mark BLACK TAIL "is an affront to a substantial composite of the general public." ...
... Of course, the PTO may discharge its burden of proving that Mavety's mark BLACK TAIL is scandalous under § 1052(a) through evidence such as consumer surveys regarding the substantial composite of the general public. [FN3] However, we note the view of our predecessor court that the § 1052(a) prohibition against scandalous marks is not "an attempt to legislate morality, but rather, a judgment by the Congress that such marks not occupy the time, services, and use of funds of the federal government." [citation omitted] We therefore commend the practice adopted by the Board in another case to resolve the issue whether a mark comprises scandalous matter under § 1052(a) "in favor of [the] applicant and pass the mark for publication with the knowledge that if a group does find the mark to be scandalous ..., an opposition proceeding can be brought and a more complete record can be established." [citation omitted] ... Indeed, such a procedure establishes a meaningful opportunity for response by the applicant with evidence that a substantial composite of the general public would not consider the mark at issue scandalous in the context of contemporary attitudes and the relevant marketplace. [citation omitted]
In support of the refusal to register in the present case, the Examining Attorney has made of record evidence from the NEXIS data base of stories published in newspapers, magazines, newsletters, and wire services. Specifically, the Examining Attorney has relied upon excerpts from 40 stories in which the term "dickhead" or "dickheads" appears. A thorough examination of these story excerpts indicates that many of them appear to be from foreign publications (primarily British). In the absence of evidence establishing substantial circulation of the foreign publications in the United States, they are not competent to show the significance of the term "dickhead" or "dickheads" to the general American public. However, at least 10 of the excerpts are from United States publications. Representative samples of those excerpts are quoted below (with the term "dickhead" or "dickheads" emphasized for easier reading):
"The 'NYPD Blue' pilot, which concerns a nice-guy cop and his dissolute, alcoholic partner, is a throwback to 'Hill Street,' not 'Cop Rock.' The cops use anatomically correct insults like 'dickhead.' ... 'Too rough': Bochco's coexecutive producer, David Milch, says one third of ABC affiliates may pass on 'NYPD.' But Neil Klockziem, of KRDO-TV in Colorado Springs, thinks nearly half want changes made. 'The language is too rough,' he says."--from a story entitled "The Wild Men of Prime Time" appearing in the June 28, 1993 issue of Newsweek.
*3 "The hour really didn't push the envelope that far, featuring some bare bottoms, one slightly more explicit scene of love-making and several terms seldom if ever heard in prime time, among them 'tits,' 'asshole,' and ' dickhead d.' ABC exec VP of affiliates George Newi told stations that the network is eager 'to hear your reactions and thoughts on the show.' The big question, even from those who applauded the show, is whether ABC will be able to find advertisers willing to support the program in the face of almost-inevitable complaints from self-appointed industry watchdog groups."--from a story entitled "ABC AFFILS HEAR CHIEF EXEC" appearing in the June 10, 1993 issue of Daily Variety.
"When it comes to disparaging epithets, the C word is a must to avoid. For some reason it is a lot worse to refer to someone as the female sex organ than as the male sex organ. I have never been taken to task for calling someone a dickhead, but now I won't even call someone the feline P word when chiding them for lack of bravery."--from a story entitled "Flirting with feminists: how to make time with the fully enfranchised babe" appearing in the April, 1993 issue of Playboy.
"The judge accepted the plea bargain, although in effect he limited the prison sentence to six years. Meholick was transferred to the Pearl Harbor brig, where he was strip-searched and the guards yelled 'Faggot!' 'Queer!' and 'Dickhead!' at him." --from a story entitled "The Silencing of a Sailor; Why Is the U.S. Navy Gagging a Gay Prisoner?" appearing in the March 14, 1993 issue of The Washington Post.
"One man who took part in the operation, a lieutenant described by Gruver as 'that dickhead Calley,' seemed to have a special enthusiasm for the killing. "--from a story entitled "Heroes at the massacre; My Lai Massacre, 1968" appearing in the March, 1993 issue of Playboy.
"Some dickhead announced he could walk on the ocean--oh, yeah, it was me-- but about ten yards out I sank slowly into the slimy sludge ...."--from a story entitled "The biodome chronicles; satire on closed ecological systems" appearing in the March, 1993 issue of Playboy.
