## Facts

- An individual applicant filed an intent-to-use application to register the stylized mark “SEX ROD” for a broad range of clothing items in International Class 25.
- The applied-for stylization closely mimicked the lettering style of a famous “RED SOX” logo used for baseball-related services and licensed merchandise, including apparel.
- The trademark owner opposed registration on multiple grounds, including: lack of bona fide intent to use, scandalous/immoral matter, disparagement, likelihood of confusion, and false suggestion of a connection.
- Evidence included dictionary definitions identifying “rod” as a vulgar term for “penis,” and the applicant’s admission that the phrase was intended to carry a sexual meaning.
- On intent to use, the opposer showed the applicant produced no contemporaneous documents reflecting plans, capacity, or concrete preparations to use the mark on the listed goods.
- The applicant asserted he planned to sell products through online custom-apparel services, but offered little objective support beyond general statements.

## Issues

1. Whether the applicant lacked a bona fide intent to use the mark in commerce as of the filing date under Lanham Act § 1(b).
2. Whether the mark consisted of immoral or scandalous matter under Lanham Act § 2(a).
3. Whether the mark disparaged the opposer or brought it into contempt or disrepute under Lanham Act § 2(a).
4. Whether the mark was likely to cause confusion with the opposer’s marks under Lanham Act § 2(d).
5. Whether the mark falsely suggested a connection with the opposer under Lanham Act § 2(a).

## Decision

- The Board sustained the opposition on lack of bona fide intent to use and refused registration on that independent basis.
- The Board sustained the opposition on the ground that the mark was immoral or scandalous under § 2(a), relying on dictionary evidence and the applicant’s admitted sexual connotation.
- The Board sustained the opposition on the ground that the mark disparaged the opposer under § 2(a) because the offensive message would be associated with the opposer.
- The Board dismissed the likelihood-of-confusion claim under § 2(d), finding the marks’ overall commercial impressions sufficiently different despite fame of the opposer’s mark and related goods.
- The Board dismissed the false-suggestion-of-connection claim under § 2(a), concluding the mark did not uniquely and unmistakably point to the opposer in the manner required for that theory.

## Legal Principles

- A § 1(b) applicant must have a real, present intent to use the mark in commerce at filing; objective evidence of plans or preparatory steps is probative, and the absence of supporting documentation may support a finding of no bona fide intent.
- For scandalousness (as applied at the time), a mark could be refused if a substantial composite of the general public would view it as grossly offensive under contemporary standards; dictionary vulgarity labels and contextual meaning are relevant evidence.
- For disparagement (as applied at the time), the inquiry focused on whether a substantial composite of the referenced group or institution would view the mark as disparaging, including when an offensive message is tied to that entity through association.
- Likelihood of confusion under § 2(d) turns on the totality of relevant factors; even with famous marks and overlapping goods, substantial differences in meaning and overall commercial impression can outweigh similarities.
- A false suggestion of connection under § 2(a) requires, among other elements, that the mark point uniquely and unmistakably to the person or institution; mere evocation or stylistic reference may be insufficient.

## Conclusion

The Board refused registration of “SEX ROD” for apparel because the applicant failed to show a bona fide intent to use the mark and because the mark was found scandalous and disparaging, while rejecting separate claims that consumers would likely be confused or that the mark falsely implied an institutional connection.


Boston Red Sox Baseball Club Ltd. P'ship v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008)