Cathy Lynn Carlson

Trademark Trial and Appeal Board

Aug 28, 2007

No. 78682282 (T.T.A.B. Aug. 28, 2007)

Mailed:
August 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Cathy Lynn Carlson
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Serial No. 78682282
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Matthew F. Jodziewicz for Cathy Lynn Carlson.

Patrick Shanahan, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
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Before Quinn, Cataldo, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

This appeal from the final refusal of the Trademark
Examining Attorney involves Section 2(a) of the Trademark
Act of 1946, 15 U.S.C. §1052(a), which precludes
registration of marks that consist of or comprise “immoral,
deceptive, or scandalous matter.” Cathy Lynn Carlson seeks
to register the designation You Cum Like A Girl, in
standard character form, for “clothing, namely, t-shirts,
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78682282
2
tank tops, lingerie, jackets, hats, pants, scarves, shoes
and socks.”1
The Examining Attorney contends that the designation
You Cum Like A Girl is scandalous because the word “cum” is
a vulgar term.2 The word “cum” is defined as a vulgar,
slang term meaning “semen ejaculated during orgasm” in The
American Heritage Dictionary of the English Language (4th
ed. 2000).3 In further support of the refusal, the
examining attorney attached copies of excerpts from
pornographic websites in which the word “cum” refers to
semen.
This attached evidence illustrates the
predominant connotation of the term
CUM. The term is directly associated
with degrading sexual acts involving
girls being ejaculated on, and girls
who are themselves ejaculating. As
illustrated, the term CUM is clearly
shocking to the sense of decency and is
offensive in the context of the
clothing marketplace as applied to the
goods described in the application.4

Applicant argues that the designation You Cum Like A
Girl is not scandalous because it is “used as an empowering

1 Application Serial No. 78682282, filed July 31, 2005, based on
applicant’s bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).
2 Examining Attorney’s Brief, unnumbered page 4.
3 Office Action, p. 2 (February 24, 2006). Applicant does not
agree that the word “cum” is vulgar, but does admit that “cum” is
“merely a slang term for orgasm.” Applicant’s Brief, p. 2. See
also applicant’s Brief, p. 4.
4 Office Action, p. 2 (July 12, 2006).
Serial No. 78682282
3
mark for an historically oppressed segement of the
population, i.e., women.”5 Applicant explains that words,
such as “cum,” are neither scandalous, nor immoral, per se.
It is the use of the term in its specific context that
imparts the value judgment of scandalous or immoral.
The proffered internet sites relied
upon in the refusal to register the
mark show not an inherent “scandalous
and immoral” per se nature to the use
of the word CUM, but instead how
prevalent the oppression and
degradation is against which the mark
is used and how powerful it becomes
when used by the oppressed group.6

Accordingly, applicant concludes that the use of the word
“cum” by women in a positive context has a different
meaning than the use of the term by pornographers. The
fact that “cum” references semen, and therefore is
“scandalous” and nonregistrable, “suggests that a female
orgasm has a second class status, being derogatory in some
manner, e.g., ‘you throw like a girl.’ This is exactly the
derogatory view that Applicant’s mark attacks.”7 The
essence of applicant’s argument is that by using the words
of the oppressor (i.e., men), the oppressed (i.e., women)
are able to empower themselves.

5 Applicant’s Brief, p. 1. See also Applicant’s Brief, p. 2.
6 Applicant’s Brief, p. 4.
7 Applicant’s Brief, pp. 1-5, 8.
Serial No. 78682282
4
Applicant also argues that the Trademark Office has
registered four (4) other registrations containing the word
“cum”, twelve (12) registrations including the word
“orgasm,” and numerous other marks containing arguably
equally offensive terms that have been identified in
dictionaries as “vulgar” (applicant did not make copies of
those registrations of record even though the examining
attorney expressly pointed out that to make the
registrations of record, the applicant is required to file
copies of the registrations).8 Accordingly, applicant
concludes that identifying a word as “vulgar” is not a
valid reason to refuse registration.9
Finally, applicant argues that because the government
may not legislate morals, but rather must act as a
representative of the people, decisions regarding whether a