"Kay Graham said Bradlee was 'forgotten but not gone.' She said that she once saw a secretary look up from Bradlee's dictation to ask, 'Is dickhead one word or two?"'--from a story entitled "Ben and Sally: Roasting Them Easy" appearing in the November, 1992 issue of Washingtonian.
"By the time Herzog reached Yuma for the first exhibition game, he was familiar enough with the way the organization was being run to say: 'One of our big problems is that some of the dickheads we got working for us think we're competing with the Dodgers, and we're not."' --from a story entitled "THE WIT AND WISDOM OF THE WHITE RAT; WHITEY HERZOG'S OLD-FASHIONED WORK ETHIC AND INNOVATIVE THEORIES MAY BE JUST THE SOLUTION FOR THE STAR-CROSSED ANGELS" appearing in the May 10, 1992 issue of the Los Angeles Times.
*4 In addition, the record includes the specimens of use submitted by applicant, namely, photocopies of a bumper sticker assertedly used in promoting applicant's services. The bumper sticker is shown below (in reduced size):
In response to the evidence relied upon by the Examining Attorney, applicant has submitted two affidavits. The affidavit of Ms. Angela Fontenot states that she is employed by Creative Ideas as a design consultant and marketing representative; that her responsibilities include assisting customers with the design and presentation of various trademarks and service marks and advising the customer as to the public's likely response to a particular mark; that once a particular mark is used on a customer's goods or services, she typically evaluates the actual response given to the mark by the public; that her experience in design consulting and marketing enables her to accurately assess how the public might respond to a particular mark or advertising presentation; that she reviewed the mark which is the subject of this application; and that in her opinion, the mark is not offensive or shocking to a substantial composite of the general public. She gives two reasons for her opinion. First, she asserts that the word portion of the mark, DICK HEADS', refers to a person in the possessive form, because of the use of the apostrophe and the fact that "Dick" is a common nickname for "Richard," so that calling Richard Heads' Bar & Restaurant "Dick Heads"' is acceptable to the public and does not require the public to give the phrase "Dick Heads"' an anatomical interpretation. Second, she states that the design portion of the mark provides recognition to a person's possible anatomical interpretation of the phrase DICK HEADS', but at the same time does so in a clever, cute and humorous manner utilizing a double entendre. Ms. Fontenot also states that she conducted an informal survey of the public's response to the mark; that the overwhelming response of the people surveyed was that they were generally amused by the mark; and that none of the people surveyed found the mark offensive or shocking.
The second affidavit submitted by applicant is that of its president, Robert Ginsburg. Mr. Ginsburg states therein that as president of applicant, he operates Richard Heads' Bar & Restaurant in Houston, Texas; that the establishment has been operating for over six years, providing food and drink to thousands of people; that applicant has spent approximately $24,000 over the past six years "on the DICK HEADS' & Design mark in promoting the food and drink services of Richard Heads' Bar & Restaurant"; that the mark has also been placed on many consumer goods, such as t-shirts and hats; that these items, which have generated revenues of approximately $60,000 for applicant, have been sold throughout the United States and all over the world; that during the years Richard Heads' Bar & Restaurant has been in operation, many thousands of people have seen and commented on the mark; that nearly everyone who has seen the mark seems to smile and be generally amused by it; that applicant has, on a number of occasions, donated goods such as t-shirts and hats bearing the mark to local churches, schools, the YWCA, the Houston Police Patrolmen's Association, the Houston Fire Marshall's Association, and the Harris County Sheriff's Department; that the donated items were auctioned to the public and the proceeds went to various charitable causes, such as a free lunch program to school children, food and blankets for the homeless, and food and clothing for other needy families; and that these activities are additional evidence of the public's acceptance of the mark.
*5 We begin by noting that the NEXIS excerpts made of record by the Examining Attorney suggest that in the United States, the term "dickhead" (or "dickheads") is used to denote a person who is stupid, despised, etc., and that it also has a vulgar, anatomical significance. [FN4] In addition, we take judicial notice of certain definitions in The Random House Dictionary of the English Language (Second Edition Unabridged, 1987), namely, a definition of the noun "dick" as "[S]lang. 1. a detective. 2. Vulgar. penis", and a definition of the noun "Dick" as "a male given name, form of Richard." The same dictionary defines the term "head" as, inter alia, "1. the upper part of the body in humans, joined to the trunk by the neck, containing the brain, eyes, ears, nose, and mouth ... 36. Slang (vulgar). fellatio" and defines "fellatio" as "oral stimulation of the penis, esp. to orgasm."
