“AWSHIT” Cannot be A Registered Trademark Due to Scandalous Nature

The USPTO Trademark Trial and Appeal Board (“TTAB”) has held that an applicant’s proposed mark was vulgar and scandalous by using the word “shit.”  In re Star Belly Stitcher, Inc., Serial No. 85247730 (TTAB, August 12, 2013) (available here).  In 2011, Star Belly Stitcher, Inc. (“SBSI”) filed an application to register “AWSHIT WORKS” as a trademark for hats, shirts, jackets, vests, and scarves, claiming first use on July 5, 2009 and alleged first use in commerce on July 10, 2009.  The Trademark Examining Attorney refused registration becuase the mark contained immoral or scandalous matter.  SBSI appealed.

SBSI argued that “AWSHIT WORKS” is a fanciful term that it created.  SBSI also argued that the Trademark Examining Attorney erred in separating “AW” from “SHIT,” stating that the “AWSHIT” portion of the mark was meant to be considered as a unitary term.  Further, SBSI argued that “Even if consumers perceive the word ‘shit’ within the mark, and equate it with ‘feces,’ the literal interpretation of the mark, ‘aw feces works,’ makes no sense.”  In re Star Belly Stitcher, Inc., Slip Op. P. 2.  SBSI also pointed to words, such as “shitake,” that contain the letters “s-h-i-t” but are not recognized or equated with the term “shit.”  Finally, SBSI stated that the trademark register has countless marks that are more offensive than “AWSHIT WORKS” and therefore any doubts regarding “AWSHIT WORKS” as a scandalous or immoral mark must be resolved in favor of SBSI.  In the USPTO’s brief, the examining attorney maintained that the term “shit” is offensive and produced online dictionary definitions of “aw,” “shit,” “awshit,” “aw shit,” and “works.”

Under the Trademark Act (the Lanham Act), an application to register a trademark can be denied if the nature of the mark is scandalous, immoral, or deceptive.  However, what constitutes “immoral” or “scandalous” material changes over time.  In order to refuse to register “AWSHIT WORKS,” the USPTO “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 Media Grp. Ltd., 31 USPQ2d 1923,1926 (Fed. Cir. 1994).  Specifically, the Office must prove a mark is scandalous by showing that the mark is vulgar.

If the meaning of the mark is ambiguous, dictionary evidence of a possible vulgar meanings may be insufficient to establish the vulgarity of the mark.  However, if the dictionary evidence clearly shows that the mark as used by the applicant in connection with the products listed in the application calls to mind a vulgar meaning to the general public, then mark cannot be registered.  Here, the Examining Attorney presented various dictionary entries that defined the term “shit” as vulgar or offensive.

The term “aw” was defined to express sympathy or disapproval.  “Awshit” and “aw shit” were defined on the slang dictionary website Urban Dictionary as a term used when something bad happens.  Finally, “works” was defined as an industrial building.  While the dictionaries demonstrate that “shit” and “aw shit” are vulgar, the examining attorney also produced an article explaining how when former President George W. Bush casually said the word “shit,” many newspapers refused to print the word in full.  The examining attorney also pointed out that the U.S. Supreme Court used “s***” instead of “shit” in a recent opinion.  See FCC v. Fox TV Stations, Inc., 132 S.Ct. 2307, 2314 (2012) (“There, a person named Nicole Richie made the following unscripted remark while presenting an award: ‘Have you ever tried to get cow s*** out of a Prada purse?’”).

In considering the evidence presented, the TTAB concluding that SBSI’s proposed mark of “AWSHIT WORKS” is scandalous.  “We find that the totality of the evidence is sufficient to establish prima facie that the term ‘aw shit’ is an interjection, which is scandalous or vulgar to the conscience of a substantial composite of the general public, notwithstanding the fact that contemporary attitudes toward coarse language are more liberal than they were just a generation ago.”  In re Star Belly Stitcher, Inc., Slip Op. P. 9.  The TTAB noted that the subordinate word “WORKS” did not diminish the vulgarity of the mark.

The TTAB clarified that the dictionary definitions were sufficient to find the mark vulgar, but additional evidence proved that the mark is scandalous to the general public.  Thus, SBSI’s argument that “shit” has alternative meanings other than those presented by the examining attorney is irrelevant.  Similarly, the existence of words such as “shitake” is also irrelevant.  In addition, because SBSI presented its mark in standard characters, it did not matter whether SBSI’s goods had “Awshit Works” or “AwShit Works.”

Turning to SBSI’s argument that there were more scandalous marks already registered, the TTAB noted that SBSI only presented the listing of the registrations, not a copy of the registrations themselves.  This is insufficient, and even if SBSI had presented the registrations it would be untimely because SBSI should have included such registrations in its application.  Further, the existence of other scandalous marks does not justify the registration of another scandalous mark.  As a result, the TTAB affirmed the refusal to register “AWSHIT WORKS.”  However, “Nothing in this decision, of course, precludes applicant from continuing to sell its merchandise under the proposed mark; or from uttering the vulgar portion of its proposed mark upon its receipt of this decision.” In re Star Belly Stitcher, Inc., Slip Op. P. 14.

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