Marc J. Randazza 1 Randazza Legal Group 10620 S. Highlands Pkwy.

#110-454 2 Las Vegas, NV 89141 888-667-1113 3 305-437-7662 (fax) 4 [email protected] 5 Attorney for Applicant, 6 LIBERTY MEDIA HOLDINGS, LLC 7 8 9 10 This Response to Office Action is offered in reply to the Office Action taken on February RESPONSE TO OFFICE ACTION

11 17, 2011, regarding Serial Number 85165352, in which the examining attorney rejected the 12 13 14 15 I. INTRODUCTION The particular publication the Applicant seeks to protect is the proposed Corbin Fisher application under Section 2(a) of the Lanham Act.

16 University (CFU) mark because of its use of a line-art logo in the shape of a phallic tower. See 17 Exhibit A. 18 The blanket theme of the rejection is the Examiners statement: 19 The depiction of male genitals in connection with adult entertainment 20 services is shocking to the sense of decency or propriety. While the applicant has indicated in the drawing description that the design is of a tower, the 21 mark clearly identifies male genitalia because of the circular design at the 22 base of the design and the shape of the design at the top. None of these elements are present in a traditional design of a tower or obelisk. 23 (Office Action at 2). 24 The Applicant respectfully challenges this characterization of the symbol of a traditional 25 26 design of a tower or obelisk and the determination that the mark is shocking to the sense of 27 decency or propriety. (Office Action at 2) 28

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II.

PHALLIC IMAGERY HAS BEEN A CONSTANT FORM OF EXPRESSION SINCE THE DAWN OF MAN AND THUS NOT SHOCKING TO THE SENSE OF DECENCY AND PROPRIETY.

Admittedly, the CFU Tower is phallic in nature. Phallic symbols are now, and have always been, common in the society of man as an identifier of fertility. Furthermore, conventional towers and obelisks are intentional derivatives of a phallus meant to portray

1 7 strength, fertility and power. The Applicant should not be denied the right to protect these

8 Alpha-male characteristics just because the USPTO feels threatened by them. After all, America 9 is an Alpha nation, and such a Beta position cuts against the very fabric of the symbolism that 10 11 12 13 1. The Symbolism of the Shaft. It is common knowledge within the psychological field that the phallus represents male tells the tale of the American experience.

14 qualities. While this may be shocking to the sense of decency and propriety to some, this is 15 not the mentality of a substantial composite of society at large. Naturally, there will always be a 16 small majority of people who will reach for their clutching-pearls and dramatically cast 17 themselves upon their fainting divan at the mere suggestion of anything to do with sexuality. 18 19 However, Section 2(a), as misguided as it might be, was not enacted to protect the eggshell-frail 20 sensibilities of a few erotophile outliers. 21 22 23 No intro to philosophy course would be complete without exposure to the writings of Sigmund Freud and his phallic symbolism in dreams, later echoed by Jacques Lacans Ecrits: A

24 Selection. The basic premise of both Freud and Lacan, is that there is a difference between 25 being and having a phallus. Men are seen as having the phallus while women are seen to 26 being the phallus. Furthermore, both highly regarded forefathers of psychology state the 27 28
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Hargrave Jennings, Phallicism, Celestial and Terrestrial, etc., pp. 23, London, George Redway, 1884. 2 RESPONSE TO OFFICE ACTION

symbolic nature of the phallus as the concept of being the ultimate man.2 The proposed Mark

2 is a tower and all towers are in fact phallic symbols. The rejection, if left to stand, would operate 3 to ban any tower-imagery for the Principal Register. 4 5 6 In Judith Butlers seminal work, Gender Troubles, she states [t]he law requires conformity to its own notion of nature. It gains its legitimacy through the binary and

7 asymmetrical naturalization of bodies in which the phallus, though clearly not identical to the
3 8 penis, deploys the penis as its naturalized instrument and sign. In Butlers later work, Bodies

9 that Matter, she expands on this notion. Butler notes that if, as Freud enumerates, a set of 10 11 12 from the penis elsewhere, then any number of other things [such as towers] might come to stand
4 13 in for the phallus. Clearly, the logic of the present rejection sweeps too broadly, and its

analogies and substitutions that rhetorically affirm the fundamental transferability of the phallus

14 premise would cause the literal and figurative emasculation of everything. 15 16 17 18 2. Our Phallic History.

