Arnita Y. Boswell and James W. Clementv.Mavety Media Group Ltd.[Request for Reconsideration by Boswell only]

Trademark Trial and Appeal Board

Nov 22, 1999

No. 91099058re (T.T.A.B. Nov. 22, 1999)

Paper No. 46
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 22, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Arnita Y. Boswell and James W. Clement
v.
Mavety Media Group Ltd.
_____
Opposition No. 99,058
to application Serial No. 74/066,893
filed on June 7, 1990
_____
Request for Reconsideration
_____
James W. Clement, pro se and as attorney for Arnita Y.
Boswell
Lawrence E. Abelman of Abelman Frayne Rezac & Schwab for
Mavety Media Group Ltd.
______
Before Cissel, Seeherman and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Arnita Y. Boswell has requested reconsideration of the
Board’s decision, mailed July 28, 1999, dismissing her
opposition to the registration of the mark BLACK TAIL for
adult entertainment magazines. The request for
Opposition No. 99,058
2
reconsideration specifically states that the request is
filed only by opposer Boswell, and not by opposer James W.
Clement; further, the request states that opposer Boswell
is limiting the ground of disparagement to the impact on a
substantial composite of the African American female
community. In other words, opposer Boswell’s basis for the
opposition and her request for reconsideration of our
decision has been limited to the assertion that applicant’s
mark “consists of or comprises … matter which may
disparage …” African American females.
In her request for reconsideration opposer has
abandoned the three-part test suggested in her brief, which
was written prior to the Board’s decision in Harjo v. Pro
Football Inc., 50 USPQ2d 1705 (TTAB 1999). Instead, she
has discussed her assertion of disparagement in terms of
the test set forth in Harjo. That test, as noted in our
opinion in the present opposition, involves a two-step
process, which requires that we first ask what is the
meaning of the matter in question, and, second, whether
that meaning may be disparaging, i.e., whether the mark may
dishonor by comparison with what is inferior, or slight,
deprecate, degrade, or affect or injure by unjust
comparison. Slip op., p. 14.
Opposition No. 99,058
3
As opposer admits, there are non-vulgar as well as
vulgar meanings of “tail” which could be considered
relevant to an adult entertainment magazine. However,
opposer asserts that because of the nature of applicant’s
goods, the Board committed error in stating that “in view
of the existence of an alternate, non-vulgar definition of
‘tail,’ we cannot conclude that it is the vulgar meaning
that the relevant public would attach to the mark.”
We reiterate the statement made in our opinion:
…our principal reviewing Court stated
quite clearly in Mavety [In re Mavety
Media Group Ltd., 33 F.3d 1367, 31
USPQ2d 1923, 1928 (Fed. Cir. 1994),
which reversed the Board’s finding that
the mark involved in this application
was scandalous] that, in view of the
existence of an alternate, non-vulgar
definition of “tail,” the Board,
without more, erred in concluding that
in the context of an adult entertain-
ment magazine, a substantial composite
of the general public would necessarily
attach to the mark BLACK TAIL the
vulgar meaning of ‘tail’ as a female
sexual partner, rather than the
admittedly non-vulgar meaning of ‘tail’
as rear end.
Slip op. p. 22.
Although opposer, in her request for reconsideration,
characterizes the finding of the Court of Appeals for the
Federal Circuit in Mavety as “erroneous,” p. 4, fn. 2, we
are not only bound by the Court’s decision, but see no
Opposition No. 99,058
4
reason in this case not to apply the Court’s reasoning that
when there are both vulgar and non-vulgar dictionary
definitions which are relevant to the specific goods, in
order to establish that the vulgar meaning would be the one
attributed to the term, something must be of record to show
that a substantial composite of the relevant public would
attribute that meaning to the mark. Opposer had an
opportunity at trial to demonstrate the meaning to be
ascribed to the mark by the relevant public and, despite
the clear language of the Court in Mavety, chose to rely
only on dictionary definitions and copies of various adult
entertainment magazines, including applicant’s. As we
stated in our opinion, opposer has failed to prove that a
substantial composite of the relevant public would attach
the vulgar meaning to applicant’s mark.
Nor do we see any error in our finding that opposer
failed to prove that African American women believe
themselves disparaged by applicant’s mark for adult
entertainment magazines. Opposer essentially employs
circular reasoning, asserting that because several
dictionary definitions characterize certain meanings of
“tail” as vulgar, that automatically proves that the term
would be disparaging. However, as we stated above, and in
our opinion, opposer has failed to prove that it is the
Opposition No. 99,058
5
vulgar meaning of “tail” that the relevant public would
attach to applicant’s mark. Opposer raises concerns about
what she might have been subjected to during cross-
examination if she were to have provided oral testimony “as
to why she feels disparaged and deprecated by the use of
the trademark BLACK TAIL…” p. 8, and that “any reasonable
person of ordinary sensibilities, including the members of
the Board, should understand Opposer’s feelings completely
without the elaboration that would be provided by her oral
testimony.” p. 9.
It is not our role here to say whether a particular
witness is required to provide testimony, or what evidence
might be persuasive. We note only that in an opposition
proceeding, it is the opposer’s burden to prove that a mark
should not be registered. That burden does not change
depending on whether it might upset an opposer’s
sensibilities to provide testimony.
Opposer’s request for reconsideration is denied.
R. F. Cissel
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board