Red Sox, Scandal, and Trademarks

No, Alex Rodriguez isn’t involved. But with the Red Sox meeting the Tampa Bay Rays in the American League Championship Series on Friday, this seemed like a fun bridge between IP and MLB. (Game 1 is at 8PM EST, or at least 2 hours past the bedtime for most Tampa residents.) Brad Sherman sought to register (App. No. 78673909) the mark “SEX ROD” with the PTO in 2005 for use on clothing; the mark is in the Red Sox’ distinctive font. The Sox unsurprisingly filed an opposition in 2006 (I assume they’re using a trademark watch service), challenging the application as likely to cause confusion under Section 2(d) of the Lanham Act, and also as immoral / scandalous, disparaging, and falsely suggesting a connection with the Sox (all under Section 2(a)). The Sox also alleged that Sherman lacked the requisite bona fide intent to use the mark. (Sherman filed an Intent to Use (ITU) application, not one based on actual use.) The Trademark Trial and Appeal Board (TTAB), ever speedy, mailed its decision on September 9. The outcome: shockingly, Sherman loses.

Sherman’s threshold problem is that he was unable to show any concrete evidence of his intent to use the mark. This is a problem, since an ITU app requires bona fide intent to use the mark in commerce. Sherman noted that it’s pretty easy to start up a turnkey apparel business, but that doesn’t really answer the question. As for the mark being scandalous or immoral, Sherman admitted it was “sexually suggestive.” I think the TTAB is on solid ground in finding that a substantial composite of the general public would find the term “SEX ROD” vulgar. (Easy back-of-the-envelope test: say this phrase to a seventh-grade male; if he snickers, it’s scandalous or immoral.) Furthermore, since the mark mimics the team’s font, its vulgarity made it disparaging in the Board’s eyes. However, since the “RED SOX” and “SEX ROD” terms are dissimilar as word marks, the TTAB found no likelihood of confusion or false suggestion of connection with the team.

I have to believe it’s unlikely Sherman thought he could actually register and use the mark; instead, this looks like he’s doing a bit of self-promotion (apparently he’s a humorist), and also tweaking a Boston sports icon. Harmless fun, though it does force the Sox to spend money on IP lawyers rather than, say, backup third basemen. The distinction in the Board’s analysis of the likelihood of confusion between the marks is pretty interesting – the difference in words matters more than the conscious copying of the font and style of the overall layout. In this sense, ironically, the scandalous / immoral nature of Sherman’s proposed mark actually undercuts the Sox’ opposition: no one would plausibly think that the Sox endorsed or put out a shirt with “SEX ROD” on it, in the same way no one thinks those college T-shirts of Calvin and Hobbes in togas, swilling beer, are endorsed by Bill Watterson.

One of my students in Trademarks this semester asked an interesting question: doesn’t a judgment that a mark is scandalous / immoral / disparaging by the PTO (leading to a refusal to confer the benefits of registration) mean that the government is engaged in content-specific regulation of speech? I realize we’re technically in the commercial speech category, so Central Hudson‘s more deferential standard applies, but this struck me as interesting. I nosed around and haven’t found anything on this front yet (admittedly, I haven’t searched too deeply), but I’d be interested if readers have any comments. If not, Sherman may have the chance to make new law!

Hat tip: John L. Welch at TTABlog.

One Response to “Red Sox, Scandal, and Trademarks”

  1. I have always been wary of the PTO’s “scandalousness” bar to registration. It’s just a loophole for moralizing.