Star Belly Stitcher, Inc.

THIS OPINION IS A

PRECEDENT OF THE TTAB

Mailed: 8/12/2013

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re Star Belly Stitcher, Inc.

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Serial No. 85247730

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Bruno Tarabichi of Owens Tarabichi,

for Star Belly Stitcher, Inc.

Linda Lavache, Trademark Examining Attorney, Law Office 106,

Mary I. Sparrow, Managing Attorney.

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Before Quinn, Ritchie and Kuczma,

Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Star Belly Stitcher, Inc. filed, on February 21, 2011, an application under

Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), to register the designation

AWSHIT WORKS (in standard characters) for “baseball caps; bucket caps; cap

visors; caps; caps with visors; fleece pullovers; golf caps; golf shirts; hats; hooded

pullovers; hunting vests; jackets; knit shirts; long-sleeved shirts; mock turtle-neck

sweaters; neckties; pique shirts; polo shirts; scarves; short-sleeved or long-sleeved t-

shirts; sports caps and hats; sweat shirts; t-shirts; visors; [and] wind shirts” in

Serial No. 85247730

International Class 25.1 Applicant claims first use anywhere on July 5, 2009, and

first use in commerce on July 10, 2009.

The trademark examining attorney refused registration under Section 2(a) of

the Trademark Act, 15 U.S.C. § 1052(a), on the ground that applicant’s proposed

mark, when used in connection with applicant’s goods, comprises immoral or

scandalous matter.

When the refusal was made final, applicant appealed. Applicant and the

examining attorney filed briefs.

Applicant argues that the proposed mark is a fanciful term coined by applicant.

Applicant further asserts that the AWSHIT portion is a unitary term, not two

terms, and that the term “shit” is not used or emphasized separate and apart from

AWSHIT.2 Thus, applicant argues, the examining attorney impermissibly dissected

the mark into its component parts. Applicant also asserts that because the proposed

mark does not contain the separate term “shit,” consumers will not recognize the

mark as referring to the term “shit.” 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. Applicant also points to the existence of words

1 Applicant depicts the applied-for mark in the drawing as “Awshit Works,” claiming that

its mark is in standard characters. TMEP § 807.03(a) (2013) provides that in such cases

“the applicant ... may use both uppercase and lowercase letters, all uppercase letters, or all

lowercase letters, since no claim is made to any particular font style, size, or color”; further,

“applicant does not have to display the mark in all uppercase letters.” (emphasis in

original). Inasmuch as no claim is made in any particular font style or size, we have

depicted the applied-for mark in this decision in all uppercase letters.

2 Notwithstanding this argument, in the initial application document applicant originally

disclaimed the words “SHIT” and “WORKS” apart from the mark. When the examining

attorney informed applicant that the disclaimers were unnecessary, applicant withdrew the

disclaimers.

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such as “shitake” and “shittah,” remarking that although these words begin with

the letters “s-h-i-t,” they are not recognized or equated with the term “shit.”

Applicant argues that, in any event, the term “shit” also has non-vulgar meanings.

Lastly, applicant contends that the trademark register is “littered” with marks that

are clearly more offensive than is its proposed mark, and that any doubts regarding

whether the proposed mark is immoral or scandalous must be resolved in

applicant’s favor.

The examining attorney maintains that the term “shit” is offensive, and that

AWSHIT is a combination that is vulgar slang for use as an interjection to express

surprise, anger or extreme displeasure. The examining attorney introduced online

dictionary definitions of the terms “aw,” “shit,” “awshit” (unitary), “aw shit” (two

terms) and “works”; a newspaper article; and a summary of results when “aw shit”

was searched using the Google search engine.

