IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEALS BOARD

In re Application of:

Trademark Law Office: 108

Laura Goldhamer

Attorney: Laura E. Fionda

Serial No.: 86/149263

Filed: December 20, 2013
Mark: HARPOONTANG

APPEAL BRIEF PURSUANT TO 37 C.F.R. 2.126

APPLICANTS BRIEF ON APPEAL
July 20, 2015

JONES & KELLER, P.C.

Attorneys for Applicant: Laura Goldhamer
1999 Broadway, Suite 3150
Denver, CO 80202
(303) 573-1600

TABLE OF CONTENTS
APPLICANTS MARK AND SERVICES.1
GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL1
ARGUMENT 2
A. EXAMINING ATTORNEY INCORRECTLY ANALYZED ONLY THE TERM POONTANG.......2
B. THE PREPONDERANCE

OF

EXAMINING ATTORNEYS CITED EVIDENCE SUPPORTS

APPLICANTS ARGUMENT THAT THE MARK IS NOT SCANDALOUS..................................4

C. THE MARK MUST BE ANALYZED IN THE CONTEXT OF ITS RELEVANT MARKETPLACE...7
D. EXAMINING ATTORNEY HAS NOT MET THE PTOS BURDEN OF PROOF.......................11
CONCLUSION...................................................................................................................................13
CERTIFICATE OF TRANSMISSION......................................................................................................13
ATTACHMENT 1 TRANSCRIPT OF INTERVIEW
ATTACHMENT 2 ALTERNATIVE URBAN DICTIONARY DEFINITION

TABLE OF CASES
Cases
Estate of P. D. Beckwith, Inc. v. Commissioner of Patents,
252 U.S. 538, 54546, 64 L. Ed. 705, 40 S. Ct. 414 (1920).............................................2-3
In re Friggin Barnyard,
1999 TTAB LEXIS 108 (T.T.A.B. 1999)..........................................................................12
In re Gray,
Serial No. 78622783 (September 17, 2007).................................................................11, 12
In re Hershey,
6 USPQ2d 1470 (TTAB 1988)..........................................................................................12
In re Hines,
32 U.S.P.Q.2d 1376 (T.T.A.B. 1994)................................................................................13
In re Madsen,
180 U.S.P.Q. 335.................................................................................................................8
In re Mavety Media Group Ltd.,
33 F.3d 1367, 31 U.S.P.Q.2d 1923 (Fed. Cir. 1994)..................................................passim
In re McGinley,
660 F.2d. 481, 211 U.S.P.Q. 668 (C.C.P.A. 1981)..........................................................7, 8
In re National Data Corp.,
753 F.2d 1056 (Fed. Cir. 1985)............................................................................................3
In re Old Glory Condom Company,
26 USPQ2d 1216, 1222 (TTAB 1993).........................................................................5-6, 8
In re Over Our Heads, Inc.,
16 U.S.P.Q.2d 1653 (T.T.A.B. 1990)................................................................................13
In re Standard Electrik Lorenz A.G.,
371 F.2d 870, 152 UPSQ 563, 566 (CCPA 1967).............................................................13
In re Watkins,
2005 TTAB LEXIS 66 (T.T.A.B. 2005)............................................................................12
Obergafell v. Hodges,
576 U.S. ____(2015)...........................................................................................................5

Ritchie v. Simpson,
170 F.3d 1092, 1094 (Fed. Cir. 1999)............................................................................8, 10
San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1,3 (CCPA 1977)........................................................................3
Statutes and Rules
TMEP 1213.05(a)(i)......................................................................................................................2
TMEP 1213.05(a) ........................................................................................................................3
TMEP 1203.01..........................................................................................................................7, 8

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEALS BOARD

In re Application of:

Trademark Law Office: 108

Laura Goldhamer

Attorney: Laura E. Fionda

Serial No.: 86/149263

Filed: December 20, 2013
Mark: HARPOONTANG

APPEAL BRIEF PURSUANT TO 37 C.F.R. 2.126

APPLICANTS BRIEF ON APPEAL
Applicant hereby appeals to the Trademark Trial And Appeals Board from the
final refusal on October 30, 2014 and the denial of Applicants Request for
Reconsideration on May 20, 2015.
A timely notice of appeal was filed on April 29, 2015.
APPLICANTS MARK AND SERVICES
Applicant seeks registration of its mark HARPOONTANG for entertainment in
the nature of live performances by a music ensemble.
GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL
The only issue presented for review by the Trademark Trial And Appeals Board is
whether registration is properly refused under Section 2(a) because the mark is
scandalous.

