The Federal Circuit Court of Appeals has ruled that a century-old provision in the Lanham Act disallowing registration of “immoral” or “scandalous” trademark names violates the constitutional right to free speech. Consequently, plaintiff Erik B. will be allowed to trademark the “FUCT” label on his apparel brand.
Section 2(a) of the Act permits the Patent and Trademark Office to refuse to register a trademark that comprises “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”
To determine whether matter is immoral or scandalous, PTO decides whether a “substantial composite of the general public” would find the mark shocking, disgraceful, or offensive.
Erik founded the “FUCT” brand in 1990, and in 2011 filed an intent to-use application with PTO for the mark to be displayed on clothing. The examining attorney refused to register the mark under Section 2(a), finding it comprised immoral or scandalous matter because it could be interpreted as the past tense of the “F” word.
Erik appealed to the Trademark Trial and Appeal Board, which affirmed the denial on the grounds that dictionary definitions uniformly characterize the “F” word as offensive, profane, or vulgar. Further, the Board found the mark was used in the context of what it called explicit and degrading sexual imagery depicting extreme misogyny and other violent and anti-social imagery.
The Federal Circuit agreed the name was vulgar, but applied a recent U.S. Supreme Court decision to find that PTO may not constitutionally refuse to register it.
Previous jurisprudence had held that the government’s refusal to register a mark under 2(a) did not implicate the First Amendment because it does not bar the applicant from using the mark, only getting trademark protection for it.
While Erik’s case was being considered by the appeals court, the Supreme Court unanimously in Matal v. Tam, 137 S. Ct. 1744 (2017), held that trademarks are not government speech but private speech, and therefore 2(a)’s ban on “disparaging” marks unconstitutionally limited speech based on its perceived offensiveness, or viewpoint. In a plurality opinion, several justices also rejected the argument that trademark registration should be excepted from free speech rights as a federal subsidy or program.
The Tam decision did not reach the constitutionality of Section 2’s other provisions, but in Erik’s appeal, the Federal Circuit extended its reasoning to the ban on “scandalous” and “immoral” marks, concluding the provision is an unconstitutional content-based speech restriction with no compelling or substantial interest to justify it.
The government argued the First Amendment should not apply because trademark registration qualifies as a government subsidy or “limited public forum,” or in the alternative, commercial speech, which is subject to greater regulation.
The Federal Circuit rejected all these scenarios, holding that trademark registration does not implicate Congressional spending powers because applicants, not taxpayers, pay the fees, nor can the government argue the speech takes place on government “property” the way it does at a physical school or city hall.
“By their very purpose, trademarks exist to convey messages throughout commerce,” the court wrote, concluding the government could not justify the provision even as a commercial speech regulation because it targets a mark’s expressive message, which is separate from its commercial purpose as a source identifier.
“A snapshot of marks recently rejected under the immoral or scandalous provision reveals the breadth of goods and services impacted [by 2(a))] including speech occurring on clothing, books, websites, beverages, mechanical contraptions, and live entertainment,” the court wrote. “These refusals chill speech anywhere from the Internet to the grocery store.”
Since an unregistered mark may still be publicly displayed, the government’s claim that 2(a) “protects” the public from objectionable material fails. Likewise, PTO’s inconsistent application of the immoral or scandalous provision from one examiner to the next further undermines this argument, the court wrote, noting registration approval for the apparel mark “FCUK.”
The case is In Re: Erik Brunetti, No. 2015-1109 (Fed. Cir. 2017).
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