Marina Lombardi

Trademark Trial and Appeal Board

Jun 14, 2013

No. 85569079 (T.T.A.B. Jun. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Lombardi
_____

Serial No. 85569079
_____

Matthew H. Swyers of The Trademark Company, PLLC for Marina Lombardi, dba
Our Voice.

Jennifer L. Williston, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
_____

Before Zervas, Ritchie, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Marina Lombardi, an individual doing business as Our Voice, has applied to
register on the Principal Register the mark PROTECT THE COOCH! in standard
character form for the following goods:
Collared shirts; Hooded sweatshirts; Pants; Scarves;
Shirts; Sleeves worn separate and apart from blouses,
shirts and other tops; Sweaters; Sweatpants; Sweatshirts;
T-shirts; Tops; Wristbands.1

1 Application Serial No. 85569079 filed on March 14, 2012 under Trademark Act § 1(a), 15
U.S.C. § 1051(a), with claims of first use and first use in commerce of July 19, 2011.
Serial No. 85569079

2

The trademark examining attorney refused registration under Section 2(a) of
the Trademark Act, 15 U.S.C. § 1052(a), on the ground that applicant’s mark
consists of or comprises immoral or scandalous matter. When the refusal was made
final, applicant appealed. Applicant and the examining attorney have filed briefs.
Trademark Act § 2(a) allows the Patent and Trademark Office to refuse
registration of a mark that “Consists of or comprises immoral, deceptive, or
scandalous matter.” 15 U.S.C. §1052(a). The determination of whether a mark is
scandalous or immoral is a conclusion of law based on the underlying facts; and the
Patent and Trademark Office has the burden of proving that a trademark falls
within the prohibition of Section 2(a). In re Mavety Media Group Ltd., 33 F.3d
1367, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994). In order to prove that a mark
consists of or includes scandalous or immoral matter, the examining attorney must
demonstrate that the matter at issue is “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 re Fox, 702 F.3d 633, 105
USPQ2d 1247, 1248 (Fed. Cir. 2012), citing Mavety, supra. In meeting this burden,
the examining attorney must consider the mark “in the context of the marketplace
as applied to only the goods or services described in the application for registration.”
In re McGinley, 660 F.2d 481, 211 USPQ 668, 673 (CCPA 1981). In addition,
whether the mark consists of or comprises scandalous matter must be determined
from the standpoint of a substantial composite of the general public (although not
necessarily a majority), id., in the context of contemporary attitudes, Mavety, 31
Serial No. 85569079

3

USPQ2d at 1925-1926, citing In re Old Glory Condom Corp., 26 USPQ2d 1216, 1219
(TTAB 1993), and keeping in mind changes in social mores and sensitivities,
Mavety, 31 USPQ2d at 1926. A showing that a term is vulgar is sufficient to
establish that it falls within the meaning of Section 2(a). In re Boulevard
Entertainment Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1477 (Fed. Cir. 2003), citing
Mavety, 31 USPQ2d at 1927 and McGinley, 211 USPQ at 673. In McGinley, the
Federal Circuit quoted with approval the Board’s decision in In re Runsdorf, 171
USPQ 443 (TTAB 1971), in which the Board defined “vulgar” as meaning “lacking
in taste, indelicate, morally crude…” McGinley, 211 USPQ at 673; Runsdorf, 171
USPQ at 443-444.
The examining attorney argues that “cooch” is a vulgar term that refers to a
woman’s genitalia and that it is viewed by the public as derogatory, offensive, or
objectionable.2 Applicant argues that her mark and the term COOCH “are not so
shocking to the sense of propriety nor are they vulgar to warrant the instant 2(a)
refusal.”3 Applicant contends further that “Amongst teen population, the term,
“COOCH” is benign and also relatable, and is no way intended to be disparaging
towards women.”4
The examining attorney supports her position with a number of entries for
the word “cooch” from online dictionaries, including the following:
From DICTIONARY OF AMERICAN SLANG AND COLLOQUIAL EXPRESSIONS:

