Mailed:
February 9, 2011
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Mackman
________
Serial No. 77641819
_______
Ruth Walters of Cairncross & Hempelmann, P.S. for Whitney
Mackman.
David E. Tooley, Jr., Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
_______
Before Zervas, Mermelstein and Taylor, Administrative
Trademark Judges.
Opinion by Zervas, Administrative Trademark Judge:
On December 30, 2008, applicant filed an application
for registration on the Principal Register for the mark
COCKTALES (in standard character form) for International
Class 41 services ultimately identified as:
Arranging and conducting nightclub entertainment
events; Conducting entertainment exhibitions in the
nature of live readings of plays, screen plays,
adaptations, dramatizations, poetry, books, and
scripts; Education and entertainment services, namely,
production and distribution of ongoing television
programs in the field of family management and
relationships; Educational and entertainment services,
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 77641819
2
namely, providing motivational speaking services in
the field of relationships and sexuality;
Entertainment and education services in the nature of
a series of short shows featuring relationships,
sexuality and male experience distributed to mobile
handsets, which may include video, text, photos,
illustrations or hypertext; Entertainment in the
nature of an on-going special variety, news, music or
comedy show featuring short monologues on the male
sexual experience broadcast over television,
satellite, audio, and video media; Entertainment in
the nature of live performances by actors;
Entertainment in the nature of live radio personality
performances; Entertainment in the nature of on-going
television programs in the field of relationships,
sexuality, and sex; Entertainment in the nature of
theater productions; Entertainment in the nature of
visual and audio performances, and musical, variety,
news and comedy shows; Entertainment in the nature of
visual and audio performances, namely, musical band,
rock group, gymnastic, dance, and ballet performances;
Entertainment in the nature of relationships and
sexuality
The Trademark Act Section 1051(a) application claims
first use on February 1, 2005 and first use in
commerce on February 13, 2006. Applicant’s specimen
of use is:
Serial No. 77641819
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The assigned examining attorney refused registration of the
mark under Trademark Act Section 2(a), 15 U.S.C. § 1052(a),
on the ground that the mark consists of or comprises
immoral or scandalous matter.
I. Applicable Law
The determination of whether the marks are scandalous
is a conclusion of law based on the underlying facts. In
re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923
(Fed. Cir. 1994). To prove that COCKTALES is scandalous or
immoral, it is sufficient if the examining attorney shows
that the terms are vulgar. In re Boulevard Entertainment
Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003)
(showing that the mark is vulgar is sufficient to establish
that it is scandalous or immoral); and In re McGinley, 660
F.2d 481, 211 USPQ 668 (CCPA 1981), quoting In re Runsdorf,
171 USPQ 443 (TTAB 1971) (vulgar terms are encompassed by
the term scandalous). The U.S. Patent and Trademark Office
has the burden of proving that a trademark falls within the
prohibition of Section 2(a). Mavety, 31 USPQ2d at 1925.
See also In re Standard Electrik Lorenz A.G., 371 F.2d 870,
152 USPQ 563 (CCPA 1967).
In determining whether a particular designation is
scandalous or immoral, we must consider the mark in the
context of the marketplace as applied to applicant's
Serial No. 77641819
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description of services. Boulevard Entertainment, 67
USPQ2d at 1477; Mavety, 31 USPQ2d at 1925 (there are
multiple non-vulgar definitions of the term “tail”
applicable in connection with an adult entertainment
magazine); McGinley, 211 USPQ at 673. Furthermore, the
issue must be ascertained (1) from the standpoint of a
substantial composite of the general public, and (2) in
terms of contemporary attitudes. Id. Thus, even though
“the news and entertainment media today vividly portraying
degrees of violence and sexual activity that, while popular
today, would have left the average audience of a generation
ago aghast,” Mavety, 31 USPQ2d at 1926, there are still
terms that are sufficiently vulgar that fall under the
prohibition of Section 2(a). In re Tinseltown, Inc., 212
USPQ 863, 866 (TTAB 1981) (“the fact that profane words may
be uttered more freely does not render them any the less
profane”: refusing to register BULLSHIT for personal
accessories and clothing). If the mark is determined to be
scandalous, registration must be refused. McGinley, 211
USPQ at 673.
