Luxuria, s.r.o.

Trademark Trial and Appeal Board

Sep 19, 2011

No. 79055664 (T.T.A.B. Sep. 19, 2011)

Mailed:
September 19, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Luxuria, s.r.o.
________

Serial No. 79055664
_______

David L. May of Nixon Peabody LLP for Luxuria, s.r.o.

Charisma Hampton, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Seeherman, Lykos and Shaw, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Luxuria, s.r.o. has applied to register the design
shown below, consisting of a bottle in the shape of a hand
with middle finger extended upwards, hereafter referred to
as the “Middle Finger design.”1

1 Application Serial No. 79055664, filed March 12, 2008,
pursuant to Section 66A of the Trademark Act, based on
International Registration No. 0969241.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 79055664
2

The description of the mark is as follows:
The mark consists of product packaging, namely, a
bottle in the shape of a hand with middle finger
extended upwards. All other elements in the
drawing including the background behind the
product packaging and upon which the product
packaging sits is not a claimed feature of the
mark.

The color white is claimed as a feature of the mark.
The goods, as amended, are:
beers; mineral and aerated waters and other non-
alcoholic drinks, namely, non-alcoholic
cocktails, non-alcoholized wines, non-alcoholic
punch, whey beverages, lemonade, vegetable juice,
tomato juice, non-alcoholic fruit extracts used
in the preparation of beverages, soy-based
beverages not being milk substitutes, non-
alcoholic malt beverages, isotonic beverages,
energy beverages, milk of almond, ginger ale;
fruit drinks and fruit juices; syrups,
concentrates, or powders used for making
beverages, in Class 32, and

Ser No. 79055664
3
alcoholic beverages except beers, in Class 33.

The trademark examining attorney has refused
registration pursuant to Section 2(a) of the Trademark Act,
15 U.S.C. § 1052(a), on the ground that the applied-for
mark is immoral or scandalous.
Applicant has appealed this refusal.
After applicant and the examining attorney filed their
respective briefs, applicant filed a request for remand in
order to have the examining attorney consider additional
evidence. The Board, in an order dated March 8, 2011,
advised applicant that a request for remand must include a
showing of good cause, and that in determining whether good
cause has been shown, the Board will consider both the
reason given and the point in the appeal at which the
request for remand is made, and that the later in the
appeal proceeding that the request for remand is filed, the
stronger the reason that must be given for good cause to be
found. TBMP § 1207.02 (3d ed. 2011). That order also
pointed out that applicant had not stated that the
additional evidence which it sought to have considered was
not previously available, only that it had just recently
come to its attention. The Board noted that some of the
material had dates of, for example, 2003 and 2008, prior to
applicant’s filing its notice of appeal on November 30,
Ser No. 79055664
4
2009, although it was not clear when other material was
published. Because it was not clear from the face of the
documents that this material was not previously available,
the Board stated that applicant had not shown good cause
for remanding the application and that applicant should
have submitted an affidavit stating when the materials
became available, or at least a date prior to which they
were not available. The Board allowed applicant 20 days in
which to either file its reply brief or to submit a second
request for remand that was supported by a showing of good
cause, as indicated in the order.
Applicant thereupon filed a second request for remand.
It stated only that “there are an indefinite number of
resources where evidence is available, and parties can
search for evidence with great diligence before actually
being able to locate a particular piece of evidence. Such
is the case here, where this evidence has only just come to
Applicant’s attention after repeated searches.” Applicant
did not give any details about the steps it took to search
for this evidence during the prosecution of the
application. Nor did it submit an affidavit as suggested
in the March 8, 2011 order regarding its efforts during
Ser No. 79055664
5
prosecution to obtain the additional evidence.2 Applicant
also contended that its request for remand was made early
in the proceedings.
In its March 30, 2011 order denying this second
request for remand, the Board explained that the appeal was
at a very late stage in the proceeding, since applicant’s
and the examining attorney’s briefs had already been filed,
and that if the request for remand were granted,
prosecution would be reopened after which there would be
supplemental briefs filed by both applicant and the
examining attorney, thereby effectively starting the appeal
process again. Therefore, in view of applicant’s failure
to provide any details as to what efforts it had made
during the prosecution of its application that would
explain why the additional evidence could not have been
previously obtained and made of record, the Board found
that applicant had failed to show the requisite good cause.
Applicant thereupon filed its reply brief. Attached
to the reply brief is the same evidence that applicant had
sought to make of record through its two requests for
remand, both of which had been denied by the Board. We are