Mankind erected phallic symbols in its earliest days. The Hohle Phallus is 28,000 years old.5 The phallus lost no popularity as the earliest civilizations developed, and it was ubiquitous

19 in Ancient Egypt. In Egyptian mythology, the god Seth vivisected Osiris and scattered 14 pieces 20 of his body throughout Egypt. Osiris wife, Isis, collected all of the pieces except his penis, 21 22 23 which was supposedly swallowed by a fish. According to the myth, Isis erected a wooden replacement. Ever after, the phallus served as a symbol of male virility and agricultural fertility

24 (Exhibit B). These representations eventually led to the proliferation of obelisks, symbolizing 25 26 27 28
Felluga, Dino. "Modules on Lacan: On Psychosexual Development." Introductory Guide to Critical Theory. Jan. 31, 2011. Purdue U. Aug. 16, 2011. <http://www.purdue.edu/guidetotheory/psychoanalysis/lacandevelop.html>. 3 Butler, Judith (1999), Gender Trouble: Feminism and the Subversion of Identity. New York: Routledge. xxviii xxix. 4 Butler, Judith (1993). Bodies That Matter: On the Discursive Limits of "Sex". New York: Routledge. pp. 95. 5 Amos, Jonathan (2005-07-25). Ancient phallus unearthed in cave (http://news.bbc.co.uk/2/hi/science/nature/4713323.stm). BBC News. (http://news.bbc.co.uk/2/hi/science/nature/4713323.stm) Retrieved 16-08-2011. 3 RESPONSE TO OFFICE ACTION
2

fertility and prosperity as well as power and dominance.6 To be Alpha means to invoke the

2 power of the phallus. 3 4 5 6 Exaggerated and elongated phalluses were commonplace in Ancient Greek depictions of gods associated with fertility - Hermes, his son Pan, and Priapus among them. (Exhibit C). In modern times the city of Tyrnavos, Greece holds an annual Phallic festival accompanied by

7 7 phallic events on the first day of Lent. The undersigned has found no examples of any ill-

8 effects upon the residents of Tyrnavos. 9 10 11 12 phallic adoration is common and phallic keep-sakes and souvenirs can be purchased as fertility
8 13 idols. (Exhibit D).

Of course, phallocentrism is not entirely European. In Japan, the Mara Kannon National Shrine in Nagato, Yamaguchi is among the many fertility shrines still erect in Japan today, where

14 15 16 17 18

3.

Erecting the Phallus.

The basis for rejection is flawed. Many high-profile structures would fit within the strangely contrived rule against invoking the imagery of phallus shaped buildings. One element of the mark that apparently offended the PTO was the circular design at the base of the design

19 and the shape of the design at the top. None of these elements are present in a traditional design 20 of a tower or obelisk. (Office Action at 2). One can only infer from the rejection that it is 21 22 23 meant to imply that the circular design at the base represents testicles and the shape of the design at the top to represent the dome of the penis. It is important for the Examiner to keep

24 in mind the aforementioned teachings of famed psychoanalysts simply because a structure is 25 26 27 28

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phallic in nature, does not mean it is a penis. One may invoke the symbol of strength, the

2 phallus, without it being a literal tallywhacker. 3 4 5 6 Representations of the phallus are commonplace in our culture. The contemporary tower and high-rise are a direct effort to echo the symbolism of the phallus and the obelisk.9 Internationally, it would appear that modern architecture purposely seeks to emulate the phallus.

7 (Exhibit E). Even the Vatican is rife with phallic imagery. (Exhibit F). Should the Examiner 8 miss the obvious analogue to the Applicants mark, the photo also contains an obelisk in the 9 forefront surrounded by a great many pillars no doubt to symbolize the dominance of The Holy 10 11 12 (Exhibit G). Phallus shaped structures are so commonplace that it is certain that every city of 13 any note on Earth has at least one specimen. 14 In the United States, aside from the obvious phallic representation of the Washington Sees Church. In fact, the shape of Saint Peters Square is in the exact shape of a phallus.

