It's Scandalous!

by Geoff Mantooth

2003 | Originally published in Fort Worth Business Press

Choosing a 1-800 number can’t be easy. Since most people are better with words than numbers, the most sought after toll free numbers use words that are self-explanatory. There’s 1-800-CALL ATT, obviously for phone service, 1-800-ALLSTATE, for insurance and 1-800-INJURED for lawyer advertising. The lawyer number, although not a household name like AT&T or ALLSTATE, conjures instant recognition; no need to even ask what kind of law it refers to.

There are those who take four letter words and extend them to seven letters or more for phone numbers. On top of that, sometimes owners take these phone numbers that are unsuitable for polite company and try to obtain a trademark registration.

One recent attempt involved the toll free number 1-800-BACK OFF, filed by The Boulevard Entertainment. Because you don’t have to reach way up high behind a barrier to buy this newspaper, I’ll be candid and tell you that “BACK” OFF is not the real number. The number itself is somewhat misleading because while usually 1-800 numbers are toll free, this particular one is not. But then, not much in the way of adult entertainment is. A customer dials the number to engage in repartee with actors or actresses, and is charged by the minute.

The Trademark Office refused registration of the term. The refusal wasn’t based on the fact that the trademark was a phone number. Surprisingly, there are a number of registrations for telephone numbers. The numbers first mentioned above, utilizing CALL ATT, ALLSTATE and INJURED, are registered.

Telephone numbers are like addresses in their uniqueness; there can only be one such number nationwide. For instance, there is only one 1-800-255-5288 (CALL ATT). But, due to the explosion of toll free numbers, new prefixes are being added, like 1-866. And different letters can produce a unique number, while the word is phonetically similar to an existing number. So, by obtaining a trademark registration, an owner tries to expand exclusivity beyond the actual numbers.

This strategy works well unless the mark is vulgar. The Trademark Office refused registration of 1-800 BACK OFF, citing the immoral or scandalous prohibition of the Lanham Act, the federal law dealing with trademarks. What followed could only happen in a country where folks debate the meaning of seemingly simple words like “is”. You guessed it, Boulevard hotly contested that its phone sex phone number was immoral or lewd.

As proof, Boulevard submitted hits from a Lexis search that included innocuous statements like, “She dropped Jack off at school.” The Trademark Office countered with its own Lexis search that produced 15 hits of the vulgar usage, all in non-mainstream publications.

Boulevard also said that the phrase had a non-sexual meaning; a stupid, incompetent person. The case is silent as to whether Boulevard changed its phone talk scripts for its actors to act stupid to reflect this secondary meaning.

The Trademark Office cited four different dictionaries that all agreed the phrase isn’t so nice. One dictionary, entitled Forbidden American English, is “intended for persons seeking guidance in avoiding giving offense.” Seems as though there are a few cable shows where the F.A.E. is required reading.

Boulevard whined that the dictionaries relied upon by the Trademark Office were all so… dated. The dictionary copyrights ranged from 1987- 1997, while the application was filed in 1998. The court had to be unimpressed by that argument, since the meaning of the phrase hasn’t changed since the judges were students.

As a last resort Boulevard invoked its constitutional rights! Boulevard said it had a first amendment right to register its phone number. Why is it that when a case is lost, the constitution gets dragged into it? The court thought that Boulevard very freely expressed itself with its phone number. But, expression wasn’t the issue. The issue was whether Boulevard could keep others from expressing themselves by registering the term. Vulgarity it seems, belongs to us all.

Others have tried more disguised attempts to register scandalous marks. For instance, lengthening a four-letter word by using “sch” instead of “sh”. A good Trademark Office Examiner says the mark out loud in order to catch such attempts.

Adopted in more Puritan times (1946), the Lanham Act has been used to keep our national registry of trademarks somewhat pristine. Imagine what the registry would look like if the Lanham Act had passed in, say the late 1960’s, in the late stages of the Vietnam War.