II. The Record
Because our decision must be based on the facts
developed in the record, we summarize the most relevant
Serial No. 77641819
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evidence properly made of record by the examining attorney
and applicant:
A. Examining Attorney’s Evidence
• The American Heritage Dictionary of the English
Language defines “cock” as “Vulgar Slang The
Penis.”
• Random House Webster’s Unabridged Dictionary
defines “cock” as “Slang (vulgar). a. penis.”
• The Cassel Dictionary of Slang defines “cock”
as “the penis . . . since 1830 a vulgarism.”
• The Slangman’s Guide to Dirty English defines
“cock” as “penis” warning that it be used “with
extreme caution.”
The examining attorney has asked, and we take, judicial
notice of the following four definitions:1
• The Oxford Dictionaries define “cock” as
“vulgar slang a penis”;
• Merriam- Webster’s Online Dictionary defines
“cock” as “usually vulgar : penis”;
• Encarta at encarta.msn.com defines “cock” as a
“taboo term: a highly offensive term for a man's
penis (taboo)”; and
• The American Heritage Dictionary of the English
Language defines “tale” as “A recital of events
or happenings; a report or revelation.”
As support for his contention that the whole phrase
CockTales or “Cock Tales” is commonly used on adult-
1 The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See
also University of Notre Dame du Lac v. J. C. Gourmet Food
Serial No. 77641819
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oriented, sexually-themed materials, the examining attorney
offers the following evidence:
• amazon.com offers for sale three different
books titled “CockTales” or “Cock Tales,” each
containing stories about sexual encounters;
• facebook.com has a group called “Cock Tales”
for fans of a sexual fetish stage show;
• lyrics007.com and lyricsdownload.com have songs
called “Cocktales” with extremely explicit sexual
lyrics;2
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
2 These excerpted lyrics from Too Short’s “Cocktales” are
representative of the lyrics in both songs:
H-E-A-D,
all you washed up hoes tryin to throw that p
you're just a big freak
you better not complain
when you hear these cocktales and you hear yo name
if you a fake bitch
ain't no thang
I pick up the phone and call Denine
if I call Marie, I know for a fact
I'll get sucked in my drop top cadillac
I met this freak named Naomi
straight dick sucker worked me and my homie
she had a girlfriend her name was Vicky
I pulled her to the side and let her suck my dick
she was fine as fuck but cant fuck with Tina
Tina, Tina, the sperm cleaner
I took her to my house and I told her strip
baby got freaky started doing the splits
I said biotch
do what you want
cause a true blue mac won't even front
I fucked her wit my finger
she tried to cum
pussy so tight, it wouldn't give me none
im sure Too Short couldn't be no punk
im tryin a get funky cause I love to funk
my dick is big and her nigga had a little one
I didn't fuck her freaky ass but it was still fun
I know you stop and wonder just what it is….
Serial No. 77641819
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• the blog Ask an Alpha Femail has a graphic
sexual discussion about penis size titled
“Debunking CockTales”
(vinegarandsugar.blogspot.com);
• Ron Jeremy directed an adult movie named Cock-
Tales (imdb.com/title/tt0135219);
• cocktales.org is an on-line comic about sexual
health named Cock Tales, which has the following
cartoon character;3
• cocktales.com, whose webpage is depicted below,
provides links to other pornographic sites:
3 Applicant states that cocktales.org is a website from Scotland.
The webpage indeed states “CockTales has been developed by
Healthy Gay Scotland in partnership with young men and key
Scottish agencies.” Because this website is readily accessible
to those in the United States, and because it does not appear to
be exclusively directed toward a foreign audience, we have
considered this evidence.
