The Tightrope Between First Amendment Violations and Lawful Regulation of Vulgar Trademarks
May 3, 2019
Author: Sean Flaherty
Trademark attorneys and brand owners alike know that trademark applications are not to be refused registration by the USPTO unless they fall within certain codified prohibitions. 15 U.S.C. § 1052(a) (“Lanham Act Section 2(a)”), for example, bans trademarks which “[c]onsists of or 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 . . .”
But in 2017, the Supreme Court ruled in Matal v. Tam, 137 S. Ct. 1744, 1763 (2017), that the “disparagement clause” of Section 2(a) was unconstitutional as amounting to viewpoint discrimination. This set the stage for subsequent challenge to the remaining part of 2(a)—the “immoral/scandalous” clause. This issue was recently argued on April 15, 2019 before the Supreme Court in Iancu v. Brunetti, Case No. 18-302.
Trademark Application and TTAB Appeal
In 2011, Erik Brunetti, “an artist and entrepreneur whose graphics are infused with cultural strands from skateboarding, graffiti culture, punk rock music, and remnants of Situationist Ideal ideologies” sought to register the trademark application no. 85310960 for “FUCT.” In re Brunetti, 2014 TTAB LEXIS 328, *3-4 (T.T.A.B. August 1, 2014). The PTO rejected the application under the prohibition against “immoral/scandalous” marks, and Brunetti appealed to the TTAB. There, Brunetti attempted to argue that the mark did not carry any particular meaning, was not being used for its phonetic equivalent, and instead was “an arbitrary made up word” which evoked an edgy aesthetic. Brunetti further argued that to the extent the term had any meaning, it correlated to each of the first letters of the phrase FRIENDS U CAN’T TRUST. However, the TTAB stated that the foregoing arguments “stretche[d] credulity.”
The TTAB affirmed the refusal, noting that “the threshold for objectionable matter is lower for what can be described as ‘scandalous’ than for ‘obscene,’” citing In re McGinley, 660 F.2d 481, 211 USPQ 668, 673 n.9 (CCPA 1981). The also TTAB recognized its own statutory limitations in noting it was not “the appropriate forum for re-evaluating the impacts of any evolving First Amendment jurisprudence within Article III courts upon determinations under Section 2(a) of the Lanham Act.” In re Brunetti, 2014 TTAB LEXIS 328 at *16.
Federal Circuit Appeal
Brunetti appealed the TTAB to the Federal Circuit. The Court of Appeals did not disturb the TTAB’s factual finding that the mark was vulgar and therefore fell within Section 2(a)’s prohibition against the registration of scandalous marks. In re Brunetti, 877 F.3d 1330, 1338 (Fed. Cir. 2017) (“Dictionaries in the record characterize the word as ‘taboo,’ ‘one of the most offensive’ English words, ‘almost universally considered vulgar,’ and an ‘extremely offensive expression.’”) But, while the case was on appeal, Matal v. Tam1 was decided. Applying that holding to Brunetti’s application, the Federal Circuit found the “immoral/scandalous” prohibition as an unconstitutional content-based restriction on speech. In re Brunetti, 877 F.3d at 1341. The Federal Circuit held that the regulation did not survive even intermediate, much less strict scrutiny, because (i) “the government ha[d] failed to identify a substantial interest justifying its suppression of immoral or scandalous trademarks”; (ii) the government could not show that the “regulation directly advance[d] the government’s asserted interest” (because the ban does not prevent actual use of the vulgarity and thus “does not protect the general population from scandalous material”); and (iii) the government failed to show that the regulation was “carefully tailored” given the significant evidence of inconsistent application and “vague nature of the scandalous inquiry.”
Finally, the Federal Circuit denied the government’s last-stand argument, which was to interpret the ban narrowly so as to uphold its constitutionality, by making the prohibition coextensive with a ban on obscenity. However, the Federal Circuit noted that due to the language used in the statute, no basis was provided to the Court to rewrite the law. Id. at 1357 (“We do not see how the words ‘immoral’ and ‘scandalous’ could reasonably be read to be limited to material of a sexual nature. We cannot stand in the shoes of the legislature and rewrite a statute.”).
Supreme Court Review
The Supreme Court granted certiorari and recently held oral argument.
Brunetti primarily argued that there was no principled distinction between the unconstitutionality of the prohibition against the offensive viewpoints targeted by “disparagement clause” in Tam and the offensive viewpoint targeted by the “immoral/scandalous clause” presently before the Court. Further, the applicant argued that all examination of trademarks necessarily implicated an evaluation of content, and thus the government could not argue that the prohibition amounted only to regulation of the “mode of expression.”
In light of Tam, the government was hard pressed to maintain the facial validity of the regulation. Instead, the government conceded the statute should be narrowed so as to preserve its validity.
At oral argument, Justice Kagan asked: “[J]ust so I could understand, you’re asking us to narrow this statute to exactly what?” Deputy Solicitor General Malcom Stewart replied, “To marks that are offensive, shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express.” Here, the government essentially argued that the PTO should be permitted to restrict speech akin to fighting words, which are susceptible to regulation because they are not based on viewpoint, but instead voiced merely to anger and incite. The government also distinguished Tam by arguing the prohibition against scandalous words is viewpoint-neutral and applied regardless of the applicant’s intended message.
The oral argument lasted nearly an hour with the Court peppering each party with a great number of questions. At several instances, the Court indicated uneasiness with vagueness of the regulation, as evidenced by the PTO’s track record of inconsistent application. But that is not to suggest an unconstitutionality ruling is assured. The Justices probed whether any speech in the context of trademarks could thereafter be regulated in the event this provision were ruled unconstitutional. Could a trademark registrant owning a vulgar mark for example, not be denied advertising space on the side of a public bus, given that its trademark registration was now approved by the federal government?
Justice Breyer repeatedly raised the point that even today, a limited number of dirty words and racial slurs are well defined and well documented to have a physiological effect on the hearer, and asked why the government should not be permitted to ban those words from the trademark registration program. Similarly, Justice Gorsuch asked with regard to the trademark registration program, “why can’t the people choose to withhold the benefit [of registration] on the basis that there are certain words that are profane and that we, as a matter of civility in our culture, would like to see less of rather than more of, and you can use – you’re free to use them . . .but we are not going to trademark them, and we’ve held just last year that a patent is a public benefit that can be withdrawn without a judge. Why isn’t this also similarly a public benefit rather than a private right?” Additionally, Justice Sotomayor posited, “Why can’t the government say, no, we’re not going to give you space on our public registry for words that we find are not acceptable?”
Although the expected bet is on another decision striking down the prohibition as unconstitutional in light of Tam, don’t be surprised if the Court instead decides to walk a tightrope and find that certain vulgarities do not implicate bona fide viewpoints, are used for no more than to create a shocking response in the hearer, and are thus susceptible to regulation without running afoul of the First Amendment.
About the author: Sean Flaherty is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on litigation matters involving copyright, trademarks, trade secrets, and patents, as well as transactional matters related to intellectual property licensing. Mr. Flaherty is a registered patent attorney with a degree in Civil Engineering. Mr. Flaherty’s biography can be found here.
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