Section 2 of the Trademark Act, as amended, provides that “[n]o trademark by

which the goods of the applicant may be distinguished from the goods of others shall

be refused registration on the principal register on account of its nature unless it[]

(a) [c]onsists of or comprises immoral, deceptive, or scandalous matter.” What

constitutes “immoral” or “scandalous matter” has evolved over time, and our

primary reviewing court has observed that “we must be mindful of ever-changing

social attitudes and sensitivities.” In re Mavety Media Grp. Ltd., 33 F.3d 1367, 31

USPQ2d 1923, 1926 (Fed. Cir. 1994). As the Federal Circuit stated, “Today’s

scandal can be tomorrow’s vogue. Proof abounds in nearly every quarter, with the

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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.” Id. During this societal evolution, however, the basic legal

framework has remained consistent.

In order to refuse a mark under this portion of Section 2(a), the Office “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 at 1926. More concisely, and especially useful in the context of this case,

the Office may prove scandalousness by establishing that a mark is “vulgar.” In re

Fox, 702 F.3d 633, 105 USPQ2d 1247, 1248 (Fed. Cir. 2012), citing In re Boulevard

Entm’t, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003). See 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”). This demonstration must be made “in the context of

contemporary attitudes,” “in the context of the marketplace as applied to only the

goods described in [the] application,” and “from the standpoint of not necessarily a

majority, but a substantial composite of the general public.” In re Mavety Media

Grp. Ltd., 31 USPQ2d at 1925-26.

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 omitted). But where it is clear from

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Serial No. 85247730

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’”).

The determination that a mark comprises scandalous matter is a conclusion of

law based upon underlying factual inquiries, and the burden of proving that a

proposed mark is unregistrable under Section 2(a) rests with the Office. In re

Mavety Media Grp. Ltd., 31 USPQ2d at 1925.

The record includes numerous dictionary entries showing that the term “shit” is

uniformly defined by dictionaries in terms of being “vulgar” or “offensive.” See In re

Boulevard Entm’t Inc., 67 USPQ2d at 1478 (“While it is true that the personal

opinion of the examining attorney cannot be the basis for a determination that a

mark is scandalous, dictionary definitions represent an effort to distill the collective

understanding of the community with respect to language and thus clearly

constitute more than a reflection of the individual views of either the examining

attorney or the dictionary editors.”). The definitions of “shit” in one dictionary begin

by indicating that the term is “offensive”:

the solid waste which is released from the bowels of a

person or animal; someone or something you do not like,

especially because they are unpleasant or of low quality;

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Serial No. 85247730

insults, criticism or unkind or unfair treatment; and used

in negatives to mean “anything.”

(CAMBRIDGE DICTIONARIES ONLINE).

Another dictionary lists all definitions of “shit” as being “usually vulgar”: “feces,

nonsense, crap, damn”; and that the term is “usually vulgar” when “used as an

interjection.” (MERRIAM-WEBSTER ONLINE). The definitions of “shit” listed in THE

AMERICAN HERITAGE DICTIONARY at yahoo.com begin with identifying the term as

“Vulgar Slang.” THE OXFORD ENGLISH DICTIONARY indicates that the term “shit” is

“coarse slang,” meaning “expressing anger, despair, surprise, frustration,

resignation, excitement, etc.”

The term “aw,” by contrast, is used as an interjection “to express mild

sympathy, remonstrance, incredulity or disgust” (PENGUIN DICTIONARY); “to express

sympathy, tenderness, disapproval or disbelief” (THE AMERICAN HERITAGE

DICTIONARY); and as “an expression of disapproval, commiseration, or appeal”

(COLLINS DICTIONARY).

The designation “aw shit,” as a composite, is defined as follows: “something you

say when something bad happens.” (Urban Dictionary).3 The term “awshit”

3 Urban Dictionary (urbandictionary.com) is a slang dictionary with definitions submitted

by visitors to the website. The Board has in the past considered entries from this online

dictionary, comprising user-generated content, to be probative evidence. See, e.g., In re

Luxuria, 100 USPQ2d at 1150-51. The website indicates that “[a]ll the definitions on Urban

Dictionary were written by people just like you. Now’s your chance to add your own!” The

website further indicates that Urban Dictionary “cannot control all content posted by third

parties,” and that it “does not guarantee the accuracy, integrity or quality of such content,”

warning that a user of the website may be exposed to content that the user may find

incorrect, objectionable or offensive. In referencing the dictionary definitions in the present

case, we recognize the inherent problems regarding the reliability of Urban Dictionary

because it is a collaborative website that permits anyone to submit or edit a definition.

