In the wake of Matal v. Tam, where the Supremes unanimously held that the “disparagement clause” in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit unsurprisingly struck down the Lanham Act’s ban on “scandalous and immoral” marks as unconstitutional in violation of the First Amendment.
In re Brunetti involves a challenge to Section 2(a), which bars registration of marks that consist of or comprise matter that may “disparage. . .persons, living or dead,. . .or bring them into contempt, or disrepute.” This language, which was at issue in Tam, is referred to as the “disparagement provision.” Section 2(a) also bars registration of marks that consist of or comprise “immoral, deceptive, or scandalous matter.” This language is referred to as the “scandalousness provision.”
The United States Patent and Trademark Office (USPTO) disqualifies a mark under Section 2(a) if “a ‘substantial composite of the general public’ would find the mark scandalous, defined as ‘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.'” Alternatively, the USPTO may prove scandalousness by establishing that a mark is “vulgar.” A “vulgar mark” is one “lacking in taste,” “indelicate,” and “morally crude.”
In 2012, a Los Angeles clothing marketer, Erik Brunetti, attempted to register his clothing brand “FUCT.” A trademark examining attorney refused to register the mark “FUCT” under Section 2(a) because, according to the attorney, “the term ‘Fuct’ is the phonetic equivalent of the word ‘[F@$&#!],’ the past tense form of the verb ‘[f@$&].'” In re Brunetti, Serial No. 85310960 (T.T.A.B. Aug. 1, 2014). Mr. Brunetti requested reconsideration and appealed to the Trademark Trial and Appeal Board (TTAB). The examining attorney denied reconsidered, and the TTAB affirmed, agreeing with the USPTO’s view that the term “Fuct” is “vulgar, profane and scandalous slang.” Id.
Mr. Brunetti then appealed to the Federal Circuit, arguing, among other things, that substantial evidence does not support the TTAB’s finding that the FUCT mark is vulgar under Section 2(a) and, alternatively, that Section 2(a) is unconstitutional.
The court heard oral argument on the case a month after Tam was issued. At oral argument, the three-judge panel pressed the government about the constitutionality of the Lanham Act’s ban on “scandalous and immoral” trademark registrations. The government argued that, unlike the ban on disparaging marks, the ban on scandalous and immoral marks is “viewpoint neutral,” and therefore indecent content is “equally denied to everyone.” Judge Kimberly A. Moore disagreed, explaining that based on her survey of every rejection based on the scandalousness provision over the last few decades, she found that “it was shocking, the level of inconsistency among the rejections versus acceptances of same words.” Judge Moore also scolded the government on its failure to articulate the government’s substantial interest in preserving the constitutionality of the ban on scandalous and immoral marks.
On Friday, December 15, 2017, the court issued its opinion, holding that the government’s rule against registering profane, sexual, and otherwise objectionable language violates the First Amendment. Before ruling on the constitutional issue, the opinion’s author, Judge Moore wrote that the FUCT mark is vulgar:
“It is undisputed that the word ‘[f@$%]’ is vulgar. * * * Substantial evidence supports the Board’s finding that ‘fuct’ is a ‘phonetic twin’ of ‘[f@$%&*!],’ the past tense of the word ‘[f@$%].'”
The court then turned to Mr. Brunetti’s constitutional argument. The court noted that following the issuance of the Supreme Court’s decision in Tam, the court requested additional briefing from the parties regarding the impact of Tam on Mr. Brunetti’s case. The court further noted that it was not convinced by the government’s argument that Tam did not resolve the constitutionality of Section 2(a)’s bar on registering scandalous or immoral marks because the disparagement provision implicates viewpoint discrimination, whereas the scandalousness provision is viewpoint neutral. According to the court, “[i]ndependent of whether the immoral or scandalous provision is viewpoint discriminatory, * * * the provision impermissibly discriminates based on content in violation of the First Amendment.”
Because the scandalousness provision restricts speech based on content, to survive, it must withstand strict scrutiny, which “requires the government to ‘prove that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest.'” The court concluded that there is no dispute that Section 2(a)’s bar on the registration of scandalous marks is unconstitutional if strict scrutiny applies.
The court then concluded that Section 2(a)’s bar on the registration of immoral or scandalous marks is unconstitutional even if treated (as the government contended) as a regulation of purely commercial speech reviewed according to the intermediate scrutiny framework. Under that framework, “‘the State must show at least that the statute directly advances a substantial governmental interest and that the measure is drawn to achieve that interest.'” According to the court, “the government has failed to identify a substantial interest justifying its suppression of immoral or scandalous trademarks.”
The court added that the First Amendment “protects private expression, even private expression which is offensive to a substantial composite of the general public.” On this point, the court echoed the Tam decision: “it is a ‘bedrock First Amendment principle’ that ‘Speech may not be banned on the ground that it expresses ideas that offend.'”
The next step in the Tam–Brunetti saga will likely be the USPTO updating its guidance to explain how it will examine applications following the Federal Circuit’s decision in In re Brunetti. While the case was pending, the USPTO continued to examine applications for compliance with the scandalousness provision according to the existing guidance in the Trademark Manual of Examining Procedure and Examination Guide 01-16, and suspended action on pending applications involving marks subject to refusal under the scandalousness provision. According to the USPTO’s Examination Guide 1-17, the USPTO will now “reevaluate the need for further suspension.”
However, the USPTO may decide to spin the appellate wheel of fortune and ask the Supremes to review the Federal Circuit’s decision. But given that the Supreme Court’s reasons for striking the “disparagement” provision apply equally to the “scandalousness” provision, it is unlikely that an appeal will prove fruitful.
Although clothing marketers and others seeking to use provocative brands will find it easier to register their marks, before registering their marks, they must prove that she or he is actually selling products in United States commerce under the mark.
Continue to stay tuned for further Section 2(a) updates. If you have questions about Tam, In re Brunetti, or trademark registration generally, please let us know. And to learn more about our Intellectual Property practice, click here.