Nicholas Jones

Trademark Trial and Appeal Board

Dec 13, 2013

No. 85855449 (T.T.A.B. Dec. 13, 2013)

Mailed:
December 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nicholas Jones
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Serial No. 85855449
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Mark Borghese of Borghese Legal Ltd. for Nicholas Jones.

David C. Reihner, Trademark Examining Attorney, Law Office 111 (Robert
Lorenzo, Managing Attorney).
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Before Kuhlke, Cataldo and Adlin, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Nicholas Jones (applicant) filed an application to register on the Principal
Register the mark in standard characters for services identified as
“Entertainment services, namely, providing a web site featuring photographic, video
and prose presentations featuring news, humor, and memes” in International Class
41.1
The examining attorney refused registration pursuant to Section 2(a) of the
Trademark Act, 15 U.S.C. §1052(a), on the ground that applicant’s proposed mark,

1 Application Serial No. 85855449, filed February 20, 2013, alleging a bona fide intent to
use the mark in commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. §
1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85855449

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when used in connection with applicant’s services, comprises immoral or scandalous
matter.
When the refusal was made final, applicant appealed. Applicant and the
examining attorney filed briefs.
Applicant argues that (1) “[t]he record does not show that no $#!+ would be
regarded as [scandalous]” because although there is “plenty of evidence that SHIT
is vulgar” such evidence is irrelevant because the mark is $#!+ which “at most [is]
an indication that the symbols are being used in place of an offensive word, not that
the symbols themselves are vulgar” and the one Urban Dictionary excerpt regarding
$#!+ is not sufficient to establish that the mark is immoral or scandalous (App. Br.
p. 3); (2) substitutes for vulgar terms are not themselves vulgar; and (3) the USPTO
has allowed a “similar arrangement” in a third-party registration.
The examining attorney argues, inter alia, that “the commercial impression
of the designation [NO $#!+] is the same as the properly spelled designation NO
SHIT … and [is] understood to be a vulgar and offensive expression… .” Ex. Att.
Br. p. 7, 10.
Registration of a mark which consists of or comprises immoral or scandalous
matter is prohibited under Section 2(a) of the Trademark Act. Our primary
reviewing court, the U.S. Court of Appeals for the Federal Circuit, has held that the
burden of proving that a mark is scandalous rests with the USPTO. In re
Boulevard Entertainment, Inc., 334 F.3d 1336, 1339, 67 USPQ2d 1475, 1477 (Fed.
Serial No. 85855449

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Cir. 2003) citing In re Mavety Group, Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir.
1994). Further, the court stated as follows:
In meeting its burden, the PTO must consider the mark in the context
of the marketplace as applied to the goods described in the application
for registration. [citation omitted] In addition, 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, [citation omitted], keeping in mind changes in
social mores and sensitivities.

Boulevard, 67 USPQ2d at 1477. See also In re McGinley, 660 F.2d 481, 485,
211 USPQ 668, 673 (CCPA 1981).
The examining attorney 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.” In
re Mavety, 31 USPQ2d at 1925 citing In re Riverbank Canning Co., 95 F.2d 327, 37
USPQ 268 (CCPA 1938). Dictionary evidence alone can be sufficient to satisfy the
USPTO’s burden, where the mark has only one pertinent meaning. Boulevard, 67
USPQ2d at 1478. The USPTO may prove scandalousness by establishing that a
mark is “vulgar.” In re Fox, 702 F.3d 633, 105 USPQ2d 1247, 1248 (Fed. Cir. 2012).
See also In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971) (the statutory language
“scandalous” has been considered to encompass matter that is “vulgar,” defined as
“lacking in taste, indelicate, morally crude”). As explained in In re Star Belly
Stitcher, Inc., 107 USPQ2d 2059, 2060 (TTAB 2013):
Where the meaning of a proposed mark is ambiguous, mere dictionary
evidence of a possible vulgar meaning may be insufficient to establish
the vulgarity of the mark. In re Fox, 105 USPQ2d at 1248 (citations
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omitted). But where it is clear from dictionary evidence “that the
mark[] as used by [the applicant] in connection with the [products]
described in [the] application” invokes a vulgar meaning to a
substantial composite of the general public, the mark is unregistrable.
Id. Whether applicant intended the mark to be humorous, or even
whether some people would actually find it to be humorous, is
immaterial. In re Luxuria, s.r.o., 100 USPQ2d 1146, 1149 (TTAB
2011); see also In re Fox, 105 USPQ2d at 1251 (“the fact that
something is funny does not mean that it cannot also be ‘scandalous’”).

