IP Law Daily, TRADEMARK—TTAB: Refusal to register LEFT NUT Brewing CO. reversed due to non-vulgar meanings, (Nov 16, 2015)

By Peter Reap, J.D., LL.M.

A trademark examining attorney’s refusal to register applicant The Left Nut Brewing Company’s applied for mark LEFT NUT BREWING CO. was reversed because, on balance, the evidence failed to show that the term “left nut” in the mark is vulgar, the Trademark Trial and Appeal Board has decided (In re Left Nut Brewing Company, Inc., November 13, 2015, Shaw, T.).

The applicant sought registration on the Principal Register of the mark LEFT NUT BREWING CO. in standard characters for “beers,” in International Class 32. The applicant disclaimed the wording “BREWING CO.”

The trademark examining attorney refused registration of the mark under Section 2(a) of the Trademark Act, 15 U.S.C. §2(a), on the ground that the applied-for mark consists of immoral or scandalous matter. The applicant appealed.

Section 2 of the Trademark Act provides that no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration unless it “[c]onsists of or comprises immoral … or scandalous matter.” The USPTO may prove that a mark is scandalous and refuse registration by establishing that the mark is “vulgar.” In re Fox, 702 F.3d 633, 105 USPQ2d 1247, 1248 (Fed. Cir. 2012). This demonstration must be made in the context of contemporary attitudes, in the context of the marketplace as applied to the goods described in the application, and from the standpoint of not necessarily a majority, but a substantial composite of the general public, the Board noted. Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word.

Although the applied-for mark is the LEFT NUT BREWING CO., the refusal to register was directed to the term “left nut.” Accordingly, the analysis under Section 2(a) focused on this term.

Based on dictionary definitions and articles submitted into evidence, the examining attorney argued that “[w]hen ‘LEFT NUT’ is considered as a unit, the meaning is clearly limited to the vulgar meaning referring to the left testicle,” and is thus scandalous under Section 2(a). The examining attorney submitted numerous dictionary definitions of the term “nut” which included usage notes describing the term as vulgar when referring to the testicles, as well as a definition of the term “left nut” from the Urban Dictionary and a number of excerpts from the Internet showing use of the term “left nut” referring to the left testicle. The applicant submitted evidence in support of registration showing that “nut” has non-scandalous meanings when used in connection with beer, and that marks comprising anatomical references, including several “nut” marks, have previously registered, the Board observed.

On appeal, the applicant first argued that the examining attorney impermissibly burdened it with proving that the mark is not vulgar. Second, the applicant argued that the evidence of record showed that the mark is not vulgar in that it has a number of non-vulgar meanings, similar marks have previously registered, and such anatomical references are not per se vulgar.

The applicant’s first argument was unavailing, the Board held. The applicant argued that the Examining Attorney impermissibly burdens it with proving that the mark is not vulgar because the Examining Attorney stated that “there is no evidence that the applicant uses ‘NUT’ to mean anything other than the vulgar meaning ... thus expressly burden[ing] the applicant with proving a non-vulgar use.” The applicant misapprehended the nature of the shifting burden of proof, according to the Board.

Once the Examining Attorney arguably showed that “left nut” is vulgar by way of the dictionary definitions and Internet excerpts, it became the applicant’s burden to show that “left nut” is not vulgar, the Board decided. It was not improper for the examining attorney to contend that, based on the evidence, “left nut” is prima facie vulgar. The applicant’s showing failed to rebut the examining attorney’s evidence. Moreover, it was the Board, not the examining attorney or the applicant, that decides whether a prima facie showing has been made, or whether the applicant rebutted such a showing, the Board said.

Applicant’s second argument, that the evidence did not support a finding that the mark is not vulgar, was more persuasive. The evidence of record from both the examining attorney and the applicant showed that “left nut” has a number of different meanings and is not always vulgar, even when sometimes referring to a testicle, in the Board’s view.

The Urban Dictionary definition of “left nut” submitted by the Examining Attorney showed that the term has a number of meanings. “Left nut” could, of course, refer to the left testicle. It also could be a figure of speech used to describe the lengths to which someone might go to attain something of great value. It could refer to a passenger’s position in an automobile, i.e., behind the driver. And it could refer to a member of the “political left” or a “left wing screwball.” Only the first of these meanings is arguably vulgar and, therefore, immoral or scandalous under Section 2(a). Similarly, the Internet excerpts submitted by the examining attorney presented a mixed picture of the vulgarity of the term “left nut.”

The applicant pointed to a number of arguably equally-suggestive “nut” marks which have registered, including: MY HUSBAND’S NUTS, SMELL MY NUTS, and MY FAMILY’S NUTS. These registrations suggested that, as the applicant argued, “anatomical references alone are not vulgar” the Board reasoned.

On balance, the evidence did not establish that the term “left nut” is vulgar. Although the usage notes to “nut” showed that it is vulgar when referring to the testicles, “nut” and “left nut” have a number of other non-vulgar meanings. Moreover, “left nut” has been used to refer to the left testicle by senators and web-authors with no evidence of offense or disapproval, and the USPTO has registered similarly-suggestive “nut” marks. Accordingly, the term “Left Nut” within the applied-for mark “Left Nut Brewing Co.” is not vulgar and thus not immoral or scandalous within the meaning of Section 2(a) when used on beers, the Board ruled.

The case is Serial No. 85935569.

Attorneys: Peter E. Morgan (Briskin, Cross & Sanford, LLC) for Left Nut Brewing Company, Inc. Christine Martin, Trademark Examining Attorney.

Companies: Giorgio S.R.L.; Left Nut Brewing Company, Inc.

Cases: Trademark USPTO