ARGUMENT
The examining attorney has refused registration of Applicants service mark
HARPOONTANG under Trademark Act Section 2(a) (15 U.S.C. 1052(a)), on the
ground the mark is scandalous because it includes the vulgar term poontang. [Final
Office Action, p. 2]
In refusing registration, the examining attorney has made three errors:
1.

The examining attorney analyzed only one portion of Applicants mark

(poontang), and did not apply that analysis to the mark as a whole (HARPOONTANG);
2.

In analyzing the term poontang the examining attorney misinterpreted or

misapplied most of the relevant evidence; and

3.

The examining attorney failed to analyze Applicants mark in light of

contemporary attitudes and mores.

A.

Examining Attorney Incorrectly Analyzed Only the Term poontang

HARPOONTANG is a composite word combining two distinct words, harpoon

and tang, and telescoping two words, harpoon and poontang. TMEP 1213.05(a)(i).
As such, it is considered unitary. Id. It is incorrect to separate out any single word
comprising a telescoped word, whether it is harp, harpoon, poon, tang, or
poontang. The mark HARPOONTANG is to be considered for registration as a single
unitary word, and not dissected in search of scandalous meanings. Under the antidissection rule, a composite mark is tested for its validity and distinctiveness by looking
at it as a whole, rather than dissecting it into its component parts. The commercial
impression of a trademark is derived from it as a whole, not from its elements separated
and considered in detail. For this reason it should be considered in its entirety. Estate of

P. D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 54546, 64 L. Ed. 705,
40 S. Ct. 414 (1920). The anti-dissection rule is particularly relevant when examining a
telescoped mark. A telescoped mark comprised of two or more words that share letters
must be presented as a unitary term with the letters shared. The telescoped element may
not be represented as two words, because the shared letter is an aspect of the commercial
impression. See TMEP 1213.05(a) et seq. regarding disclaimers in telescoped and
compound word marks. Because likelihood of confusion cannot be predicated on
dissection of a mark, that is, only part of a mark (In re National Data Corp., 753 F.2d
1056 (Fed. Cir. 1985)), it follows then that the PTO cannot determine that a unitary mark
is scandalous based on only part of the mark. To determine whether the overall
commercial impression of a mark is scandalous, the mark must be examined as a whole.
San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1,3 (CCPA 1977) (Each syllable of each trademark generates an impact, but the
only impact to be considered is that of the whole.).
Therefore, even if the term poontang were deemed to be immoral or scandalous,
the PTO must still then determine that the Applicants mark HARPOONTANG is
immoral or scandalous. That is, the mark as a whole must be immoral or scandalous
because of the dissected term, or the mark cannot be denied registration; to hold
otherwise would be to deny registration to a multitude of marks. For example,
ASSASSIN could be denied registration because it includes the term ass; COCKER
SPANIEL because of cock, PUSSYWILLOW because of pussy, and so on.

B.

The Preponderance of Examining Attorneys Cited Evidence Supports

Applicants Argument that the Mark is Not Scandalous

Because examining attorney focuses almost solely on the term poontang, rather
than Applicants mark HARPOONTANG, Applicant will first address the term
poontang as a stand-alone mark. Examining attorney has provided several dictionary
definitions that designate the term poontang as vulgar. [Final Office Action p. 3;
dictionary evidence attached to March 31, 2014 Office Action]. Conversely, Applicant
has provided dictionary evidence that does not identify the term poontang as vulgar,
but merely as primarily a synonym for vagina / female genitalia, and sexual intercourse.
[Request for Reconsideration, April 29, 2015, Ex. A]
Examining attorney also provided additional evidence supporting Applicants
argument, from The Cassell Dictionary of Slang, The Dictionary of American Slang,
Greens Dictionary of Slang, credoreference.com, The Slangman Guide to Dirty English,
and Forbidden American English, which examining attorney described as each
supporting the determination that the mark is scandalous. [Denial of Request for
Reconsideration May 20, 2015, p. 4] However, the examining attorney mischaracterizes
that evidence. The Cassel Dictionary of Slang identifies poontang as a slang term, not a
vulgar or scandalous term. [Denial of Request for Reconsideration, p 12] The Dictionary
of American Slang (1995) identifies poontang as taboo or vulgar, but with only one
definition for the term, which definition is contrary to all other evidence supplied by
examining attorney and Applicant - by about 1910 A black woman regarded as a sex
object or partner. [Denial of Request for Reconsideration, p. 12]. A definition and
characterization of a slang term from 1910 bears no more relevance on the case at hand