Serial No. 77641819
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In addition, a Google search for “cock” resulted in the
following search summaries”:
Monsters of Cock: sex with giant cocks
Monsters of Cock brings you the best porn
monstersofcock.com
RateMyCock.com
If you are under the age of 18, if you are accessing
Rate My Cock from a locale that prohibits the viewing
of nudity or if you find pictures of naked men …
www.ratemycock.com
The Uncut Cock
The near perfect body, the charming accent and a
gorgeous uncut cock are all the materials needed for
one sizzling solo scene
theuncutcock.com
Serial No. 77641819
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HUGE DICKS, Monster Dicks, Big Dicks, Monster Cocks,
Cock Sucking …
By logging on, I will have released and discharged the
providers, owners and creators of this huge cock site
from any and all liability which might arise …
www.sexgetter.com
We LOVE Cock is for dirty boys looking for Free Gay
Porn Pictures
We LOVE Cock is free gay porn … that features movies
and pictures of men and boys doing dirty things to
each other.
www.welovecock.com
Also in the record are:
• An article from babeland.com entitled “How to
Use a Cock Ring”;
• A webpage from smittenkitten.com offering for
sale “Cock and Ball Toys”; and
• Articles from East Bay Express, Gawker and New
York Magazine obtained from LEXIS/NEXIS allegedly
using the term “cock” in a vulgar sense.
B. Applicant’s Evidence
Applicant’s evidence includes the following:
• search results for searches of “cocktales” in
dictionary.com and onelook.com, showing no
wording matched the search term;
• a listing of the dictionaries and reference
materials dictionary.com and onelook.com
searches;
• company information about babeland.com and
smittenkitten.com taken from their webpages, to
show that there is nothing lewd or vulgar on
these websites (for example, “The Smitten Kitten
offers a boutique-style shopping experience
complete with complimentary coffee or tea and a
personal guide to help you browse the world class
selection of adult sex toys and equipment.”);
Serial No. 77641819
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• webpages from the mypleasure.com website
showing a quotation from the New York Times that
mypleasure.com is “one of the top five internet
retailers of sex toys” and showing “erection
rings a.k.a. cock rings” offered for sale;
• webpages from Kinsey Institute for Research in
Sex, Gender and Reproduction at Indiana
University, Harvard University, Yale University,
Georgetown University and Stanford University
showing that “sex, sexuality and sexual behavior
are not considered proper, even significant,
topics for non-medical academic study,” second
request for reconsideration at 6;
• webpage from the American Association of Sex
Educators, Counselors, and Therapists, the
American Board of Sexology and the Institute for
the Advanced Study of Human Sexuality, offered to
show that “there are a number of reputable,
professional certifying bodies relating to sex
and sexuality,” id.;
• a declaration from applicant stating, inter
alia, that the President of the University of
Puget Sound mentioned COCKTALES in a speech he
gave to an audients of students and parents, and
that applicant never received complaints, relayed
by any administrator, professor, student or staff
member at the University of Puget Sound or Fort
Lewis College, that her play COCKTALES was
vulgar, immoral, scandalous or inappropriate to
where her play was performed;
• excerpts from or information about
Aristophanes’ comedy Lysistrata, Romeo and
Juliet, Much Ado About Nothing, Salome, Equus and
Vagina Monologues, submitted as support for
applicant’s position that the marketplace
consists of theater and art patrons in general,
and that they are accustomed to sexual content,
whether suggestive, frankly open, or
occasionally, pornographic;
• an article from frannywanny.com about a
restaurant named “Cocktales” which serves
desserts including ice cream and yogurts;
Serial No. 77641819
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• an article entitled “Vaginas and cocks show
pride” from “The Trail,” identified as the
student newspaper of the University of Puget
Sound; and
• an article from National Sexuality Resource
Center (nsrc.sfsu.edu) about “Cocktales,” “a new
men’s social campaign, The Men’s Story Project,
that provides a forum for men to share their
personal stories about manhood. In a society
where men are constantly inundated with ideas and
values that suggest the only way to be a man is
to fuck bitches and get money, the Men’s Story
Project says NO.”4
4 Applicant also provided a youtube.com Internet address for
a YouTube video in her response to the first Office action.
