First Amendment Protects Trademark Owners from Government Censorship

On December 15, 2017, in In re Brunetti, Case No. 2015-1109 (Fed. Cir. Dec. 15, 2017), the United States Court of Appeals for the Federal Circuit held that the federal trademark statute’s (the “Lanham Act’s”) bar on registration of immoral or scandalous marks is an unconstitutional restriction of free speech. If this decision stands, Mr. Brunetti may obtain federal registration of his FUCT mark for use with clothing. The result is not terribly surprising in light of the United States Supreme Court’s holding earlier this year that the Lanham Act’s bar of disparaging marks violated the First Amendment.

Section 2(a) of the Lanham Act allows the United States Patent and Trademark Office (the “PTO”) to refuse to register any mark comprised of scandalous or immoral matter. To determine whether a mark comprises scandalous or immoral matter, the PTO asks whether a substantial composite of the general public would find the mark scandalous. To prove a mark is scandalous, one may prove that the term is vulgar.

Selecting a polite word for his mark was a trend Mr. Brunetti bucked.

Mr. Brunetti sells clothing under his mark, a variant of the f-word.

Mr. Brunetti’s efforts to register his mark, the PTO and TTAB did obstruct.

Mr. Brunetti sought to register his mark, but the PTO refused registration on the ground that the mark is scandalous, as evidenced by dictionary definitions establishing the mark consists of a word that is or sounds the same as the past tense of a vulgar word. Mr. Brunetti appealed, but the Trademark Trial and Appeal Board (the “TTAB”) affirmed the refusal, noting that the explicit imagery accompanying use of the mark underscored the examining attorney’s conclusion. Mr. Brunetti then appealed to the Federal Circuit.

But into the depths of the free speech issues the Federal Circuit tucked.

The Federal Circuit agreed with the TTAB’s finding that the mark is the phonetic equivalent of the past tense of a vulgar word, noting that substantial evidence supported the conclusion. But then the Federal Circuit examined the constitutionality of the applicable clause from the Lanham Act.

Echoes of rejected arguments the Federal Circuit couldn’t stomach.

The Federal Circuit recounted its reasoning in In re Tam, Case No. 2014-1203 (Fed. Cir. Dec. 22, 2015), which found a different clause from the same section of the Lanham Act unconstitutional as a violation of the First Amendment. In Tam, the Federal Circuit determined that trademark registrations were not government speech or federal subsidies, and that the ban on disparaging marks did not survive even the lower level of scrutiny applied to commercial speech because the government could not articulate any substantial government interests justifying the restriction of speech. But the Federal Circuit limited the scope of its decision in Tam to disparaging marks, which left open the question whether other clauses within Section 2(a) of the Lanham Act were unconstitutional. The Supreme Court unanimously affirmed, also limiting its decision to Section 2(a)’s disparagement clause and finding it violated the First Amendment’s free speech clause.

At thin air and straws the federal government grasped, and plucked.

Following the Supreme Court’s decision in Tam, the government argued before the Federal Circuit in Brunetti that the scandalous and immoral clause should not suffer the same fate as the anti-disparagement clause because the former does not discriminate on the basis of viewpoint. The Federal Circuit disagreed, concluding that the provision is an impermissible content restriction and thus violates the First Amendment.

Following the reasoning in Tam, the immoral and scandalous clause seemed to self-destruct.

The Federal Circuit’s Brunetti decision followed much the same reasoning as Tam. Though Tam left open the question whether trademarks constitute expressive speech (subject to strict scrutiny) or commercial speech (subject to intermediate scrutiny), the Federal Circuit ducked a conclusion on that question by determining that the clause was unconstitutional even if intermediate scrutiny were to apply.

A more narrow, constitutional meaning of the clause, the Federal Circuit could not construct.

The Federal Circuit considered whether it was possible to construe the provision narrowly so as to prohibit obscene content and thereby preserve its constitutionality. But the court decided it could not. To confine “immoral” and “scandalous” terms to proscriptions of obscenity would be to impermissibly rewrite the statute entirely.

And so into a fortunate conclusion, Mr. Brunetti lucked (out).

Accordingly, in Brunetti, the Federal Circuit held the Lanham Act’s prohibition against registration of immoral or scandalous marks an unconstitutional violation of the First Amendment and reversed the TTAB’s decision.

But mark owners should proceed with caution when deciding how to conduct (themselves).

This case may not be over. The federal government may petition the Supreme Court for certiorari. But there it would face many of the same challenges it faced in Tam.

Even if the Supreme Court declines to grant certiorari or affirms the Federal Circuit’s decision, trademark owners should consider carefully whether they want to register a mark that a substantial composite of the general public would consider scandalous or immoral. While all brands do not have to appeal to all people, intentionally selecting a mark that would alienate a large number of people may be selecting an unnecessary disadvantage in the marketplace. Moreover, trademark offices around the world may not elevate free speech above other considerations the way the U.S. does and such a mark could encounter difficulties obtaining registration elsewhere.

In other words, if Brunetti tries to register his mark outside the U.S., he might be ….