Thus, Urban Dictionary entries suffer from the same potential reliability problem that the

Board has confronted with respect to Wikipedia. See In re IP Carrier Consulting Group, 84

USPQ2d 1028, 1032-33 (TTAB 2007). The Board finds that the two reference works should

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(unitary) is defined in the same dictionary as follows: “Awshit is usually used when

something really bad happens, or in a case of horrible shock”; and “Aw Shit!”

(composite) is “normally used when running away from a bad situation; a harsher

version of ‘Oh No!’ or ‘Aw Man!’”.

Finally, the term “works” is defined as “an industrial building, especially one

where a lot of people are employed.” (CAMBRIDGE DICTIONARIES ONLINE).

The dictionary evidence shows that the terms “shit” and “aw shit” are vulgar

terms. As highlighted by the examining attorney, however, the record in this case

includes more than just dictionary definitions.4 An article from the PITTSBURGH

be treated similarly. Accordingly, the Board will consider dictionary definitions taken 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. Further, in the context of a Section 2(a) refusal

involving the “immoral or scandalous” portion of the statute, we recognize that while a

definition in Urban Dictionary may be indicative of what a term means to a composite of

the general public, we are less sure that it represents the meaning to a substantial

composite, given that just one person can submit a proposed definition. In the present case,

the examining attorney submitted the Urban Dictionary definitions early enough to allow

applicant an opportunity to rebut this evidence if it believed that the definitions were

incorrect. Here, applicant did not submit any alternative meanings of “aw shit” or otherwise

question the reliability of the definitions listed in Urban Dictionary. Accordingly, we have

considered the Urban Dictionary definitions. Of course, as the Board has pointed out with

respect to Wikipedia evidence, the better practice with respect to such evidence is to

corroborate the information with other reliable sources if available. See TBMP § 1208.03

(2013). The same recommendation applies equally to Urban Dictionary evidence and, in

fact, the examining attorney in the present case introduced, inter alia, dictionary

definitions from various reliable dictionary sources.

4 The Google search result summary showing uses of the term “aw shit” is of limited

probative value. These search results do not show use of the term as a heading, link or

content on a website, and moreover there is insufficient text to show the context within

which the term is used. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,

1833 (Fed. Cir. 2007); and In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011).

While the search retrieved a large number of hits (over 100,000), this too is of limited

probative value. In re BetaBatt Inc., 89 USPQ2d 1152, 1153 n.1 (TTAB 2008).

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POST-GAZETTE (July 19, 2006) is captioned “Bush’s Expletive Wasn’t Deleted.” The

article references an instance when former President George W. Bush casually

uttered the word “shit” off the cuff, and indicates that many newspapers declined to

print the word in full, and four of the major broadcast television networks edited out

the word when airing the clip of the President’s quote. For example, CBS stated

that “we bleeped [the term ‘shit’] ... [i]t’s a CBS policy that we don’t air expletives.”

The article also states that some major newspapers, including USA TODAY, printed

the expletive as “S---” instead of the actual word when quoting the President. The

article further indicates that those newspapers that printed the word in their

editions, and those cable news outlets and radio stations that aired the quote,

departed from their normal practice due to the identity of the speaker and the

newsworthiness of the story. In this connection the author indicates that her paper,

the PITTSBURGH POST-GAZETTE, “normally does not print obscenities”; and a CNN

spokesperson is quoted as saying “[t]he word is not one we’d normally air on CNN,

but when said by the President in this context, we thought it was appropriate.”