The video is not part of the record because applicant did
not submit a copy of the video. The Board has previously
stated regarding Internet webpages:
If an applicant has relevant information, it is
incumbent on applicant to make this information
of record. A mere reference to a website does
not make the information of record. In order to
review the facts in this case, there should be
evidence in the record. Also, if there should be
further review, Congress has required that the
“Director shall transmit to the United States
Court of Appeals for the Federal Circuit a
certified list of the documents comprising the
record in the Patent and Trademark Office.” 15
U.S.C. § 1071(a)(3). See also In re Zurko, 258
F.3d 1379, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001)
(“[T]he Board must point to some concrete
evidence in the record in support of these
findings. To hold otherwise would render the
process of appellate review for substantial
evidence on the record a meaningless exercise”).
In re Planalytics Inc., 70 USPQ2d 1453, 1457 (TTAB 2004).
The same holds true for an Internet video; it could be
removed at anytime. We have not considered the youtube.com
video.
Serial No. 77641819
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III. Is Applicant’s Mark Scandalous or Immoral?
According to the examining attorney, the mark is a
composite of the words “cock” and “tales.” He finds “cock”
to be scandalous in the context of applicant’s services,
and concludes that “because the term ‘cock’ is vulgar when
used to reference male sexuality or the penis and
applicant’s specimen reinforces this meaning, a substantial
composite of the general public will find Applicant’s use
of the word ‘cock’ [in COCKTALES] scandalous in the context
of Applicant’s services.” Brief at unnumbered p. 7. With
regard to the term “tales” in the mark, his position is
that its addition to “cock” does not change its scandalous
nature. He explains:
[t]he term “tales” simply describes Applicant’s
services, which includes the performance of
stories about male sexuality. The whole mark
need not be immoral or scandalous to trigger a
2(a) refusal. For instance the court in
Boulevard Entertainment found 1-800-JACK-OFF to
be scandalous despite the presence of the
innocuous 1-800 toll-free code.
Further, he is not impressed by applicant’s argument that
“CockTales” is fanciful and without meaning, noting that
the combination of “cock” and “tales” by removing a space
between these words does not eliminate their meaning. And,
as far as applicant’s argument that the mark is a double-
entendre, he dismisses this argument. According to him,
Serial No. 77641819
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his evidence shows that “CockTales” or “Cock Tales” is
widely used with sexually-oriented material and “[t]he fact
that it is a homophone of a word completely unrelated to
the Applicant’s services will not distract a substantial
composite of the general public from the more common and
relevant vulgar meaning of the phrase when used in
conjunction with Applicant’s services.” Brief at
unnumbered p. 9.
Each dictionary definition of “cock” in the record,
including the definitions from standard dictionaries,
states that “cock” is a vulgar term for a “penis.” In
Boulevard Entertainment, 31 USPQ2d at 1927, the Court
concluded that dictionary definitions would suffice when
“multiple dictionaries, including at least one standard
dictionary, uniformly indicate that a word is vulgar, and
the applicant's use of the word is clearly limited to the
vulgar meaning of the word.” Id. We therefore accept that
“cock” is a vulgar term for a penis and move on to consider
whether the presence of COCK in COCKTALES renders
applicant’s mark in its entirety a scandalous mark.
Because the dictionary definitions are sufficient for us to
arrive at our conclusion regarding the vulgarity of “cock,”
we need not comment on the Google.com search results, the
Serial No. 77641819
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babeland.com and smittenkitten.com websites or the NEXIS
evidence regarding use of “cock” alone.
