HARPOONTANG Response to Office Action 4 29 2015 .pdf

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
TRADEMARK EXAMINING OPERATION
In re Application of:
Laura Goldhamer
Serial No.: 86/149263
Filed: December 20, 2013
Mark: HARPOONTANG

)
) Trademark Law Office: 108
)
) Attorney: Laura E. Fionda
) Office Action Date: October 30, 2014
)

Commissioner for Trademarks
P. O. Box 1451
Alexandria, VA 22313-1451
REQUEST FOR RECONSIDERATION
The Trademark Examining Attorney (the “Examiner”) has refused registration of
Applicant’s service mark HARPOONTANG under Trademark Act Section 2(a) (15
U.S.C. § 1052(a)), on the ground the mark is scandalous, and issued a Final Office Action
dated October 30, 2014. Applicant files this Request for Reconsideration under 37 C.F.R.
§2.63(b)(3) and respectfully requests that Examiner reconsider her Final Office Action
for the reasons set forth in the following remarks.
Remarks
(Arguments)
A.

Examiner’s Cited Evidence Supports Applicant’s Argument that the
Mark is Not Scandalous

A mark is scandalous if it is vulgar to the relevant audience. 4A Callman on
Unfair Comp., Tr. & Mono. § 26:15 (4th Ed.). The relevant audience is the population of
the United States which normally purchases the services at issue. In Re McGinley, 660
F.2d. 481, 211 U.S.P.Q. 668 (C.C.P.A. 1981). Examiner provided evidence comprising
comments from the relevant audience (consumer comments on applicant’s mark/band
name) to demonstrate the consuming public’s perception of the mark, reprised here:
(“With a name like that, sure there’s some inbuilt sense of irony.”); (“If
this isn’t already a porno title, it’s about to be soon.”); (“What an excellent
band name. I’m sure with a name like that, they won’t totally suck. [end
sarcasm]”)(“Okay, that name...ummm...I really had to double check on the
ootang part I only saw! LMAO Made me double think on the adult version
of...umm..well I'll let your mind go.”); (Harpoontang seems like an
awesome name. Then when you listen to Harpoontang for a while,
Harpoontang seems like the only awesome name for this. Excellent
choice.”)

1

To support a refusal on the ground that a proposed mark is immoral or
scandalous, the examining attorney must provide evidence that a substantial portion of
the general public would consider the mark to be scandalous in the context of
contemporary attitudes and the relevant marketplace. Mavety Media, 33 F.3d at 1371-72,
31 USPQ2d at 1925-26. TMEP 1213.01.
Examiner’s evidence clearly demonstrates that the consuming public views the
mark as funny, ironic, imaginative (“I’ll let your mind go”), an “excellent band name,”
and “an awesome name.” Applicant respectfully submits that Examiner misinterprets her
evidence, because there is no indication in the Examiner’s evidence that the relevant
public views the mark as vulgar or “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 the context of the marketplace as applied to goods or
services applied in the application.” See In Re McGinley, 660 F.2d 481 (1981).
Examiner also provides evidence to support her argument that the Applicant’s use
of the mark is “clearly limited to that vulgar meaning. See In re The Boulevard Entm’t,
Inc., 334 F.3d at 1341.” See Office Action October 30, 2014. In re The Boulevard Entm’t,
Inc., is not analogous or persuasive to Applicant’s services. Boulevard provides adult
entertainment services over the telephone (phone sex). In Boulevard’s efforts to register
“Jack-Off’ in connection with phone sex services, it was disingenuous of Boulevard to
argue that “Jack-Off” had other meanings. That same analysis is not applicable to the
HARPOONTANG application. The determination of whether a mark is scandalous must
be made in the context of the relevant marketplace for the goods or services identified in
the application. TMEP 1213.01. The goods or services identified in the
HARPOONTANG application are entertainment in the nature of live performances by a
music ensemble. The Applicant does not provide phone sex services; rather, Harpoontang
is the name of a band. They provide musical performances, some of which include
singing and speaking lyrics. Examiner provided samples of Applicant’s lyrics in support
of Examiner’s argument that Applicant’s use of the mark is “clearly limited to that vulgar
meaning.” However, the evidence provided by Examiner does not support Examiner’s
argument. The lyrics cited by Examiner are not limited to the vulgar, but range from
benign, to funny, to double entendres, to vulgar. See Office Action October 30, 2014.
Even if all of Harpoontang’s lyrics were scandalous and vulgar, Applicant’s
services are not comprised solely of its lyrics. The Applicant’s services are music
performances - creating music by playing instruments, performing that music (playing
instruments, dancing, and moving on stage), a portion of which includes singing or
speaking lyrics. By its very nature music cannot be vulgar or scandalous, and playing
musical instruments cannot be vulgar or scandalous unless the motions involved are such,
which is not relevant to a trademark registration analysis. Links to those musical
performances are provided in Examiner’s own evidence. See Office Action October 30,
2014. Thus, Examiner’s conclusion that Applicant’s mark is clearly limited to a vulgar
use is refuted by Examiner’s cited evidence and Applicant’s description and evidence of
its services. Even if some of Applicant’s lyrics may be vulgar, performing vulgar lyrics is
not Applicant’s sole use of the mark.