8 Office Action, p. 3 (July 12, 2006). The Trademark Trial and
Appeal Board does not take judicial notice of registrations, and
the mere list of registrations in a response to an Office Action
or brief does not make the registrations part of the record. To
make registrations of record, applicant must produce and
introduce as evidence copies of the registrations. In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983); In re Duofold,
Inc., 184 USPQ 638, 640 (TTAB 1974). Accordingly, we cannot give
applicant’s argument regarding the third-party registrations any
consideration. However, even if we considered the registrations
as having been properly made of record, for the reasons set forth
later in the decision, they would not change the ultimate
finding.
Applicant also referenced nine (9) applications in its brief.
However, the only inference that can be drawn from an application
is that it was filed.
9 Applicant’s Brief, pp. 5-7.
Serial No. 78682282
5
mark is scandalous or immoral must reflect current societal
standards and mores.10 To accurately reflect such standards
and mores, the application should be approved for
publication to permit the public to lodge an opposition to
the registration of the mark if it is truly scandalous or
immoral. Failure to allow the public to express its views
through the opposition process is the imposition of
arbitrary and inconsistent standards by the U.S. Patent and
Trademark Office.11 The registration of arguably equally
scandalous or immoral marks through the subjective
application of the Trademark Act by examining attorneys is
a violation of the Fifth Amendment of the Constitution and
injects instability into the commercial world.12
To prove that that the designation You Cum Like A Girl
is scandalous or immoral, the U.S. Patent and Trademark
Office must demonstrate that, in essence, the mark is
vulgar. In re Boulevard Entertainment Inc., 334 F.3d 1336,
67 USPQ2d 1475, 1477 (Fed. Cir. 2003) (showing that the
mark is vulgar is sufficient to establish that it is
scandalous or immoral); In re McGinley, 660 F.2d 481, 211
USPQ 668, 673 (CCPA 1981), quoting In re Runsdorf, 171 USPQ

10 Applicant’s Brief, pp. 8-10.
11 Applicant’s Brief, p. 10.
12 Applicant’s Brief, p. 12.
Serial No. 78682282
6
443, 443-444 (TTAB 1971) (vulgar terms are encompassed by
the term scandalous).
In finding the designation You Cum Like A Girl to be
vulgar, the examining attorney consulted a dictionary, The
American Heritage Dictionary of the English Language, which
indicated that the word “cum” was vulgar when used in
connection with semen. Also, the examining attorney
introduced internet websites demonstrating that the word
“cum” is used in connection with pornography. There is no
evidence of the word “cum” being used otherwise than in
connection with pornography.
In appropriate cases, the U.S. Patent and Trademark
Office can sustain its burden of showing that the mark
comprises or consists of scandalous matter by reference to
dictionary definitions alone. In re Boulevard
Entertainment Inc., 67 USPQ2d at 1478. Here, both a
dictionary definition and actual use of the term “cum”
demonstrate that it is a vulgar word meaning “semen”.
Moreover, applicant tacitly admits that “cum” is vulgar by
arguing that it is a derogatory term that she seeks to turn
around and use to express an allegedly empowering attitude
for women.13 Accordingly, we find that the examining

13 Applicant’s Brief, p. 2.
Serial No. 78682282
7
attorney has met his burden of demonstrating that the
designation You Cum Like A Girl comprises scandalous matter
from the standpoint of a substantial (although not
necessarily a majority) composite of the general public.
Applicant failed to offer any evidence to support her
argument that she uses the designation You Cum Like A Girl
as a symbol of female empowerment. Since applicant failed
to introduce any evidence of use, we have only the readily
vulgar and “derogatory” meaning of the mark on which to
base our decision.
Applicant’s arguments that the U.S. Patent and
Trademark Office has registered other equally scandalous
marks and that it violates her rights under the Fifth
Amendment of the Constitution when it refuses to publish
her mark for opposition are unavailing. First, the Board
must decide each application on its own merits, and
decisions regarding other registrations do not bind either
examining attorneys or this Board. In re Boulevard
Entertainment Inc., 67 USPQ2d at 1480; In re Nett Designs,
236 F.3d 1339, 57 UPSQ2d 1564, 1566 (Fed. Cir. 2001). Even
if the U.S. Patent and Trademark Office had previously
allowed other “cum,” “orgasm,” and other arguably
scandalous marks to be registered, that would not give
applicant an equal protection right to have its mark
Serial No. 78682282
8
registered unless the agency acted pursuant to some
impermissible standard. In re Boulevard Entertainment
Inc., supra; In re Int’l Flavors & Fragrances, 183 F.3d
1361, 51 USPQ2d 1513, 1518 (Fed. Cir. 1999). The fact
that, whether because of administrative error or otherwise,
some marks have been registered even though they may be in
violation of the governing statutory standard does not mean
that the U.S. Patent and Trademark office must forgo
applying that standard in all other cases. In re Boulevard
Entertainment Inc., supra.
In view of the foregoing, we find that applicant’s
mark consists of or comprises immoral or scandalous matter,
and therefore falls within the prohibition of Section 2(a)
of the Trademark Act of 1946.
Decision: The refusal to register is affirmed.