2 Examining attorney’s brief at 6-7
3 Applicant’s brief at 6.
4 Id. at 10.
Serial No. 85569079

4

n. the female genitals; the vulva and vagina. (Usually
objectionable.) [example omitted]
n. women considered as a receptacle for the penis. (Rude
and derogatory.) [example omitted]5
From Wiktionary.org:
1. (obsolete) A Type of belly dance.
2. (slang, vulgar) Vagina.6
From The Online Slang Dictionary:
the female genitalia. Variant of coochie.7
From Sex-Lex.com:
Americanism for:
1. The vagina, vulva or female crotch….
2. A woman considered as a sex-object.
3. A woman regarded as promiscuous . See playgirl for
synonyms.
4 Or: cooch dance(r) / hoochi-coochie dance(r) / hootchy-
cootchy dance(r) , a dancer performing an erotic, belly
dance (not an actual striptease) or the dance itself.8
The dictionary evidence indicates that “cooch” is a recognized slang word
denoting the female genitals. The evidence also shows that the term has been
extended to encompass other derogatory meanings, including “women considered as
a receptacle for the penis”; “a woman considered as a sex-object”; and “a woman

5 From , submitted with the Office action of August 12, 2012.
6 Office action of June 28, 2012.
7 Id.
8 Submitted with Office action of August 12, 2012. The same definition is set forth in
, submitted with Office action of June 28, 2012.
Serial No. 85569079

5

regarded as promiscuous.” Finally, the dictionary evidence indicates that “cooch”
may mean a type of dance or dancer; however, there is some indication that this
meaning may be obsolete. It is not necessary, for purposes of finding that a term is
scandalous under Section 2(a), that every meaning and connotation of a term be
vulgar, offensive, or shocking to the sense of propriety; rather, as noted above, it is
sufficient that in relation to the applicant’s identified goods a substantial composite
of the relevant public will understand it as such. McGinley, 211 USPQ at 673.
The examining attorney has also submitted evidence from Twitter,
apparently consisting of the results of a search for tweets that include the word
“cooch.” This evidence is of particular interest as it shows actual, casual (albeit
written) usage of the term. It is apparent that some people (including some women)
are more comfortable than others with use of the expression. However, some
examples have an angry or aggressive tone, suggesting that the word is used in
order to intensify a derogatory sentiment:
“Why do females use the entire roll of toilet paper to wipe
their cooch” dirty skanks
I can’t believe a burnt cooch haired bitch tried to roast me
on twitter
My bestfriends mom wants me like she wantz da Haitian
cooch I swear
Anthony Davis will get so much cooch! Unibrows,
wolverine teeth and all. Groupies don’t care!
Its too damn hot for leggings… cooch probably sweatin n
smellin like mildew
Serial No. 85569079

6

Idk why people sice that saying “sex on the beach” like
that shit would actually be good… got sand all up inda
cooch shit prolly hurtin9
We note also the following excerpt from NewsCorpWatch.com, which indicates use of
the term to intensify a derogatory sentiment:
Please don’t call Sandra Fluke a slut. Respect her for
what she is a shiftless rent-a-cooch from East
Whoreville.10
To summarize, the evidence adduced by the examining attorney shows that,
in contemporary American slang, the term “cooch” is understood by a segment of the
population to be refer to the female genitals; that it may carry a connotation of
female promiscuity or the characterization of women as sexual receptacles; that it is
sometimes used abusively to intensify derogatory sentiments; and that it has been
characterized in dictionaries as objectionable, rude, derogatory, and vulgar. While
it is possible that, to some people, the term may be expressive or amusing, it is
equally clear that to others it is distasteful, crude, insulting, and shocking to their
sense of propriety. If the term were encountered in the U.S. marketplace as a
component of a trademark for apparel, it can be expected that some substantial
segment of the public would react with shock and disgust. Accordingly, we find that
the examining attorney has made a prima facie showing that the applicant’s mark
contains scandalous matter within the meaning of Section 2(a).

9 Submitted with Office action of June 28, 2012. (We note also that applicant submitted a
series of “Tweets that contain ‘cooch,’” but the form in which it was submitted was illegible.
See Response of July 9, 2012, Exhibit D.)
10 Office action of August 12, 2012.
Serial No. 85569079