2

B.

The Term Poontang is Not Inherently Vulgar

Applicant respectfully directs Examiner’s attention to In re Gray, Serial No.
78622783 (September 17, 2007) [not precedential] respecting application for the mark
CUMBRELLA. That mark includes the word “cum,” a term for “semen ejaculated during
orgasm.” The goods were condoms. As here, the examiner in that case cited extensive
evidence, including dictionary definitions, of the vulgar meaning of the term “cum.” In
Gray the TTAB observed that while the dictionary evidence provided by the examiner
said the term was vulgar, other dictionaries did not define the term as vulgar:
“In contrast to the dictionary definition cited by the Examining
Attorney, www.websters-online-dictionary.org does not define the term
“cum” as vulgar. “Cum” is simply defined as “[t]he thick white fluid
containing spermatozoa that is ejaculated by the male genital tract”
Likewise, the dictionary evidence cited by Examiner indicates that the term
“poontang” is vulgar. However, Applicant’s dictionary evidence attached as Exhibit A
does not designate the term “poontang” as vulgar. In the attached evidence the term
“poontang” is primarily a synonym for vagina / female genitalia, and sexual intercourse,
which are no more vulgar than the comparable definitions of the term “cum.”
The TTAB in Gray then reasoned:
This leaves us with the sexually graphic photographs wherein the
term “cum” is “directly associated with degrading sexual acts involving
people being ejaculated on and/or ejaculate matter being
ingested.”[footnote omitted] This fact alone is not sufficient to prove that
the word “cum” is vulgar. To find otherwise would be to hold that any
term or thing used in association with pornography is vulgar (e.g., the
words “sperm” or “ejaculate”). While the Examining Attorney has shown
that the term “cum” has been used in connection with sexually graphic
activities, he has not established that the term itself is vulgar or
offensive.”
Applicant respectfully submits that the TTAB’s analysis in Gray is appropriate to
the application at hand. While the term “poontang” may be used in a vulgar manner, the
term itself is not inherently vulgar. Though examples are scarce, Applicant provides two
sample of other non-vulgar usage of the term “poontang” in Exhibit B; namely, a drink
recipe and Applicant uses the term as only part of a mark for a band, and, performing
music (whether that music sometimes includes vulgar lyrics or not) is not a vulgar or
scandalous usage of the term “poontang.”
When dictionary definitions do not plainly show the mark to be vulgar, the
Examiner should resolve the doubt in favor of publishing the mark for opposition. E.g., In
re Watkins, 2005 TTAB LEXIS 66 (T.T.A.B. 2005) (not precedential) (some definitions
showed the mark was vulgar, others did not) (“To the extent that there is doubt as to the

3

immoral or scandalous nature of applicant’s mark, that doubt must be resolved in favor of
publication of the mark.”); In re Friggin Barnyard, 1999 TTAB LEXIS 108 (T.T.A.B.
1999) (not precedential) (finding definitions of FRIGGIN “in which it is invariably
considered to be vulgar as well as definitions in which it is usually regarded to be
inoffensive”; ordering the mark to be passed for publication).
In cases of doubt or ambiguity as to scandalousness, the Examiner is supposed to
pass the mark to publication to give others the opportunity to object. 3 McCarthy on
Trademarks and Unfair Competition § 19:77 (4th Ed.) citing: In re Mavety Media Group
Ltd., 33 F.3d 1367, 31 U.S.P.Q.2d 1923 (Fed. Cir. 1994); (adopting policy of the Board
in cases of doubt to pass the mark to publication to give others the opportunity to oppose
registration). Moreover, both the Federal Circuit and the PTO have adopted a guideline
that any reasonable ambiguity respecting the scandalous nature of a mark will be
interpreted in favor of a non-vulgar interpretation, and doubt about bad taste should be
resolved in favor of the applicant. In re Mavety Media Group Ltd., 33 F.3d 1367, 31
U.S.P.Q.2d 1923 (Fed. Cir. 1994); In re Over Our Heads, Inc., 16 U.S.P.Q.2d 1653
(T.T.A.B. 1990).

Conclusion
For the reasons discussed above, and in light of the evidence provided, reasonable
ambiguity respecting the scandalous nature of a mark must be interpreted in favor of a
non-vulgar interpretation, and doubt about bad taste should be resolved in favor of the
Applicant. Examiner should resolve the doubt by publishing the mark for opposition.
Applicant respectfully submits that it has addressed all of the substantive matters raised
by the Examiner, and that the instant Application is in condition for allowance. Applicant
requests prompt publication. If the Examiner has any questions, or if it would otherwise
facilitate review of the application, she is requested to contact the undersigned.
Respectfully submitted,
Laura Goldhamer, by her Attorneys
JONES & KELLER, P.C.

Date: April 29, 2015

/s/ Brad H. Hamilton
Attorney for Applicant

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