than the 1910 public perception of homosexuality and same-sex marriage bore to the
Supreme Courts decision in Obergafell v. Hodges, 576 U.S. ____ (2015); perceptions
change with time. Greens Dictionary of Slang identifies poontang with extensive
definitions and examples of use from 1927 through 2004, and does not designate the term
as vulgar or scandalous, but merely as slang. Credoreference.com supports Applicants
evidence that the term poontang is merely slang, but not vulgar or scandalous (1.
Sexual intercourse with a woman, 2. A woman regarded as a sexual object). [Denial of
Request for Reconsideration, p. 21] The Slangman Guide to Dirty English also defines
poontang as vagina; sex with a woman. [Denial of Request for Reconsideration, p.
24]
The examining attorney states that the PTO is entitled to rely solely on these
definitions of the word poontang. However, that is not correct when dictionary
definitions and the examining attorneys own evidence are not uniform in identifying the
term as vulgar.
Finally, examining attorneys inclusion of Forbidden American English (1995) as
evidence brings us to the heart of the analysis of the term poontang. [Denial of Request
for Reconsideration, p. 28] In that evidence, the term poon tang is included in a list of
terms the author describes as follows: Women may take exception to the terms in LIST
E. That does not mean they would not use them. But that they are potentially offensive,
often because of the topic, but also because of the slant or profane intent of the
expression. To treat the subject of women or womens bodies in a trivial or mocking
fashion is regarded as highly offensive by some women.

The description from Forbidden American English aptly paraphrases the decision
of the Board in In re Old Glory Condom Company, 26 USPQ2d 1216, 1222 (TTAB
1993) - the determination of whether a mark is to be denied registration under Section
2(a) cannot properly be made in the abstract, and requires an inquiry into the context of
the marks use. (Whether Applicants mark would be likely to offend must be judged
not in isolation but in the entire context of the marks use.) Examining attorneys
inclusion of the definition of harpoontang from the contributor-written Urban
Dictionary [Final Office Action, p.4] provides example of the use of harpoontang and
poontang in the vulgar manner propounded by the examining attorney. It also includes
a non-vulgar alternative definition, which the examining attorney inexplicably deleted
from her attached evidence and which is included here as Attachment 2: Item used by
Choder Boy from the movie Orgazmo. Once a Dildo is now a Harpoon used to tie up
villains. Evildoers Beware. Here, my Harpoontang should do the trick! Choder Boy.
[Final Office Action, Ex. 1]
Accordingly, Applicants use of the term poontang within Applicants mark
HARPOONTANG must be judged in the entire context of the marks use not merely as
described in archaic slang books and dictionaries that no longer represent commonly held
views and does not reflect a substantial composite of the relevant market.
Applicant Laura Goldhamer is a woman. Applicants musical group,
Harpoontang, comprises four women (Genny, Sarah, Esme and Laura). [Denial of
Request for Reconsideration, p. 5] As the Board will see from the interview evidence of
certain band members provided by the examining attorney and discussed further in Part C
below, these women are satiric, ironic, sharp, droll, funny, and sassy. While the term

poontang may be used in a vulgar manner, the term itself is not inherently vulgar.
Indeed, Applicant provided two samples of other non-vulgar usage of the term
poontang [Request for Reconsideration, Attachment B].
C.