7

Applicant responds by noting that she “is marketing and selling the goods for
a charitable cause, specifically for promoting women’s health, and awareness for
safe sex to teenagers.”11 However, this specific purpose of the goods is not set forth
in the identification of goods in the application and, accordingly, we cannot consider
it. In an analysis under Section 2(a), we must consider the mark “as applied to only
the goods or services described in the application for registration.” McGinley, 211
USPQ at 673 (emphasis supplied). The scope of the registration that applicant
seeks is defined by her application; accordingly, we must look to the application in
determining applicant’s right to register. Cf. Octocom Syst. Inc. v. Houston
Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant has also made of record copies of a number of U.S. registrations of
third-parties, with a view to demonstrating that the Trademark Office has
registered marks similar to that of applicant and many other marks “which
incorporate other slang words for genitalia….”;12 and that the Trademark Office has
registered other marks “that contain suggestive or vulgar terms, and are also used
for charitable purposes.”13 Applicant has also listed additional registrations, which
are not of record, in her brief. The examining attorney has objected to our
consideration of any registrations that have not been properly and timely made of
record.14 Mere listings of registrations are not sufficient to make the registrations

11 Applicant’s brief at 10.
12 Applicant’s brief at 6-10.
13 Id. at 10-11.
14 Examining attorney’s brief at 2.
Serial No. 85569079

8

of record. In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010). Accordingly, we have
given no consideration to the information in Exhibit B relating to registrations that
are not of record. Similarly, we have given no consideration to the entirety of
Exhibit C, as none of the registrations listed there are of record.
Applicant has submitted copies of U.S. Reg. No. 3689170 for the mark
COOCHY (stylized) for shaving cremes; and Reg. No. 2877153 for the mark
COOCHY for shaving cremes and other skin care products.15 These registrations
are of little relevance to our inquiry. First, there has been no showing that “coochy”
has the same meaning as “cooch.” From the face of the registrations, we can divine
nothing regarding the public perception of the mark COOCHY, much less the
public’s perception of the term “cooch.” Further, the record contains no information
relating to the prosecution of the applications underlying these two registrations;
accordingly, we do not know whether during examination the marks were found to
have any meaning or whether there was any analysis of a possible scandalous
significance. In any event, we must decide each case on its own merits and “[e]ven
if some prior registrations had some characteristics similar to [applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the
Board.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001).

15 Submitted as “Exhibit A” with applicant’s Response of July 9, 2012.
Serial No. 85569079

9

The registrations of the marks HOOCHICOOCHI, HOOCHIE COOCHIE,
HOOCHIE COOCHIE POOCHIE, and UBER KUCHI16 are of even less relevance.
The record indicates that “hoochie coochie” designates a type of dance or a type of
dancer; it does not appear to have the same sexual meanings as “cooch.” The term
KUCHI, aside from having no similarity to “cooch” in appearance, appears to be
derived from German words relating to cooking or baking, and accordingly has no
relevance to the public perception of the word “cooch.”
The other registrations submitted by applicant17 relate to marks that contain
purportedly sexual terms other than “cooch.” The relevance of these registrations is
virtually nil. The fact that these different terms are included in registered marks
casts no light on the public perception of the term “cooch.”
Finally, applicant has submitted excerpts from HuffPost Celebrity, HuffPost
Comedy, and a blog apparently called “Sociology Focus,”18 apparently for the
purpose of showing that the term “cooch” is used, by some, in a socially acceptable
context. However, the two HuffPost excerpts demonstrate use of the term in a
derogatory manner in reference to celebrities who were pilloried for their unseemly
behavior. In particular, the HuffPost Comedy excerpt refers to the celebrity in
question as a “hot mess,” explaining that “hot messes” are “disaster areas,” “scandal
makers,” “persistently crazy,” “pitiful,” and “bonkers.” The Sociology Focus excerpt
is an ironically dispassionate discussion of sensitivity over the word “vagina.”

16 Id.
17 Filed as “Exhibit B” with applicant’s Response of July 9, 2012.
18 Filed as “Exhibit C” with applicant’s Response of July 9, 2012.
Serial No. 85569079

10

Although it uses the word “cooch” among many other slang words, it tells us little
about perceptions among the public of the word “cooch.” In any event, the fact that
some segments of the public are able to use the word “cooch” comfortably does not
negate the fact that another segment may find the word offensive, vulgar and
shocking to the sense of propriety.
On the present record, we find that applicant’s mark contains scandalous
matter, within the meaning of Section 2(a), 15 U.S.C. § 1052(a). We point out that
our determination in this matter does not affect applicant’s right to use her mark in
any manner she sees fit. See McGinley, 211 USPQ at 672.
Decision: The refusal to register is affirmed.