Applicant's mark, of course, consists of the words DICK HEADS' positioned directly underneath a caricature of a human head composed primarily of a graphic, readily recognizable representation of male genitalia, in which the scrotum serves as the chin, the penis as the nose, and the pubic hair as the hair on the head. There can be no doubt that this design has vulgar significance, and that because of its inclusion in the mark, it is the vulgar, anatomical significance of the mark which first strikes the viewer and dominates the commercial impression created by the mark as a whole. [FN5] Further, the context in which a mark is used plays a role in the significance which it projects. Here, applicant's mark is used with the words RICHARD HEADS' THREE LOCATIONS (followed by a listing of the locations of applicant's three bar and restaurant outlets), over which there appears the phrase GIVE ME HEAD...TILL I'M DEAD. The vulgar significance of the mark as a whole is accentuated by its use in conjunction with the phrase GIVE ME HEAD...TILL I'M DEAD.
Applicant argues, inter alia, that the word portion of its mark is not "dickheads" but rather "Dick Heads"', the possessive form of a proper name; that the mark also includes a caricature design in which "one can readily see a cute and endearing face complete with spectacles"; that the mark is used to promote the food and drink services provided by Richard Heads' Bar & Restaurant; that the Board has held, in In re Leo Quan Inc., 200 USPQ 370 (TTAB 1978), that a mark comprising a double entendre should not be refused registration as scandalous or immoral where there is a plausible innocent explanation for the mark; and that in applicant's mark, both the word and design portions operate as double entendres.
It is true that in applicant's mark, the words "dick" and "heads" are presented as two separate words, with their first letters capitalized, and with an apostrophe after the "s" in "heads"; that the design is a caricature of a human head; and that the mark is used in conjunction with a reference to Richard Heads' three (bar & restaurant) locations. Thus, on one level, the mark may be perceived as referring to Richard Heads as putative owner of the bar-restaurants. At the same time, the mark, as presented, clearly and blatantly projects a vulgar connotation. This is nothing like the situation in Leo Quan, where applicant sought to register the mark BADASS (assertedly an acronym for "Bettencourt Accoustically Designed Audio Sound System") for stringed musical instruments, registration was refused on the ground that the mark comprised scandalous or immoral matter, and the Board, in reversing the refusal of registration, stated, at page 371:
*6 To find that "BADASS" is a scandalous or immoral word, one would first have to divide what is unitary into separateness, and then, applying what knowledge one would have of the colloquialisms of a particular segment of the society of the age, give to the resulting expression a connotation offensive to the culture, or at least to the mores, of our time. ... We are unwilling to assign base motives to an applicant who propounds a plausible explanation for a trademark which is susceptible to a wholly innocent pronunciation and is used for a part of an instrument which has charms to soothe the savage beast.
Here, unlike the situation in Leo Quan, there is no need to divide a unitary mark in order to ascribe offensive or vulgar significance to it, and here, unlike Leo Quan, the vulgar significance of applicant's mark is quite clear, and plays a very dominant role in the commercial impression created by the mark.
We believe that the evidence of record [FN6] is sufficient, given the graphic nature of the mark, to establish prima facie that the mark would be offensive to the conscience or moral feelings of a substantial composite of the general public, notwithstanding the fact that contemporary attitudes towards sexual matters are more liberal than they were just a generation ago. It seems to us that where registration is refused on the ground that a mark consists of or comprises immoral or scandalous matter, the amount of proof required to support the rejection depends upon the nature of the mark, with less evidence being required in those cases involving the more egregious marks. Moreover, the inclusion in a mark of a readily recognizable representation of genitalia certainly pushes the mark a substantial distance along the continum from marks which are relatively innocuous to those which are most egregious.
In arriving at our conclusion, we have not failed to consider the two affidavits submitted by applicant. However, those affidavits essentially express the opinions of two individuals, one of whom (Mr. Ginsburg) is the president of applicant, and the other of whom (Ms. Fontenot) is characterized by applicant, on page 11 of its appeal brief, as "a design consultant and marketing representative that has extensive experience with Applicant's mark." That is, these are both individuals with an apparent bias in favor of applicant.
