United States: Designation of Term as "Vulgar" in Dictionaries May Prohibit Trademark Registration

Where the vulgar significance of a mark is clear and unambiguous, an examiner may refuse registration based solely on the designation of the term as "vulgar" in widely referenced dictionaries. In re The Boulevard Entertainment, Inc., Case No. 02-1585 (Fed. Cir. July 9, 2003).

Boulevard provides adult-oriented entertainment services over the telephone and alleges that it receives more than 1.2 million telephone calls per year to its "JACK-OFF" brand telephone numbers. Citing multiple sources, including Webster’s Collegiate Dictionary, Forbidden American English, American Slang and Historical Dictionary of American Slang (that define the term "JACK-OFF" as a vulgar term for masturbation), the U.S. Court of Appeals for the Federal Circuit refused its registration on the grounds that the mark "was offensive to a substantial composite of the general public and thus precluded from registration under Section 1052(a)." Boulevard appealed.

The Federal Circuit upheld the denial of Boulevard’s applications for trademark registration holding that dictionary definitions alone can provide a sufficient basis for holding a particular mark to be scandalous when the evidence shows that the mark has only one pertinent meaning. Although the applicant objected that JACK-OFF has another meaning, namely "a stupid or incompetent person," the Court rejected this argument because there was no evidence that this alternative definition had any bearing on applicant’s use of the term as a trademark.

The Federal Circuit also rejected Boulevard’s arguments that the refusal violated the First Amendment and that the existence of a registration for "JACK OFF JILL" for "live performances by a musical group" was indicative of the registrability of "JACK-OFF." On the free speech issue, the Court held that the refusal to register did not implicate the First Amendment because the decision affected only the right to registration and not the applicant’s right to use the mark in question. On the second point, the Court reasoned that JACK OFF JILL was an acceptable "double entendre" referring to the "Jack and Jill" nursery rhyme. No consideration was given to the fact that the JACK OFF JILL mark is perhaps more offensive than JACK-OFF due to its incorporation of childhood imagery in connection with its vulgar reference.

Practice Note: Trademarks that consist of terms that are defined in dictionaries as unambiguously "vulgar" may be refused registration. However, marks that are ambiguous or have double-meanings will typically be granted the benefit of the doubt and permitted registration.