2 We do not suggest by this that an affidavit is normally
required to show good cause for a remand; it was suggested in
this case because of the inconsistency between applicant’s
statement that the evidence had recently come to its counsel’s
attention, and the dates appearing on many of the materials.
Ser No. 79055664
6
at a loss to understand why applicant would submit material
in this manner, when the Board had previously denied its
requests for remand. Needless to say, this material is not
of record and will be given no consideration. See
Trademark Rule 2.142(d), 37 C.F.R. 2.142(d) (the record in
the application should be complete prior to the filing of
an appeal). Moreover, because even a cursory review of the
reply brief indicates that the brief discusses this
material at length, applicant’s reply brief has not been
considered. Applicant’s attempt to avoid the consequences
of the Board’s prior orders by simply attaching material to
its reply brief will not be tolerated.3
We now turn to the substantive issue in this appeal,
whether applicant’s Middle Finger design is immoral or
scandalous. Section 2(a) of the Trademark Act prohibits
the registration of a mark which “consists of or comprises
immoral … or scandalous matter.” “A showing that a mark is
vulgar is sufficient to establish that it ‘consists of or
comprises immoral … or scandalous matter’ within the
meaning of section 1052(a).” In re Boulevard
Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1477
(Fed. Cir. 2003). The United States Patent and Trademark

3 We cannot help but note the convergence between applicant’s
actions toward the Board and the message conveyed by its mark.
Ser No. 79055664
7
Office, to meet its burden of showing that a mark is
immoral or scandalous, “must consider the mark in the
context of the marketplace as applied to the goods
described in the application for registration.” Id.
Whether the mark consists of or comprises scandalous matter
must be determined from the standpoint of a substantial
composite of the general public (although not necessarily a
majority), and in the context of contemporary attitudes.
Id.
There is no question that applicant’s design mark is a
depiction of a human hand with the middle finger extended
upwards. Applicant acknowledges that this representation
is commonly referred to as “giving the finger” or “giving
the bird.” Applicant’s brief, p. 3. The examining
attorney has made of record several dictionary/reference
material listings which refer to this gesture, including
the following:
“the finger” 1. (idiomatic) An obscene gesture,
typically consisting of extending the middle
finger at somebody;
Wikitionary, http://en.wikitionary.org;

Finger (gesture) In Western cultures, the finger
(as in giving someone the finger) is a well-known
obscene hand gesture made by extending the middle
finger of the hand while bending the other
fingers into the palm.
Wikipedia, http://en.wikipedia.org;

Bird 10. the bird, Slang.
Ser No. 79055664
8
c. an obscene gesture of contempt made by
raising the middle finger.
Dictionary.com, http://dictionary.reference.com;
and

Bird 8. An obscene gesture of anger, defiance,
or derision made by pointing or jabbing the
middle finger upward.
The Free Dictionary, www.thefreedictionary.com

In addition, the examining attorney submitted articles
about the middle finger gesture, excerpts from some of
which are set forth below:
Why is The Middle Finger Offensive? [title]
The middle finger is one of our species’ oldest
and most ubiquitous insulting gestures.
[article includes a photo of a car with an arm
stuck out of the window, presumably “giving the
finger,” although that portion of the hand has
been deliberately blurred]
February 2, 2009, www.mentalfloss.com

FCC reviewing NBC’s Golden Globes telecast
[title]
After receiving multiple complaints about NBC’s
Sunday telecast of the Golden Globes, the FCC
said Wednesday that it is reviewing the program
for possible violations of indecency rules.
Toward the end of the program, director Darren
Aronofsky was caught on camera jokingly making an
obscene gesture--“flipping the bird,” as it’s
commonly called--at actor Mickey Rourke, who was
onstage accepting an acting award for Aronofsky’s
film “The Wrestler.”
January 14, 2009, “Los Angeles Times,”
http://latimesblogs.latimes.com

PBS plays it safe with language in Iraq
documentary (title)
…
Seven profanities were bleeped out of the
documentary and several graphic images were
blurred, including that of a soldier raising his
middle finger at a picture of Saddam Hussein.
Ser No. 79055664
9
…
The film is scheduled to run at 10 p.m. in much
of the country, within the “safe harbor” time
period when broadcasters are allowed to air what
the FCC might consider to be indecent or profane
material because children are less likely to be
watching.
Still, PBS officials decided to edit out the
coarse language and images because the program is
set to run an hour earlier in the central time
zone.
April 13, 2007, Daily Camera,
www.dailycamera.com.

The Finger
A (Short) History of the Longest Finger [title]
Giving someone “the finger” is one of the basest
violations in modern culture….
www.ooze.com

Finally, we take judicial notice of definitions taken
from mainstream dictionaries.4 The American Heritage
Dictionary of the English Language, 4th ed. (2006), lists
the following definitions, which are the same as the
definition in The Free Dictionary:
Finger: 6. an obscene gesture of defiance or
derision made by pointing or jabbing the middle
finger upward Often used with the.