Further, “as long as a ‘substantial composite of the general public’ perceives
the mark, in context, to have a vulgar meaning, the mark as a whole ‘consists of or
comprises … scandalous matter.’” In re Fox, 105 USPQ2d at 1251 (emphasis in
original) citing 15 U.S.C. § 1052(a) and Boulevard, 67 USPQ2d at 1647. In Fox the
court distinguished Mavety as addressing ambiguous meaning. Notably, the Court
defines the issue in terms of whether the “meaning” is vulgar.
In support of his position that the mark NO $#!+ would be perceived as NO
SHIT and that NO SHIT is offensive, the examining attorney submitted dictionary
evidence indicating that both the word SHIT and the phrase NO SHIT are
considered vulgar.
Shit usually vulgar feces, an act of defecation, nonsense, crap, damn …
used as an interjection;2

Shit interjection - vulgar excrement, nonsense, something inferior or
worthless;3

Shit One of the most popular swear/cuss/curse words/profanities;4

2 Merriam-Webster (merriam-webster.com 2013).

3 Random House Dictionary retrieved at dictionary.com.

4 Urban Dictionary (urbandictionary.com 2013). The limitations on the probative value of
the Urban Dictionary discussed by applicant have been recognized by the Board and we
have considered such limitations in weighing the evidence in this record. In re Star Belly,
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No Shit slang a. used to express amazement or incredulity … b. used to
express one’s annoyance with an obvious statement;5

No Shit used to express contemptuous acknowledgment of the
obvious.6

The examining attorney provided the following definition for $#!+ to support
that it means SHIT:
$#!+ 1 This is the word SHIT in Chat-Room-With-Word-Filter
language, 2. Just something to say when you hate when ppl talk on the
internet.7

The examining attorney also submitted an excerpt from a Wikipedia page
explaining the use of word filters on the Internet and printouts from various
websites, blogs and the search results for the word SHIT which depict this word
using a wide variety of symbols and letters to spell SHIT.8 The variations that

107 USPQ2d at 2062 n. 3 (Board considers “dictionary definitions from Urban Dictionary so
long as the non-offering party has an opportunity to rebut that evidence by submitting
other definitions that may call into question the accuracy of the particular Urban
Dictionary definitions. Our consideration of the Urban Dictionary definitions is with the
recognition of the limitations inherent in this dictionary, given that anyone can submit or
edit the definitions.”) Applicant had opportunity to rebut this evidence but did not submit
any alternative meanings of $#!+, in particular when used as part of the phrase NO $#!+.

5 Random House Dictionary retrieved at dictionary.com.

6 Urban Dictionary.

7 Id.

8 Although the search engine results of third-party Internet websites submitted by the
examining attorney are of limited probative value inasmuch as typically there is
insufficient text to show the context within which a term is used, the results in this case do
show use of symbols to spell the expletive SHIT. In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); TBMP § 1208.03 (2013).

Serial No. 85855449

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employ symbols include, $HIT, $hl+, $hi+, and S#i+. The discussion regarding word
filters includes the following passage:
A swear filter, also known as a profanity filter or language filter is a
software subsystem which modifies text to remove words deemed
offensive by the administrator or community of an online forum.
Swear filters are common in custom-programmed chat rooms and
online video games … Expletives are typically partially replaced
(f*ck), completely replaced (***), or replaced by nonsense words (frak).
… A user trying to avoid vulgarity filter might use “shi-”9

There is no dispute that SHIT and the phrase NO SHIT are vulgar and the
record supports such a finding. Moreover, in a recently published decision the
Board found the phrase AWSHIT WORKS for use in connection with various
clothing items to comprise immoral or scandalous matter under Section 2(a). Star
Belly Stitcher, 107 USPQ2d at 2059. Further, based on the evidence of record we
find that the public would clearly perceive the term NO SHIT, both in meaning and
pronunciation, when presented with the proposed mark NO $#!+, in particular, in
connection with applicant’s services, which are specifically identified as being
provided online through a website and the evidence shows use of such symbols to
spell vulgar words online. This finding is further supported by the fact that the
symbols used appear very similar to the letters, i.e., $ for S, # for H, ! for I and + for
T or t. Here, there is no ambiguity in meaning when viewing the mark as a whole.
Having found that the proposed mark NO $#!+ has the meaning and would be
pronounced as NO SHIT, the refusal under Section 2(a) is appropriate. Fox, 105
USPQ2d 1247.