15 Monument in Washington D.C. (a symbol of honor for our first President), genital-like structures 16 are commonplace and why would they not be in the most Alpha of nations. For instance, the 17 famed Cathedral of Learning at the University of Pittsburgh is affectionately dubbed The 18 19 Phallus of Learning by students. (Exhibit H). 20 21 22 23 Should the Examiners decision be upheld, the PTO would have to consider any trademark incorporating images of the State of Florida to barred under the new phallus prohibition. Aside from the obvious shape of the State of Florida referred to as Americas

24 wang in The Simpsons episode # 245 - The Florida State House in Tallahassee has, according
10 25 to the (faulty) decision of the Examiner, the profile of an erection. The Applicant has provided

26 an exhibit of the State House containing two circular design[s] at the base of design and a large 27 28
Hargrave Jennings, Phallicism, Celestial and Terrestrial, etc., pp. 23, London, George Redway, 1884. Groening, Matt, & Jen Kamerman. (2000). Kill the Alligator and Run. In James L. Brooks, The Simpsons. Los Angeles: 20th Century Fox Television.
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shaft rising high into the air between them. (Exhibit I). While many people are regularly

2 shocked at the events taking place in Tallahassee, there are no reported incidents of visitors to 3 the State House suffering from seizures or screaming condemnation at the Florida State Capitol 4 5 6 7 (at least not because of its architecture). Not even the Sunshine States notoriously socially conservative politicians have sought to change the building. We could go on forever in our survey of American phallic structures: The Coit Tower of

8 San Francisco (Exhibit J), the Sunsphere in Knoxville (Exhibit K) and the Municipal Tower in 9 Seattle (Exhibit L) among them. We use the phallus as a symbol of power, and prior to now, no 10 11 12 definition, phalluses. Even the very building in which the USPTO expresses the phallic code. 13 (Exhibit M). This newfound aghast reaction to the phallus is decidedly shocking. 14 15 16 17 18 4. The Dome government official has sought to disfavor such expression. The fact is, towers are, by

Should the Examiner place emphasis on the dome-like design at the top the Applicant can also offer voluminous evidence supporting the propriety of its Mark. Where the PTO sees a bell-end, the Applicant sees a frequent architectural device. The Nebraska State Capitol

19 possesses a dome-like shape of the design at the top. (Exhibit N). Coit Tower in San Francisco 20 fits within the Examiners curious definition of genitals, with its bell-like head. (Exhibit O). The 21 22 23 24 iconic shape of One Hanson Place in Brooklyn, NY conspicuously and proudly proclaims its shaft and domed head. (Exhibit P). Perhaps the best evidence the Applicant can provide to sure-up its position that the design

25 is not scandalous is the proposed Tower of Invincibility. (Exhibit Q). The very basis for 26 rejection the Examiner provides completely and accurately describes the Tower of Invincibility 27 28 mark clearly identifies male genitalia because of the circular design at the base of the design and
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While the applicant has indicated in the drawing description that the design is of a tower, the

the shape of the design at the top. The Tower of Invincibility will be built as a permanent

11 2 monument celebrating freedom, sovereignty, and peace in America. The mere thought of it

3 brings the memorable song from Team America, World Police to the Red, White, and Blue 4 5 6 Mind. The only thing scandalous in this case is the bizarre and arbitrary rejection of the Mark, and in this context it is as if we are reading a graphic account of the forcible castration of an

7 American Bald Eagle. 8 Corbin Fisher employs the imagery of an educational institution and towers of this nature

9 have been used at campuses throughout the world. In fact, the pristine and serene campus of 10 11 12 complete with the same shape of the design at the top. (Exhibit R). Surely it is not the 13 position of the Examiner that only educational institutions with a certain pedigree are allowed the 14 use of phallic clock towers. 15 16 17 18 III. THE ALLEGEDLY OBJECTIONAL MARK IS NOT SCANDALOUS Stanford University is adorned with the very tower in which the Applicant based its own Mark,

The Examiner will note that the mark must be examined in the context of the current attitudes of the day.12 It is under the lens of the moral values and mores of contemporary society

13 19 in which the words must be viewed.