Mr. Ginsburg's affidavit refers to sales of promotional items bearing applicant's mark, and applicant's donation of an unspecified number of these items for sale at charitable auctions. Without any indication of the magnitude of applicant's donations and the sales resulting therefrom, we cannot judge whether this activity has been more than de minimis in nature. Moreover, some people may well buy applicant's promotional items because of the scandalous nature of the mark, for "shock" value, but this does not mean that the mark, in the context in which it is used, is not offensive to a substantial composite of the general public. [FN7]
*7 Ms. Fontenot's affidavit refers to the results of an "informal survey" which she assertedly conducted. Surveys which are conducted in accordance with accepted principles of survey research, and are properly introduced in evidence, are admissible in proceedings before the Board as exceptions to the hearsay rule. See Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987), and authorities cited therein. Moreover, the Board is somewhat more lenient in its approach to the introduction of surveys in ex parte proceedings than in inter partes proceedings. See In re Pillsbury Co., 174 USPQ 318 (TTAB 1972). Cf. TBMP §1208. [FN8] However, no evidence of anything approaching a proper survey has been introduced by applicant in this case.
For the foregoing reasons, we conclude that applicant's mark consists of or comprises immoral or scandalous matter, and hence falls within the prohibition of Section 2(a) of the Act. Cf. In re McGinley, supra.
J. E. Rice
T. J. Quinn
P. T. Hairston
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/306,662 filed August 24, 1992, claiming first use on October 1, 1989 and first use in commerce on November 1, 1989. It is indicated in the application that the "stippling or lining in the mark is a design feature of the mark and constitutes shading and does not indicate color."
FN2. In the Mavety case, the Court vacated a decision of the Board affirming the Examining Attorney's refusal, on the same ground as that asserted herein, to register the mark BLACK TAIL for adult entertainment magazines, and remanded the case for the introduction of further evidence, or for passage to publication. The Court faulted the Board for affirming the refusal to register based solely on dictionary definitions of the term "tail," because the dictionaries set forth not only the vulgar definitions relied on by the Board but also nonvulgar definitions that, in the opinion of the Court, were "equally applicable to define 'tail' in the context of an adult entertainment magazine." See Mavety, supra, at 31 USPQ2d 1928. Upon remand, the case was passed to publication, and was opposed (Opposition No. 99,058).
FN3. As the Court of Appeals for the Federal Circuit has previously noted, consumer surveys are not a viable option for the Patent and Trademark Office, due to its limited resources. See In re Budge Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988) ["Mindful that the PTO has limited facilities for acquiring evidence--it cannot, for example, be expected to conduct a survey of the marketplace or obtain consumer affidavits--we conclude that the evidence of record here is sufficient to establish a prima facie case of deceptiveness,"]. See also In re Loew's Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985) ["The practicalities of the limited resources available to the PTO are routinely taken into account in reviewing its administrative action."].
FN4. This is consistent with the definitions of the term "dickhead" found in three slang dictionaries, of which we take judicial notice. The Random House Historical Dictionary of American Slang (1994) lists the term "dickhead" as "[DICK + head; cf. CUNTHEAD, FUCKHEAD, PECKERHEAD] 1. something difficult to deal with.--usu. considered vulgar ... 2. a blockhead; dolt.--usu. considered vulgar." The dictionary American Slang (1987), an abridged edition of the New Dictionary of American Slang, defines "dickhead" as "[A] despised person; = BASTARD, PRICK." Finally, The Oxford Dictionary of Modern Slang (1992) defines "dickhead" as "[A] stupid person ... [From DICK noun + head noun]." These definitions are not, however, critical to our decision. We would reach the same conclusion even if we gave them no consideration.
FN5. Because the mark in this case includes the readily recognizable representation of male genitalia, not just the words DICK HEADS', the case differs substantially from Mavety.
FN6. As noted above, the evidence of record includes not only the NEXIS excerpts made of record by the Examining Attorney but also the drawing of applicant's mark, the specimens demonstrating the context in which the mark is used, and the dictionary definitions of which we have taken judicial notice.
FN7. We also note, with respect to Mr. Ginsburg's affidavit, that it is unlikely that people who are offended by applicant's mark would frequent its bar-restaurants.
FN8. The Trademark Trial and Appeal Board Manual of Procedure (TBMP) (Stock No. 903-022-00000-1) is available for a fee from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402. (Telephone (202) 512- 1800). The Internet address of the TBMP is http://www.uspto.gov/web/uspto/tbmp.