Other outlets, such as National Public Radio, aired the quote but only after alerting

listeners by a warning that the story contained “language some may find offensive.”

The examining attorney also highlights the fact that the United States Supreme

Court, in a recent opinion, used the designation “s***” in place of the word “shit.”

See FCC v. Fox TV Stations, Inc., 132 S.Ct. 2307, 2314 (2012) (“There, a person

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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?’”).

Based upon the evidence of record, we have no trouble finding that applicant’s

proposed mark is scandalous as contemplated by the provisions of Section 2(a). 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. The addition of the term “works,” (which may indeed be

displayed in a subordinate manner to the “awshit” portion in the proposed mark as

actually used (see specimen, infra)), does not serve to diminish the vulgarity of the

term. See In re Fox, 105 USPQ2d at 1250 (design element of a crowing rooster did

not diminish vulgarity of literal element “Cock Sucker”); and Boston Red Sox

Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008). In this case, while we

need not rely solely on dictionary definitions for our decision, the term “shit” would

appear to be one of those vulgar terms, by definition alone, which dooms a proposed

mark under Section 2(a). So as to be clear, while we find the dictionary definitions

to be sufficient, we find that there is ample evidence in the record beyond the

dictionary definitions which establishes that the proposed mark is scandalous to a

substantial composite of the general public.

Insofar as applicant’s arguments are concerned, applicant contends that the

term “shit,” in addition to the meanings upon which the examining attorney relies,

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has other meanings that clearly are not vulgar. In particular, applicant points to

the following alternative meanings: a contemptible worthless person; something

worthless, rubbish, nonsense; personal belongings, stuff; tease or try to deceive; and

an exclamation of disgust, anger or annoyance.

First, “shit” is still a vulgar term used to express all of these alternative

meanings highlighted by applicant; the vulgarity of the term is not diminished

when used with any of them. Second, there is no requirement in Section 2(a) that a

mark’s vulgar meaning must be the only relevant meaning, or even the most

relevant meaning. Rather, 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 1250

(emphasis in original). As explained by the Federal Circuit: “The word ‘comprises,’

at the time of the statute’s enactment in 1905,5 meant ‘includes.’ Congress thus

chose to extend the prohibition not only to marks that ‘[c]onsist[] of ... scandalous

matter,’ but also to marks that include scandalous matter.” Id. (citations omitted).

Thus, the Office need prove the existence of only one vulgar meaning to justify a

Section 2(a) refusal. Id. See TMEP § 1203.01 (2013).

Applicant and the examining attorney go back and forth over whether the

specimen of record, reproduced below, shows the mark to be AwShit Works or

Awshit Works; that is, applicant contends that the letter “s” of the “shit” portion is

5 The court, earlier in the Fox decision, had noted that the prohibition against registration

of immoral or scandalous marks that is found in the Trademark Act of 1946 was first

codified in the 1905 revision of the trademark laws. In re Fox, 105 USPQ2d at 1248.

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in lowercase (thereby making it less likely that consumers will perceive the term

“shit”), whereas the examining attorney asserts that the letter “S” is in uppercase

(thereby making the “shit” portion more easily discernible).

This discussion is irrelevant to our decision. Because applicant’s proposed mark

is presented in standard characters, as noted earlier, applicant is not limited to any

particular depiction of the mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d

1905, 1909-10 (Fed. Cir. 2012); and Cunningham v. Laser Golf Corp., 222 F.3d 943,

55 USPQ2d 1842, 1847 (Fed. Cir. 2000). The rights associated with a mark in

standard characters reside in the wording or other literal element, and not in any

particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB

2009). Of particular relevance in this case is that applicant, in applying for its mark

in standard characters, is entitled to all depictions of its standard character mark

regardless of the font style, size, or color, and not merely “reasonable manners” of

depicting such mark. See In re Viterra Inc., 101 USPQ2d at 1910; and Citigroup Inc.