9 www.wikipedia.org/wiki/Wordfilter.

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Applicant’s arguments that use of these symbols is the inoffensive way to
represent the vulgar word are not persuasive in this case. Applicant points to the
unpublished, non-precedential decision In re Big Effin Garage, LLC, slip op.
77595225 (November 23, 2010) where the Board found that the USPTO had not met
its burden to demonstrate that “effin” and “f’n” and the overall designations BIG
EFFEN GARAGE and BIG F’N GARAGE are scandalous under Section 2(a) where
the record included, inter alia, dictionary definitions explicitly stating that effing is
the edited version of the word fucking. However, in this case there is no such
redeeming dictionary definition and the symbols spell out and look like the vulgar
word and not an acceptable substitute. Rather, this case is more similar to another
unpublished decision where an applicant sought to register “THE COMPLETE
A**HOLE’S GUIDE TO …,” arguing that society “has adopted the term ‘a**hole’ as
a non-offensive alternative when attempting to categorize provocative products or
people.” In re Daniel Zaharoni, slip op. 76351811 (January 4, 2005) at 5. In that
case, the Board was not convinced that use of other symbols in place of the two “S’s”
in asshole “cleaned-up” the mark to render it non-vulgar and affirmed the refusal
under Section 2(a), noting that “all types of material appears on the Internet, some
of it scandalous in nature.” Id. at 9.10
Here, the use of the symbols $#!+ closely resembles the lettering for the word
SHIT and combined with the word NO clearly means NO SHIT. There is no doubt

10 The contrast between these two decisions, neither issued as a precedent of the Board,
illustrates the reason citations to non-precedents are typically of little utility. For when a
non-precedent is relied on, it is just as likely as not that there will be a countervailing
decision available. Parties to Board cases are best served by restricting their citations to
decisions issued as precedents of the Board.
Serial No. 85855449

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that the proposed mark NO $#!+ would be perceived as the phrase NO SHIT and
would be pronounced as NO SHIT. This is distinguished from the scenario
applicant describes where “a string of typographical symbols such as @#$%* … have
been used in comic strip speech bubbles and in other writings as a polite
replacement for an obscenity, a swearword, or violence.”11 App. Br. p. 3.
Applicant’s comic strip example contemplates only an understanding that the
symbols convey some manner of swear words but not the specific word and meaning
as represented by applicant’s mark NO $#!+. To the extent the argument is that
such examples of this use of symbols on the Internet or in comic strips may serve to
indicate that they are not offensive and do not fall within the purview of Section
2(a), we note that the Internet is full of vulgar words that are routinely barred from
registration by Section 2(a). Rather, the evidence in this record, which includes
dictionary definitions, establishes the general consensus that the term NO SHIT is
vulgar and that NO $#!+ would be perceived precisely as the vulgar term NO SHIT.
As to the third-party registration that issued for the mark $#!+ MY DAD
SAYS,12 “although consistent treatment under the Trademark Act is an
administrative goal, the existence of third-party registrations that may be equally
immoral or scandalous, or more immoral or scandalous, is not justification for the
registration of another immoral or scandalous mark.” Star Belly Stitcher, 107
USPQ2d at 2064 citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d
1218, 1221 (Fed. Cir. 2009) and Boulevard, 67 USPQ2d at 1480.

11 Applicant did not submit examples of such use.

12 Registration No. 4142745, issued on May 15, 2012.
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Finally, while applicant argues that if the Board has doubts as to whether
the examining attorney has established that the mark is scandalous or immoral,
any such doubt should be resolved in favor of applicant, based on this record, we
have no such doubt.
Decision: The refusal to register the mark NO $#!+ under Section 2(a) is
affirmed.