20 21 22 23

The fact is that when Section 2(a) was written, it was a different day and age. In 1905, matters of public morality were still reeling from neo-Puritanical Victorian influence. While America took a brief vacation back to those days during the collective insanity under The Bush

24 Years, we certainly have grown up a bit since John Ashcroft covered up the breast of Lady 25 Liberty. The moral values and mores of contemporary society have undoubtedly grown to 26 27 28
Tower of Invincibility, (http://www.towerofinvincibilitydc.org/). Retrieved 16-08-2011. In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994). 13 In re Thomas Laboratories, Inc., 189 USPQ 50, 52 (TTAB 1975) stating: It is imperative that fullest consideration be given to the moral values and conduct which contemporary society ahs deemed to be appropriate and acceptable.
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tolerate line-art of a clock tower that is allegedly phallic in nature.14 If Americans can tolerate

2 anything, the Applicant believes that they can tolerate line-art without an attack of the vapors. 3 4 5 6 1. The Relevant Marketplace

Even if the Mark were immoral or scandalous, this determination should only be made in the context of the marketplace as applied to goods or services described in the application.15

7 Therefore, even if the Examiner believes that phallic imagery is still of such talismanic power 8 that it would shock a substantial portion of the American public (a superstition that is dispelled 9 above), then the Examiner could simply look at the relevant marketplace instead of the 10 11 12 approach is in line with other forms of regulation of expression. For example, in Ginsberg v. 13 New York, the United States Supreme Court affirmed the conviction of a shopkeeper who sold 14 pornography to a child.17 However, this case embraced the notion that the marketplace in 15 general (including children) could tolerate a bar to certain types of expression, while the 16 marketplace consisting only of adults would not tolerate such restrictions.18 The very same 17 perspective was embraced by Reno v. ACLU. 18 19 20 21 22 23 24 25 26 27 28
For argument regarding the scandalous-less connotation associated with the term boner see section (B)(1) above. Quotation is from the Examiners initial rejection, but it cites the following cases: In re Mavety Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994); In re Wilcher Corp., 40 USPQ2d 1929, 1930 (TTAB 1996). 16 See In re Hershey, 6 USPQ2d 1470 (to determine whether a designation is properly refused as scandalous, the mark must be considered in the context of the marketplace as applied to the goods or services described in the application.). 17 390 U.S. 629 (1968). 18 Id. at 631.
15 14

marketplace as a whole. This approach is long-embraced in Trademark Law.16 And, this

We are persuaded that the CDA lacks the precision that the First Amendment requires when a statute regulates the content of speech. In order to deny minors access to potentially harmful speech, the CDA effectively suppresses a large amount of speech that adults have constitutional right to receive and to address to one another. That burden on adult speech is unacceptable if less restrictive alternatives would be at least as effective in achieving the legitimate purpose that the statute was enacted to serve.

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With this in mind, if the Examiner is uncomfortable determining that we have, as a

2 nation, embraced phallic imagery, then the Examiner may narrow the relevant marketplace to the 3 internet and further restricted to adult entertainment on the internet. 4 5 6 7 8 9 a. The adult internet community tolerates phallic imagery more than other segments of society. In the alternative, if the Examiner would like to narrow the marketplace from America in general to simply the American internet user, the Examiner will find that phallic imagery is even more accepted on the internet than in the IRL world. Given the relevant channels of trade in the

10 descriptions of goods and services pursuant to the Applicants application, the contours of the 11 marketplace should be comfortably demarcated far from any territory where a potential viewer 12 would find his use of phallic imagery to be scandalous. 13 14 15 16 17 18 19 20 21 Production of DVDs, videotapes and television programs featuring adult entertainment; Providing an online adult website featuring photographs and videos in the field of adult entertainment; entertainment services in the nature of providing a website on the global computer networks featuring information in the field of adult entertainment; providing an online website of information comprising adult material and viewing thereof, and other adult entertainment related material. As illustrated in the description of goods and services, the Applicants expressive activity is transmitted to a limited marketplace of consumers consisting of a consensual audience, all over the age of 18 years, desirous of receiving and enjoying the message conveyed by works

22 relating to human sexual interest and sensual subtleties. In order to enter the site, the user will 23 have to acknowledge the warning similar to the one present on the Applicants sister site 24 25 26 27 28 CorbinFisher.com: This website contains images of naked men engaging in sex acts, including gay, sexually-oriented material. Leave now if you are offended by such material, or if you are under the age of 18, or if you live in a community where viewing or possessing adult material is illegal.

