December 19, 2017Client Alert

Free Speech 2, Lanham Act 0 – The Federal Circuit Opens the Door to Scandalous and Immoral Trademarks

Once again, the Lanham Act has been found in conflict with the constitution, with respect to its ban on scandalous or immoral trademarks.  Earlier this year, the Supreme Court unanimously held in Matal v. Tam that the Lanham Act’s bar on registration for disparaging trademarks is an unconstitutional restriction on free speech. See Matal v. Tam, 137 S. Ct. 1744 (2017). On Friday, the Federal Circuit reversed the Trademark Trial and Appeal Board (TTAB) in In re Erik Brunetti, No. 2015-1109 (Fed. Cir. 2017), likewise concluding the immoral or scandalous basis for refusing registration of the FUCT mark violates free speech and the right to private expression, and is therefore unconstitutional.  

Background: Section 2(a) Refusals for Immoral or Scandalous Marks

Section 2(a) of the Lanham Act states that a trademark shall be refused registration on the Principal Register if it “consists of or comprises immoral, deceptive or scandalous matter….” 15 U.S.C. §1052(a). While “scandalous” and “immoral” subject matter are depicted as separate reasons to refuse registration, the United States Patent and Trademark Office (USPTO), the TTAB, and courts have often applied the bar on immoral and scandalous marks as a solitary provision. See Trademark Manual of Examining Procedure (TMEP) §1203.01 (Immoral or Scandalous Matter); In re Brunetti at 3, citing Anne Gilson LaLonde & Jerome Gilson, Trademarks Laid Bare: Marks that May be Scandalous or Immoral, 101 Trademark Rep. 1476, 1489 (2011) (“U.S. courts and the [TTAB] have not distinguished between ‘immoral’ and ‘scandalous’ and have focused on whether the marks are scandalous or offensive rather than contrary to some accepted standard of morality.”).

The standard used by the USPTO to determine if a mark is “scandalous” or “immoral” under the Lanham Act is whether a substantial composite of the general public would find the mark to be “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 Brunetti at 3. Alternatively, the USPTO may find that a mark is scandalous if it is “vulgar,” that is “lacking in taste, indelicate and morally crude.” Id. The court in Brunetti notes that these standards can change with the evolution of cultural attitudes. Early cases involving trademark refusal under the §2(a) Immoral or Scandalous Matter provision focused on religious words or symbols. In more recent cases, the USPTO has refused to register sexual content and curse words as scandalous. See In re Mavety Media Grp. Ltd., 33 F.3d 1336, 1367 (Fed. Cir. 1994) (BLACK TAIL for adult entertainment magazines refused); In re Tinseltown, Inc., 212 U.S.P.Q. 863 (TTAB 1981) (BULLSH*T on handbags, purses and other personal accessories refused).  As an aside, in order to avoid spam filters and the like, we have modified certain explicit terminology (such as the preceding case reference and certain language relating to the Brunetti case) in this article.

In re Brunetti: Scandalous Trademark Rights

The most recent challenge to §2(a) involves Erik Brunetti’s attempt to register the mark FUCT for clothing. The USPTO refused Brunetti’s application based on the Immoral or Scandalous Matter provision of the Lanham Act. In re Brunetti at 4. The Examining Attorney determined that the FUCT mark was the past tense of the verb “f*ck.” Id. Brunetti countered this argument with evidence that the general public is not offended by his brand and the mark is a coined acronym for the phrase “Friends yoU Can’t Trust,” among other arguments.  Id. at 8.  Both the Examiner and the TTAB were not persuaded.  The TTAB noted that “fuct” is defined by Urban Dictionary as a slang version and literal equivalent to the word “f*cked” and has the same vulgar meaning. Id. at 5. It has been long understood that this word is vulgar and has been characterized as “one of the most offensive” English words. Id.  The TTAB affirmed the Examiner’s refusal, found the mark to be offensive and scandalous, and Mr. Brunetti appealed to the Federal Circuit. 

Bar to Registration of Immoral or Scandalous Marks Unconstitutional Restriction on Speech

While the Federal Circuit agreed with the TTAB and the Examiner that the FUCT mark is offensive and scandalous, it reversed the refusal to register.  Relying on the recent Supreme Court Tam decision, the Federal Circuit found the right to use and register scandalous subject matter is protected by the First Amendment.  See In re McGinley, 660 F.2d 481, 484 (CCPA 1981); In re Tam, 808 F.3d 1321, 1334-39, 1358 (Fed. Cir. 2015) (disparagement provision of §2(a) was unconstitutional under the First Amendment because it discriminated on the basis of content, message and viewpoint, and although trademarks serve a commercial purpose as source identifiers in the marketplace, §2(a) related to the expressive character of marks, not their commercial purpose).

Restriction of speech based on the topic discussed or the idea or message expressed is presumptively invalid and can only survive if there is a compelling government interest. The court held that the government’s interest in protecting the public from off-putting marks is inadequate for First Amendment purposes and the Immoral or Scandalous Matter provision is therefore an unconstitutional restriction of speech. See Id. at 31 (citing Matal v. Tam, 137 S.Ct. at 1764). In articulating its ruling, the Federal Circuit notes that the mark at issue is vulgar and the use of such marks in commerce is “discomforting,” to say the least. Nevertheless, the court concluded that the First Amendment protects private expression and the government has offered no substantial interest for policing offensive speech in the context of the registration of trademarks. Therefore, the TTAB’s determination that the FUCT trademark is unregistrable under §2(a) was reversed. In re Brunetti at 41-42.

The Future of Immoral or Scandalous Trademarks

As noted in the Brunetti case, the USPTO has inconsistently applied the §2(a) Immoral or Scandalous Matter provision to trademark applications. For instance, the court noted that out of forty applications containing the term MILF, twenty were refused as immoral or scandalous and twenty were not. Id. at 36. If nothing else, the ruling that such §2(a) bars to registration are unconstitutional may give applicants greater comfort in the consistency to which applications are reviewed.  However, it is unclear how the provision will be applied to future applications.

Following the Supreme Court’s ruling in Tam, the TMEP was updated to indicate that it is no longer valid to refuse or cancel a registration based on the fact that the mark may “disparage… or bring… into contempt or disrepute.” See TMEP §1203. It is possible that following the Brunetti decision, the manual will further be updated to strike “immoral” or “scandalous” matter as a means for refusal or cancellation of trademark registrations.

Judge Dyk, in his concurring opinion, contends that when faced with constitutional doubt as to the Immoral or Scandalous Matter provision, the court should adopt a narrowing construction and limit the statute to obscenity, which has a long history in Supreme Court decisions. In re Brunetti (Dyk, J. concurring opinion at 2). Narrowing the scope of the Immoral and Scandalous Matter provision would remove some of the subjectivity of the trademark analysis and allow the government to refuse registration of explicit trademarks that fall under the Supreme Court’s obscenity definition. This limitation would protect the broader theory of free speech, while arguably protecting consumers from such obviously obscene material.

Tam and Brunetti suggest a movement that perhaps is more consistent with public morale and sentiment, at least that of the majority, and the tolerance for government involvement with respect to any sort of restriction or control of messaging with this broader interpretation of speech. Time will tell whether there will be a significant impact on the register, and whether other grounds such as obscenity are relied upon to control what is and is not registered. 


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