The key litigated issue is whether the Trademark Trial and Appeal Board erred in holding that a mark that creates a double entendre with one clearly vulgar meaning consists or comprises scandalous matter and is therefore barred by Section 1052(a) of the Lanham Act from registration.

The applicant, Marsha Fox, sells rooster-shaped chocolate lollipops. Since 1979, she has sold these lollipops using a composite mark consisting of certain words and a crowing rooster design. The consumers targeted by Fox's business are primarily fans of the University of South Carolina and Jacksonville State University, both of which employ gamecocks as their athletic mascots.

In September 2001, Fox applied to register her mark for use in connection with chocolate suckers molded in the shape of a rooster. The examiner determined that the applied-for mark consisted of or comprised immoral or scandalous matter and was therefore barred from registration by Section 1052(a) of the Lanham Act. Specifically, the examiner found that a dictionary defined the mark's literal element as a person who fellates another. Fox responded that the literal element is a double entendre and that the non-vulgar meaning is more relevant than the vulgar meaning in light of consumer perceptions of the product as a whole. The examiner reiterated the earlier finding in a final office action in May 2011.

Fox appealed to the TTAB, which ultimately affirmed the examiner's refusal. The TTAB concluded that the word portion of Fox's mark, when used in connection with her products, creates a double entendre with one clearly vulgar meaning. It held that the literal element of the mark was vulgar and therefore precluded from registration by Section 1052(a).

On December 19, 2012, the US Court of Appeals for the Federal Circuit issued a decision affirming the TTAB's ruling. Section 1052(a) bars federal registration of marks that consist of or comprise immoral or scandalous matter. The Federal Circuit upheld the TTAB's finding that the applied-for mark comprised scandalous matter, finding substantial evidence that the mark, taken as a whole and in context, had a vulgar meaning that will be perceived by a substantial composite of the public.

The court noted that assessing whether a mark has a vulgar meaning requires examination of the meaning of the mark:

The Federal Circuit rejected Fox's argument that the TTAB lacked substantial evidence to support its finding that her mark had a vulgar meaning. The court found this argument to be without merit since Fox had already:

The court also rejected Fox's argument that when a mark is a double entendre with a vulgar and non-vulgar meaning, the US Patent and Trademark Office must demonstrate that the public would choose the non-vulgar meaning. The court noted that the Lanham Act does not include a requirement that a mark's vulgar meaning must be the only relevant meaning or even the most relevant meaning. Therefore, the court refused to require the USPTO to prove anything more than the existence of a vulgar meaning to a substantial composite of the general public in order to justify refusing to register a mark as scandalous under Section 1052(a).

The Federal Circuit also rejected Fox's argument that double entendres are excluded from Section 1052's statutory prohibition. The court distinguished its precedent and noted that treating double entendres differently than other marks cannot be justified in light of statutory objectives.

Finally, the court rejected Fox's argument that the court should permit the mark to be published for opposition to bring to light any public objections to the mark. The court held that where the USPTO has properly determined that a mark is scandalous within the meaning of Section 1052(a), there is no obligation to publish the mark for opposition.

Trademark applicants should take note that under this decision, where a mark creates a double entendre and has one clearly vulgar meaning, the mark will likely be refused registration under Section 1052(a) as comprising scandalous matter.