Bird: 8. An obscene gesture of anger, defiance,
or derision made by pointing or jabbing the
middle finger upward.

The Random House Unabridged Dictionary, 2d ed. (1987),
provides the following definition of “the bird,” found in

4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 79055664
10
the definitions of “bird”: Slang. c. an obscene gesture of
contempt made by raising the middle finger.
The foregoing evidence demonstrates that the gesture
depicted in applicant’s mark is vulgar; in fact, the
definitions quoted above characterize the gesture as
“obscene.” See In re McGinley, 660 F.2d 481, 211 USPQ 668,
673 n.9 (CCPA 1981) (“[T]he threshold for objectionable
matter is lower for what can be described as ‘scandalous’
than for ‘obscene’…”). Dictionary definitions alone, if a
term has no other meaning, are sufficient to satisfy the
Office’s burden of showing that the mark is scandalous to a
substantial composite of the general public. In re
Boulevard Entertainment, 67 USPQ2d at 1480. Here, however,
we have more than just dictionary definitions; the
definitions and articles establish that applicant’s mark is
scandalous to a substantial composite of the general
public.
Further, the goods identified in the application are
general consumer products, purchased by the public at
large. Applicant has stated that its goods “are planned to
be placed in shops, supermarkets, and similar venues where
consumers will purchase the goods for consumption.”
Response filed August 5, 2010. Because the channels of
trade for the goods include supermarkets, where goods are
Ser No. 79055664
11
normally displayed on retail shelves, applicant’s trademark
will be visible to all consumers shopping in such places,
including parents shopping with their children.5 Therefore,
even if some individuals might personally find bottles
“giving the finger” funny, many, if not all, of these
individuals would not find it funny to expose their
children to such a configuration. See Boston Red Sox
Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1588 (TTAB
2008) (“Whether applicant intended the mark to be humorous,
or even whether some people would actually find it to be
humorous, is immaterial. The fact remains that the term
would be perceived and understood as vulgar by a
substantial portion of the purchasing public.”).
Applicant argues that the examining attorney has
failed to consider contemporary attitudes concerning the
“giving the finger” gesture depicted in applicant’s mark.
It is applicant’s position that when the gesture is not
directed to a particular individual or group it is not
immoral or scandalous, and that the examining attorney has
not submitted any evidence to show that the gesture is

5 We recognize that children would not be the purchasers of the
alcoholic beverages identified in Class 33 of applicant’s
application, but they would still be exposed to applicant’s
product packaging mark used for alcoholic beverages displayed on
supermarket shelves.
Ser No. 79055664
12
immoral or scandalous when it appears standing alone or in
a vacuum.
We are not persuaded by this argument. While we
recognize, as the Court pointed out in Mavety Media Group,
33 F.3d 1367, 31 USPQ2d 1923, 1926 (Fed. Cir. 1994), that
there are “ever-changing social attitudes and
sensitivities,” the articles that are of record, and the
definitions from the American Heritage Dictionary and The
New Oxford American Dictionary, infra, are sufficiently
contemporaneous with the examination of the subject
application that they reflect contemporary viewpoints. Two
of the above-quoted articles appeared in 2009 and one
appeared in 2007, while the American Heritage Dictionary
was initially printed in 2000 and was revised in 2006, and
The New Oxford American Dictionary was printed in 2005
(applicant filed its notice of appeal on November 30,
2009).
We acknowledge that one of the definitions for “the
finger,” listed in Urban Dictionary, states that “2. can be
a strange, friendly greeting for some. Alternative to
‘hello’,” although this same definition includes the
statement, “why some consider this is a greeting, no-one
will ever know.” There are also reports in some of the
articles that are of record of people making this gesture
Ser No. 79055664
13
in a film and a television program, and in a political
situation.6 However, we do not regard these limited
instances as showing that the gesture is acceptable to a
substantial composite of the general public. Certainly
words that would be considered vulgar, and would be
considered scandalous as trademarks, are used in motion
pictures. As for the reports of notable people making this
gesture, it appears to us that the fact that these
instances of use were reported indicates that the gesture
is so shocking that a celebrity making the gesture is
noteworthy. Thus, when we consider the entire record, we
find that the gesture depicted in applicant’s mark is
vulgar, and that applicant’s mark comprises matter that is
scandalous or immoral.7