The Mark Must be Analyzed in the Context of its Relevant Marketplace

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. A mark
is scandalous if it is vulgar to the relevant audience. TMEP 1203.01; See 4A Callman
on Unfair Comp., Tr. & Mono. 26:15 (4th Ed.). 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. TMEP
1203.01; In re Mavety Media Group Ltd., 33 F.3d 1367, 31 U.S.P.Q.2d 1923 (Fed. Cir.
1994). 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). The examining attorney provided evidence comprising comments from
the relevant audience (consumer comments on Applicants mark/band name) to
demonstrate the consuming publics perception of the mark, reprised here:
(With a name like that, sure theres some inbuilt sense of irony.); (If
this isnt already a porno title, its about to be soon.); (What an excellent
band name. Im sure with a name like that, they wont 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.) [Final Office Action, Attachment 2-6]
Examining attorneys evidence clearly demonstrates that the consuming public
views the mark as funny, ironic, imaginative (Ill let your mind go), an excellent band
name, and an awesome name. There is no indication in the examining attorneys
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).
Moreover, the determination that a mark is scandalous must be made according to
contemporary attitudes and social mores. Ritchie v. Simpson, 170 F.3d at 1094 (Fed. Cir.
1999). (Whether a mark comprises immoral and scandalous matter is to be ascertained
in the context of contemporary attitudes.); In re Old Glory Condom, 26 U.S.P.Q.2d
1216 ([I]n deciding whether a mark is scandalous under Section 2(a), we must consider
that mark in the context of contemporary attitudes.); In re Madsen, 180 U.S.P.Q. 335
(finding the mark WEEKEND SEX not scandalous as applied to magazines and noting
that consideration must be given to the moral values and conduct fashionable at the
moment, rather than that of past decades); TMEP 1203.01 (The meaning imparted by
a mark must be determined in the context of the current attitudes of the day.).
In Applicants first Response to Office Action, Applicant provided extensive
evidence of current lyrics of the songs most purchased and listened to by the relevant
public music listeners and buyers. Applicants evidence demonstrates that the

contemporary attitudes and social mores of the relevant audience do not consider words
such as poontang to be vulgar, scandalous, or immoral. Examining attorney dismissed
this contemporary evidence as irrelevant [Denial of Request for Reconsideration, p. 6]
and based her determination on outdated and inconsistent dictionary and slang book
resources. Yet at the same time examining attorney provided lyrics from Applicants
music as evidence intended to demonstrate that Applicants use of the term
HARPOONTANG is limited to its vulgar meaning. [Final Office Action p. 8-10] The
lyric evidence provided by the examining attorney does not support examining attorneys
contention that Applicant uses the mark only in a vulgar manner, and, in fact, those lyrics
range from benign, to funny, to double entendres, and include some vulgarities. As the
examining attorney notes, the issue is not whether Applicants or the most popular
current lyrics are vulgar. The issue is whether the mark HARPOONTANG is vulgar to
the relevant segment of the public, and the evidence of contemporary music lyrics
provided by both Applicant and the examining attorney clearly demonstrate that the
dictionary and slang-book evidence the examining attorney relies on is outdated and not
reflective of the moral values and social mores of contemporary music fans, and that
HARPOONTANG is not vulgar under contemporary mores.
As additional evidence that Applicants use of the mark HARPOONTANG is
intended to be, or is perceived by the relevant public, as vulgar, examining attorney cites
a few lines from an extensive interview with the members of the band Paper Bird [Final
Office Action, Attachment 8]. A reading of the entire interview provides quite a different
perspective from that asserted by examining attorney. The full interview clarifies that (1)
the band members were performing at an event to raise awareness and money for a non-

profit promoting the rights and well-being of immigrant day laborers, (2) are erudite,
witty, socially responsible, and not vulgar or scandalous, (3) the interviewers initial
impression of Applicants mark was Harpoon Tang. Like the drink? (an argument
asserted by Applicant in its Response to Office Action dated September 29, 2014 and
dismissed by the examining attorney), and (4) none of the comments alleged by the
examining attorney to show the bands vulgar intent were uttered by a band member.
Because examining attorneys exhibit of the referenced interview is difficult to read, a
transcript is attached as Attachment 1.
The PTO may not decide whether a registration is scandalous simply by asserting
its own views and values. Instead, the Board has a duty to obtain the views of the affected
public. See, e.g., Ritchie, 170 F.3d 1092, 1094. Even if dictionaries and news articles
label a mark as vulgar, that does not mean that a substantial composite of the general
public has heard of or knows what a particular mark means. See In re Mavety Media,
supra. Just because the term poontang can be used in a vulgar manner, does not mean
that HARPOONTANG is vulgar, or its use by Applicant is clearly limited to that vulgar
meaning. [Final Office Action, p.4] Rather, Applicant uses the mark as the name of a
band, providing musical entertainment. Applicant does not provide sex related services,
publications, toys, or any other good or service related to sexual intercourse, or to a
woman regarded solely in terms of sexual gratification, as required for the term
poontang to be vulgar. In the context of Applicants use, the term poontang within
the whole mark HARPOONTANG provides at most a satirical double entendre.