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v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir.

2011). Thus, although the specimen may show the way in which applicant currently

uses the proposed mark, the mark could at any time in the future be displayed in a

manner emphasizing the term “shit.”6

Applicant, while acknowledging that whether a term is immoral or scandalous

necessarily must be determined on a case by case basis, nevertheless “feels

compelled to point out that there are much more supposedly offensive trademarks

than AWSHIT WORKS that have been allowed to register.” (Brief, p. 6). Thus,

applicant urges, equity requires that its proposed mark be allowed to proceed to

publication.

First, while applicant specifically lists for the first time in its brief five third-

party registered marks, no copies of the registrations were submitted. To make a

third-party registration of record, a copy of the registration, either a copy of the

paper Office record, or a copy taken from the electronic records of the Office, should

be submitted during prosecution/examination of the application. In re Jump Designs

LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006). Mere listings of registrations are not

sufficient to make the registrations of record. In re Hoefflin, 97 USPQ2d 1174, 1177

(TTAB 2010). Second, even if copies had been submitted with applicant’s brief, such

evidence would be untimely. Trademark Rule 2.142(d) provides that the record in

an application should be complete prior to the filing of an appeal and that the Board

will ordinarily not consider additional evidence filed with the Board after the appeal

6 See discussion, infra, regarding words that include a “shit” portion, but which would not

be readily perceived as referencing the vulgar word.

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is filed. Third, and most significantly, 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. “Even if all

of the third-party registrations should have been refused registration ... such errors

do not bind the USPTO to improperly register Applicant’s marks.” In re Shinnecock

Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009), citing In re

Boulevard Entm’t Inc., 67 USPQ2d at 1480. See In re Nett Designs Inc., 236 F.3d

1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had

some characteristics similar to [applicant’s] application, the PTO’s allowance of

such prior registrations does not bind the board or this court.”).

The existence of words such as “shitake” and “shittah,” which applicant points

out include a “shit” portion, is irrelevant.7 As opposed to applicant’s applied-for

mark, in which the phrase “aw shit” would readily be seen, consumers are unlikely

to even perceive or understand the letter string as referencing the vulgar word

“shit,” given that the words have their own recognized meanings, none of which is

vulgar.

In making our determination, we have considered the Board’s decision in the

case of In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) wherein the Board

7 The first word referenced by applicant is a variant of the correctly spelled word “shiitake,”

defined as “a mushroom native to East Asia, having an edible golden or dark brown cap.”

The word “shittah” means “a tree, probably a species of acacia, that was a source of a wood

mentioned frequently in the Bible.” THE AMERICAN DICTIONARY OF THE ENGLISH LANGUAGE

(5th ed. 2011). The Board may take judicial notice of dictionary definitions. In re Thomas

White Int’l Ltd., 106 USPQ2d 1158, 1160 n.1 (TTAB 2013).

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found the term BULLSHIT to be vulgar. We have not relied on it, however, in

rendering our decision herein. Given the possible changes in morés over time, as

discussed above, we recognize that an earlier decision generally is insufficient to

warrant the same finding in a later case involving the same or similar mark. Id. at

1381. Thus, while the earlier mark BULLSHIT and the present mark AWSHIT

WORKS share the common element “SHIT,” the Board’s prior decision, rendered

over seven years ago, is of limited value to us in this case, where there is ample,

more current, evidence. In re Mavety Media Grp. Ltd., 31 USPQ2d at 1926.

Applicant urges that any doubt about the registrability of its proposed mark be

resolved in its favor. Although this approach has been utilized where the

registrability of the mark is uncertain, here we have no uncertainty about the

vulgarity of the proposed mark. In re Fox, 105 USPQ2d at 1251-52. 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. “[Applicant] will be unable, however, to call upon

the resources of the federal government in order to enforce [its] mark.” In re Fox,

105 USPQ2d at 1252.

Decision: The refusal to register is affirmed.

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