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This information is provided for a dual purpose to demonstrate the fact that the relevant

2 marketplace and channels of trade are constrained by the conditions above (herein the 3 Conditions) and to demonstrate that this is not a mark that is distributed to a general audience, 4 5 6 7 nor that it requires protection outside of the audience and marketplace delineated by the Conditions. It is well-established that determinations under trademark law hinge upon the definition

19 8 of the relevant marketplace or channels of trade. To enter the channel of trade for the

9 Applicants goods and services, a potential customer will have ample fair warning that he or she 10 11 12 description of services is essentially the red light district of the online media world. In that 13 realm, websites deal with sexual topics in a graphic and often degrading manner. Men are 14 depicted as being used by other men, with an entire genre of adult entertainment devoted to man15 on-man sex. This relevant marketplace is a marketplace where homosexual passion is found. In 16 the relevant marketplace, a Google search for gay porn brings up 30,200,000 web pages 17 devoted to the subject.20 This marketplace can certainly handle line-art. 18 19 20 21 22 23 2. The Relevant Marketplace Conclusion is about to enter a realm of sexual expression. The relevant marketplace limited by the

The fact is that in the United States, phallic imagery is hardly shocking. However, if the Examiner narrows the relevant marketplace to the internet, then phallic imagery lack any shock value. If the relevant marketplace is narrowed further to the world of adult entertainment, then a

24 true penis is downright vanilla, to say nothing for this particular piece of inoffensive line-art. In 25 26 27 28
See, e.g., M2 Software, Inc. v. M2 Communs., Inc., 450 F.3d 1378, 1383 (Fed. Cir. 2006) (no likelihood of confusion when identical marks were used to brand products in different channels of trade); PC Club v. Primex Techs., Inc.., 32 Fed. Appx. 576, 577 (Fed. Cir. 2002) (degree of care potential consumer will exercise when purchasing one product over another can mitigate likelihood of confusion); Bell Laboratories, Inc. v. Colonial Products, Inc., 644 F. Supp. 542, 544 (D. Fla. 1986) (marketing channels used is operative to the likelihood of confusion analysis); University of Georgia Athletic Association v. Laite, 756 F.2d 1535 (11th Cir. 1985) (same). 20 http://www.google.com/search?hl=en&q=gay+porn&aq=f&aqi=g10&aql=&oq= 10 RESPONSE TO OFFICE ACTION
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Sable Communications v. FCC, the Supreme Court held unconstitutional a complete prohibition

2 on the creation of obscene or indecent communication on the grounds that children needed to 3 be protected from hearing such communications. The justification was that this restriction went 4 5 6 too far, since it denied adults (the relevant market) access to the communication on order to shield the irrelevant market (children). Should the adult entertainment community have its

7 commercial speech governed by the sensibilites of the 700 Club-watching public? Why not the 8 other way around? The 700 Club is shocking and reprehensible to many, but if the First 9 Amendment means anything, it means that the government must remain neutral in such 10 11 12 Based on the above facts, and following the above-cited authority, the Examiner should 13 find that the Applicants mark is generally accepted as a non-scandalous mark. In the 14 alternative, the Examiner could find that on the internet, phallic imagery is neither scandalous 15 nor immoral. Furthermore, as a fallback position, the Examiner should find that phallic imagery 16 is neither scandalous nor immoral in the context of the relevant sub-market of online adult 17 subject matter. 18 19 20 21 22 23 24 25 26 27 28 IV. CONCLUSION determination.

The Applicant respectfully requests that the Applicants Mark proceed to registration on the Principal Register. Date: August 17, 2011. /s/ Marc J. Randazza Marc J. Randazza Randazza Legal Group 10620 S. Highlands Pkwy. #110-454 Las Vegas, NV 89141 888-667-1113 305-437-7662 (fax) [email protected]

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