As used in the mark at issue, “tales” is defined as
the examining attorney asserts, i.e., a recital of events
or happenings; a report, and applicant’s services include
tales about relationships and sexuality. Thus, we consider
whether COCKTALES, comprised of the vulgar term COCK
combined with the descriptive term TALES, is vulgar. It is
the examining attorney’s position that the addition of
TALES does not make a difference; he states, “[t]he whole
mark need not be immoral or scandalous to trigger a 2(a)
refusal.” Brief at 7. To be clear, we consider whether
COCKTALES is vulgar to not necessarily a majority, but to a
substantial composite of the general public in the context
of the marketplace as applied to only the services
described in the application. McGinley 211 USPQ at 637;
and In re Riverbank Canning Co., 95 F.2d 327, 37 USPQ 268
(1938).5
5 Applicant contends that even if her use of the mark is in
connection with sexually-themed works, the marketplace for her
services is the marketplace of theater and art patrons, and that
these people are in general well accustomed to sexual content.
Brief at 18. For support, she relies on excerpts from various
plays which have a sexual theme such as Lysistrata, Romeo and
Julilet, Equus and Vagina Monologues. We reject applicant’s
definition of the marketplace and find that the marketplace, even
in the context of applicant’s sexually themed services, includes
the general population. See e.g., In re Boulevard Entm’t, 67
USPQ2d 1477; In re Riverbank Canning Co., 37 USPQ at 270 (“In
Serial No. 77641819
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With the exception of (i) the webpages containing the
extremely sexual lyrics, (ii) the cover of a book by Bob
Vickery entitled “Cock Tales,” offered on amazon.com, and
(iii) the cartoon character with testicles and an erect
penis on his costume, discussed below, we find the
examining attorney’s evidence regarding use of “cocktales”
not particularly persuasive of his assertion that the mark
is vulgar. The references to sex, pornography or penises
in the vinegarandsugar.blogspot.com and imdb.com websites,
and even the text and image of a couple caressing on the
pornographic cocktales.com website, do not convince us that
“cocktales” as appearing on these websites is a vulgar
term. Additionally, the “Cocktales” and “Cock Tales” book
titles on the amazon.com webpages are not vulgar simply
because the books concern sexual encounters. As applicant
points out, “sexual matters are topics of discussion
throughout contemporary society and cannot be considered
per se vulgar.” Brief at 9. See applicant’s record
evidence from Kinsey Institute for Research in Sex, Gender
and Reproduction at Indiana University, Harvard University,
Yale University, Georgetown University, Stanford University
determining whether the mark, used upon wine, is scandalous, we
must consider the viewpoint, not only of wine drinkers alone, but
also of those who do not use wine as a beverage.”).
Serial No. 77641819
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American Association of Sex Educators, Counselors, and
Therapists, the American Board of Sexology and the
Institute for the Advanced Study of Human Sexuality,
regarding studies of sex and sexuality. See In re Madsen,
180 USPQ 334, 335 (TTAB 1973) (in determining if WEEK-END
SEX for a magazine is scandalous, the Board focused on the
mark itself and stated “the question of whether or not the
contents of the magazine may be pornographic in nature, is
not an issue to be decided by this Board.”)
Applicant’s declaration attesting that the president
of the University of Puget Sound mentioned her play
directly by name in a speech he gave to an audience of
students and parents also supports her contention that her
mark is not vulgar.6 Similarly, the fact that applicant’s
work was discussed in an article entitled “Vaginas and
cocks show pride” in the student newspaper of the
University of Puget Sound is some evidence that the mark is
not perceived as vulgar.
The sexually explicit lyrics to songs entitled
“Cocktales,” Mr. Vickery’s book cover and the cartoon
6 The frannywanny.com article about the Cocktales restaurant has
limited probative value because the services provided by the
restaurant are not the same as or similar to applicant’s
services.
The National Sexuality Resource Center (nsrc.sfsu.edu) webpage
is neutral in our analysis in light of the language that appears
on that webpage.