6 “The Finger,” www.ooze.com, states that the gesture appeared
in the film “Titanic” and an episode of the TV series “NYPD
Blue,” and that in 1976 former Vice President Nelson Rockefeller,
who was heckled by protesters giving him the finger, flipped it
back.
7 In its brief applicant has relied on and quoted extensively
from a non-precedential opinion of the Board, noting that this
decision, which was published in 1999, was designated as “Not
citable as precedent of the TTAB.” At the time the decision
issued practitioners were not to cite such cases to the Board.
Board policy subsequently changed: such non-precedential
decisions are now marked “This case is not a precedent of the
TTAB.” While practitioners may cite to such decisions, they are
not binding on the Board. TMBP § 101.03 (3d ed. 2011). Since
they have no precedential effect, the Board will generally not
discuss them in other decisions. We therefore see no need to
discuss that case in this opinion. We point out that, although
applicant has quoted the Board’s discussion of evidence that was
submitted in the earlier case, that evidence is not of record
Ser No. 79055664
14
As for the distinction that applicant makes between
the finger gesture when directed at someone, and when
viewed in a vacuum, again we are not persuaded by this
argument. We agree that there are some terms that can be
perceived as a personal insult when directed at an
individual, but would not be considered scandalous or
immoral, such as applicant’s example of the word “idiot.”
However, the evidence shows that the finger gesture that
comprises applicant’s mark is treated as obscene in
general, not as offensive only to the person to whom it is
directed. For example, the article quoted above, entitled
“Why is The Middle Finger Offensive?” blurs out the gesture
in the photograph because it is obviously considered to be
offensive to the readers of the article, who clearly are
not the object of the gesture. Similarly, in the PBS
documentary the gesture of the soldier raising his middle
finger at a picture of Saddam Hussein has been blurred out
because it is considered offensive to the viewers of the
documentary. We do not understand applicant to be taking
the position that in each of these examples there is
someone to whom the gesture is directed (other drivers in
the first example, Saddam Hussein in the second), and that

herein, and the quotation of what the Board stated about that
evidence has not been given any evidentiary weight.
Ser No. 79055664
15
distinguishes these instances from applicant’s use of the
gesture as a trademark. However, if that should be
applicant’s argument, we do not find it persuasive. Not to
put too fine a point on it, the gesture depicted by
applicant’s mark is the visual equivalent of an extremely
offensive expletive.”8 Just as these words would be
considered scandalous and immoral if used as a trademark,
even if it was not clear to whom the insult was directed,
the visual depiction of these words by the finger gesture
shown in applicant’s mark is equally scandalous and
immoral.
Applicant points out that a third-party application,
Serial No. 77697434 for a mark containing an image of a
skeletal human hand showing the middle finger elongated and

8 See definitions in Urban Dictionary, www.urbandictionary.com,
for “the finger”: 1. means fuck you enuff said; 2. …Eventually
evolved (in America only) to mean “up yours,” and later switched
definitions to “F*** you”; 6. FUCK YOU, strong disapproval;
7. “The finger” refers to the middle finger, that is, the third
finger from either side of your hand. When it is raised on its
own and pointed at someone, it means “fuck you,” or similar….
We also take judicial notice of the meaning of the phrase
“give someone the finger,” in The New Oxford American Dictionary,
2d ed. 2005: informal make an obscene gesture with the middle
finger raised as a sign of contempt, meaning “fuck you.” That
dictionary’s definition of “fuck,” of which we take judicial
notice, states under Usage, “Despite the wideness and
proliferation of its use in many sections of society, the word
fuck remains (and has been for centuries) one of the most taboo
words in English. Until relatively recently, it rarely appeared
in print; even today, there are a number of euphemistic ways of
referring to it in speech and writing, e.g., the F-word, f***, or
f--k.”

Ser No. 79055664
16
the other fingers curled, was approved for publication
without a refusal under Section 2(a) having been raised.
Countering this, the examining attorney has submitted
numerous third-party applications for marks containing a
depiction of this gesture which were abandoned, presumably
because registration was refused on the ground that the
marks were scandalous, although the Office actions that
issued in the applications were not submitted. There is no
need to discuss this “battle of the applications,” as they
have no probative effect. Third-party applications are
evidence only of the fact that they have been filed.
Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d
1463, 1468 n.6 (TTAB 2003). In any event, we note that,
subsequent to applicant’s making the file of application
Serial No. 77697434 of record, this application was
opposed, and the opposition, which was brought on grounds
including that the mark was scandalous or immoral, was
sustained.9
In summary, we find that the Office has met its burden
of showing that the applied-for mark comprises matter that
would be regarded as vulgar by a substantial composite of

9 The opposition was sustained because the applicant abandoned
its application without the opposer’s consent, so there was not a
full trial or a decision on the merits.

Ser No. 79055664
17
the general public, and therefore the mark is scandalous or
immoral.
Decision: The refusal of registration is affirmed.