Having a ball (or two) with the U.S. Patent and Trademark Office

I’m very excited to be a new contributor to Strong Language, after my two previous salacious guest posts on scandalous trademarks. I’ve been the author of Gilson on Trademarks, a treatise on U.S. trademark law, since 2006, and I’m delighted to make this foray into sweary territory.  Just don’t tell my parents.

Now, on to our story. Engine 15 Brewing Company applied to register the trademark NUT SACK DOUBLE BROWN ALE for beer. An attorney at the U.S. Patent and Trademark Office refused registration on the ground that the mark was scandalous, meaning that it would offend “a substantial composite of the general public.” The applicant appealed, putting the ball in the Trademark Trial and Appeal Board’s court. Here’s the beer’s label, which the owner did not try to register:

Before we see how the Board ruled, though, let’s start the ball rolling by looking at the USPTO’s record on testicles, scrotum and related slang terms.

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First off, the USPTO has a decidedly mixed record on scandalousness decisions for NUT SACK and similar terms. NUT SACK for jewelry was initially rejected as scandalous, but the applicant’s response to that rejection is not yet due. THE NUTSACK for “canvas bags for storage of nuts” was rejected by an examining attorney as scandalous and later abandoned by its applicant.

There’s even a rejection for NUT SAC for beer, ale, lager, stout and porter from 2013, which one would think would carry the day in the NUT SACK DOUBLE BROWN ALE case. But, as we’ll see, the Board refused to be bound by this earlier opinion. Presumably this more recent case was just a whole new ball game.

However, other NUT SACK-ish marks have made it to registration. NUTSACK is registered for laundry detergent, NUTSAC is registered for a variety of types of bags, and KNUTTSAK is registered for underwear. Though the following marks were not rejected as scandalous, they were abandoned before registration: THE NUT SACK for various types of nuts; NUT SACK for a variety of nuts and snack mixes; THE NUT SACK for “dried fruit mixes”; and NUT-SAK for a variety of bags.

The USPTO also has a mixed record on testicular trademarks, though it generally seems rather permissive on this front. On the refusal side, in 2003, an examining attorney refused registration for TESTICLE for clothing and headwear in part on scandalousness grounds, saying: “The applicant’s mark is TESTICLE. As evidenced by the attached dictionary definition, the term ‘testicle’ merely identifies a male reproductive gland. Accordingly, use of the term in connection with the applicant’s goods is scandalous.” The following for shirts, patches, hats and decals was initially refused registration and then abandoned by the applicant in 2004:

STRAP YOUR BALLS ON for apparel was also rejected as scandalous, then abandoned.

The following marks, however, are registered with the USPTO:

• COJONES for hot sauce
• FAMILY JEWELS for a “prepared egg based entree or side dish”
•  for bracelets
• HAPPY ZAK’S SCROTUM BLISS for various body care products
•  for “disposable wipes impregnated with cleansing chemicals or compounds for personal hygiene”
• UNCLE JIMMY’S HANGIN’ BALLS for animal foodstuffs
• for “activity games in the nature of tethered balls and wall pegs”
• HAIRY BALLS for “computer game software for use on mobile and cellular phones; electronic game software”
• BALLZ DEEP DOUBLE INDIA PALE ALE for “brewed malt-based alcoholic beverage in the nature of a beer”
• THE GONAD for a “fishing aid which sinks to the bottom of any body of water in which it is placed and stands vertically from the bottom with fish line attached a few inches from the hook intended to catch the fish”
• for jewelry and athletic apparel
• TURKEY TESTICLE FESTIVAL for “arranging parties for others having a Thanksgiving theme”
•   for t-shirts, as well as “providing seminars in the fields of life skills, personal growth and empowerment”

And Manooga Skateboarding is registered for various skateboard-related goods, such as grip tapes, wax and wheels. The registration entry notes intriguingly: “The English translation of ‘Manooga’ in the mark is a slang term for when you are exercising or in this case skateboarding, and your testicles begin to sweat and stick to your inner thigh.” It’s unclear from what language this colorful term is translated.

Back to NUT SACK DOUBLE BROWN ALE for beer. The Trademark Trial and Appeal Board found that evidence in the record established that “nut sack” is slang for the male scrotum, but also noted that the word “nut” describes a flavor of ale. It found that dictionary entries for NUT SACK suggested that the term was “indelicate,” “may well raise eyebrows at a formal dinner party” and “may seem somewhat taboo in polite company.” But that isn’t the standard for rejecting a trademark as scandalous. And, according to the Board, “contemporary attitudes toward coarse language are more accepting than they [have] been in earlier eras.” Thus, the Board was able to conclude that NUT SACK was “not so shocking or offensive as to be found scandalous within the meaning of the statute.”

One point of interest from this opinion is the fact that the Board took into account the fact that the mark is meant for beer, a beverage intended to relax the inhibitions of adults. Those indulging in the drink are, according to the Board, likely to see it as an attempt at humor. The Board concluded that “beer drinkers can cope with Applicant’s mark without suffering meaningful offense.” But compare this statement to that in an earlier case in which the Board refused to register CUMFIESTA and CUMGIRLS for adult entertainment:

Applicant concludes that the relevant market, patrons of erotic entertainment, do not consider the word “cum” to be scandalous or immoral. In fact, applicant asserts that they would consider it to be rather “tame.” . . . We do not agree with applicant’s conclusion that the determination of whether a mark is scandalous or immoral is limited to the “relevant market.”

Did the off-handed comment in the NUT SACK BROWN ALE case mark a departure from prior law, or was the Board just trying to show that it had a sense of humor? My crystal ball suggests that its new open-mindedness is not going to extend to porn.