10

D.

Examining Attorney Has Not Met The PTOs Burden of Proof

Applicant respectfully directs the Boards 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 examining attorney in that case cited
extensive evidence, including dictionary definitions, of the vulgar meaning of the term
cum. In Gray the Board observed that while the dictionary evidence provided by the
examining attorney said the term was vulgar, other dictionaries did not define the term as
vulgar.
Likewise, the dictionary evidence cited by examining attorney indicates that the
term poontang is vulgar. However, Applicants dictionary evidence and examining
attorneys slang evidence, public comment evidence, and Internet evidence does not
identify the term poontang as vulgar, but merely as slang or a synonym for vagina /
female genitalia, and sexual intercourse, which are no more vulgar than the comparable
definitions of the term cum.
In Gray the Board 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

11

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 TTABs 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, and when used by a womans band in the telescoped
word HARPOONTANG, is funny, ironic, and no more than a double entendre that brings
nothing more than a smile to the face(s) of those music fans who encounter it. See, In
re Hershey, 6 USPQ2d 1470 (TTAB 1988).
When dictionary definitions do not plainly show the mark to be vulgar, the
examining attorney 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 immoral or scandalous nature of Applicants 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 examining attorney is
supposed to pass the mark to publication to give others the opportunity to object. 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

12

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).
The Patent and Trademark Office has the burden of proving that a mark is
immoral or scandalous. In re Mavety Media Group Ltd., 33 F.3d 1367, 31 U.S.P.Q.2d
1923 (Fed. Cir. 1994). See also In re Standard Electrik Lorenz A.G., 371 F.2d 870, 152
UPSQ 563, 566 (CCPA 1967). Any reasonable ambiguity in favor of a non-vulgar
interpretation of the mark in question should be resolved in favor of the Applicant. In re
Mavety Media Group, 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). See In re Hines, 32 U.S.P.Q.2d 1376 (T.T.A.B. 1994)
(in case of doubt as to the offensiveness of a religious symbol, the Board will pass the
application to publication). Doubts about bad taste should be resolved in favor of the
Applicant. In re In Over Our Heads, Inc., 16 U.S.P.Q.2d 1653 (T.T.A.B. 1990). The
examining attorney has not met the required burden of demonstrating that the designation
HARPOONTANG is vulgar in the context of contemporary society and the relevant
marketplace.
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

13

non-vulgar interpretation, and doubt about bad taste should be resolved in favor of the
Applicant. The Board should resolve the doubt by publishing the mark for opposition.
Applicant respectfully submits that the present mark is not immoral or scandalous, and
request the application pass to publication.
For the above reasons, Applicant respectfully requests that the Trademark Trial
And Appeals Board reverse the outstanding refusal by the examining attorney and
mandate allowance of the present application.
Respectfully submitted,
JONES & KELLER, P.C.

Brad H. Hamilton
1999 Broadway, Suite 3150
Denver, CO 80202
(T:) 303-573-1600
(F:) 303-573-8133
bhamilton@joneskeller.com
Attorney for Applicant
CERTIFICATE OF TRANSMISSION
I hereby certify that the attached Brief for Appellant is being transmitted
electronically to the Trademark Trial and Appeal Board via the USPTOs ESTTA system
on the 20th day of July, 2015.

Brad H. Hamilton

14

ATTACHMENT 1
TRANSCRIPT OF INTERVIEW
In re Application of:
Laura Goldhamer
Serial No.: 86/149263
Filed: December 20, 2013
Mark: HARPOONTANG

15

ATTACHMENT 2
ALTERNATIVE URBAN DICTIONARY DEFINITION
In re Application of:
Laura Goldhamer
Serial No.: 86/149263
Filed: December 20, 2013
Mark: HARPOONTANG

16