Serial No. 77641819
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character are in a different category. All, in a very
graphic manner, focus on penises involved in sex acts or in
preparation for sex acts. See Boston Red Sox Baseball Club
LP v. Sherman, 88 USPQ2d 1581, 1588 (TTAB 2008) (“The
significance of “rod” when preceded by the word ‘sex’
denotes only one meaning.”). The wording in the songs are
vulgar. Applicant does not contest the vulgarity of the
lyrics. Brief at 14. Also, as for the title of Mr.
Vickery’s book, there is no doubt as to what he intends by
“Cock Tales” in light of the location of the model’s right
hand:
We can extrapolate from this evidence and conclude that the
use of “cocktales” in these webpages and book title is
intended to be vulgar. See In re Squaw Valley Development
Co., 80 USPQ2d 1264, 1272 (TTAB 2006), (noting the
limitations on examining attorneys in gathering evidence,
the Board stated it could “extrapolate[e] from the evidence
Serial No. 77641819
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of record that a substantial composite of Native Americans
find applicant's use of SQUAW in its marks on the
identified goods and services to be disparaging.”).
As is clear from the foregoing, the record is mixed on
the question of vulgarity of COCKTALES, with some evidence
demonstrating the term is vulgar and other evidence
demonstrating that it is not vulgar.
That brings us to applicant’s argument at p. 5 of her
brief that “when heard or read in its entirety, consumers
may understand the Mark to be a play on the common word
‘cocktail,’ which is neither vulgar nor scandalous. …
[T]he Mark could be a double-entendre, namely, a witty or
sly rendering of a word for pre-dinner drink ….”
“Cocktales” and “cocktails” are identical in pronunciation.
Also, two of the books entitled “Cocktales” appearing on
the amazon.com webpages have book covers which make a
direct association with “cocktails”:
The cocktail glasses and the edit to “cocktails” make it
clear that the titles are a play on “cocktails.” The
Serial No. 77641819
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record also includes a Facebook page for “Cock Tales,” with
the caption, “Cock Tales is a juicy cocktail of bed time
stories. A victim of the deepest penis envy, Tjasa with
her Bunnies entertains us with her original playlets about
her relentless attempts to catch and internalize the most
elusive of creatures.” The owner of the Facebook page does
not use “cocktail” to refer to a mixed drink, but as a
reference to a mixture of diverse elements.7 The Facebook
use of “cocktail” still provides an association of
“cocktale” with “cocktail,” which diminishes any vulgarity
that may attach to “cocktale.” Thus, this evidence also
supports applicant’s double-entendre argument.
As demonstrated by this evidence, the reference to a
mixed drink inherently rebuffs any vulgarity suggested by
the inclusion of “cock” in “cocktales,” and instead creates
a clever, light-hearted humorous double-entendre with the
term “cocktails.” Applicant herself focuses on this double
entendre in her specimen of use. The cocktail glass in the
specimen buttresses her contention that the mark is
intended as a play on the word “cocktail,” and the
appearance of the cocktail glass makes it less likely that
7 We take judicial notice of one of the definitions of “cocktail”
in Merriam-Webster’s Online Dictionary (merriam-webster.com),
that is, “something resembling or suggesting … a drink as being
a mixture of often diverse elements or ingredients
”
Serial No. 77641819
21
comprises scandalous matter under Section 1052(a) ‘in favor
of [the] applicant and pass the mark for publication with
the knowledge that if a group does find the mark to be
scandalous … an opposition proceeding can be brought and a
more complete record can be established.’”) Because of the
evidence and the double-entendre, we have doubts as to the
alleged vulgarity of the mark; any vulgarity in the term
“cocktales” is likely offset, however, by the double-
entendre that exists with “cocktails.” We therefore
reverse the examining attorney’s refusal to register
applicant’s mark under Section 2(a) of the Trademark Act.
Decision: The refusal to register under Trademark Act
§ 2(a) is reversed.
