The Times They Are a-Changin’: Marks Cannot Be Refused Registration as Scandalous or Immoral
V&E IP Insights E-communication, March 8, 2018
On December 15, 2017, the Federal Circuit held that the Lanham Act’s prohibition of immoral or scandalous matter under 15 U.S.C. §1052(a) (“Section 2(a)”) is unconstitutional under the First Amendment. In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017). Judges Stoll
and Moore wrote the opinion, with Judge Dyk concurring.
In 2011, Erik Brunetti
attempted to register the mark “FUCT” for his clothing line. The examining
attorney at the USPTO denied registration under Section 2(a) of the Lanham Act,
finding the mark to be immoral or scandalous.
Unable to persuade the examining
attorney to reconsider the refusal of registration, Mr. Brunetti appealed to
the Trademark Trial and Appeal Board (“Board”), which affirmed. In reaching its
decision, the Board consulted references such as Urban Dictionary and Google
Images. Both references associated the word “fuct” with vulgar material. In
particular, the Board stated that Mr. Brunetti’s use of the mark would
implicate “strong and often explicit, sexual imagery that objectifies women and
offers degrading examples of nihilism…” Slip op. at 5 (quoting J.A. 8-9).
On appeal, the Federal
Circuit reversed the Board’s decision. The Federal Circuit held that while the
Board correctly determined that the mark involved immoral or scandalous material,
Section 2(a)’s prohibition of such subject matter is a violation of the Free
Speech Clause of the First Amendment.
The Federal Circuit’s
decision consisted of two parts: (1) a finding that the mark FUCT is vulgar and
scandalous and (2) a finding that Section 2(a)’s bar on immoral or scandalous
marks is unconstitutional. In the first part of the opinion, the court reviewed
multiple dictionary definitions that the Board relied upon, as well as the Board’s
finding that Mr. Brunetti’s mark is used on his products, such as T-shirts, to
convey “an unmistakable aura of negative sexual connotations.” Slip op. at 6-7.
Mr. Brunetti attempted to counter these findings by arguing, among other
things, that his brand name is not vulgar because it stands for “Friends yoU
Can’t Trust” and that a vulgar mark is not a scandalous or immoral mark under
Section 2(a). Slip op. at 8-9. The Federal Circuit was not persuaded.
In the second part of the
decision, the Federal Circuit considered whether Section 2(a)’s bar of
registration for immoral or scandalous marks is unconstitutional. The
government argued that trademark registration is a government subsidy program
or a limited public forum and, in the alternative, that trademarks are subject
to government regulation as commercial speech.
The Federal Circuit rejected
the government’s assertion that trademark registration is a government subsidy
program to which the government can constitutionally attach conditions, such as
Section 2(a)’s prohibitions on trademarks. Slip op. at 14-15. The Federal
Circuit stated that trademark registration is not a government subsidy because
it does not implicate Congress’ power to spend funds. Instead, trademark
registration fees cover the operating expenses of the trademark registration
program. The Federal Circuit further pointed to the July 2017 Supreme Court
decision in Matal v. Tam (137 S. Ct.
1744 (2017)), which held that trademark registration was not a government
subsidy. Moreover, the court said that government regulation of trademarks
under a limited public forum analysis was inapplicable because trademarks are
not tied to government-owned property.
Second, the Federal
Circuit rejected the government’s argument that it could constitutionally
regulate trademarks as commercial speech. The government failed to show a
substantial interest in regulating trademarks of a scandalous or immoral
nature. The court cited Tam in
particular, stating that “[t]he Supreme Court’s decision in Tam supports our conclusion that the
government’s interest in protecting the public from off-putting marks is an
inadequate government interest for First Amendment purposes” and “All of the
government’s proffered interests boil down to permitting the government to
burden speech it finds offensive.” Slip op. at 31 and 38.
Judge Dyk concurred in
the judgment but recommended a narrowed construction of Section 2(a) that could
withstand a First Amendment challenge. Namely, he recommended changing the
statute to regulate for “obscene” trademarks. Since obscenity is not protected
by the First Amendment, such a statute would leave the government with one mode
of preventing registration of certain trademarks.
What This Means for You
The In re Brunetti decision widens the range of registerable
trademarks. Trademarks that have immoral or scandalous associations can now be registered
(assuming they meet the other requirements for registration). This decision
comes on the heels of the July 2017 Supreme Court decision in Matal v. Tam, in which the Supreme Court
unanimously held that the Lanham Act’s provision against registration of
disparaging marks violates the Free Speech Clause of the First Amendment. In
that case, a trademark applicant sought to register the mark “THE SLANTS,”
which is sometimes used as a derogatory term for people of Asian descent, for
use in connection with “live performances by a musical band,” whose band
members all happened to be Asian. The Federal Circuit reversed the Board’s
denial of the mark, citing the Free Speech Clause of the First Amendment. The
Supreme Court affirmed the Federal Circuit’s decision. Much of the reasoning in
In re Brunetti tracks the Supreme
Court’s logic in Tam.
For some trademark
owners, the Brunetti decision may encourage a rush for registration of
previously unregisterable marks. However, for most companies, Brunetti seems
unlikely to have much of an impact, except for marks involving truly “edgy”
advertising campaigns. Visit our website to learn more about V&E's Intellectual Property practice. For more information, please contact Vinson & Elkins lawyers Steve Borgman, Scott Brown, Abigail Lubow, or any of the Intellectual Property practice contacts.