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The Judiciary, on First Amendment Grounds, Invalidates Yet Another Barrier to Trademark Registration

Trademark Law Alert Jonathan Hudis

In relevant part, Lanham Act Section 2(a), 15 U.S.C. § 1052(a) (“Section 2(a)”), provides that:

"No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it — (a) Consists of or comprises immoral … or scandalous matter; or matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute …. "

(Emphasis Added)

As we previously reported here, on June 19, 2017, the U.S. Supreme Court in Matal v. Tam, 137 S. Ct. 1744 (2017), held that the disparagement clause of Section 2(a) violates the Free Speech Clause of the First Amendment of the Constitution on the grounds that it is viewpoint discriminatory. Six months later, on December 15, 2017, in In re Brunetti, ___ F.3d ___, 2017 U.S. App. LEXIS 25336 (Fed. Cir. 2017), a three-judge panel of the U.S. Court of Appeals for the Federal Circuit now holds that Section 2(a)’s bar on registering immoral or scandalous marks also is an unconstitutional restriction on free speech.

Background

In 2011, Christopher Maclachlan and David Gollup applied to register with the U.S. Patent and Trademark Office (“USPTO”) the mark FUCT in connection with various clothing items. The mark and application were assigned to Erik Brunetti in 2012. The USPTO Examining Attorney (“Examiner”) refused registration of the mark on the grounds that the mark comprised a vulgar term and therefore was scandalous and ineligible for registration under Section 2(a). In 2013, Brunetti appealed the Examiner’s refusal to register the mark to the Trademark Trial and Appeal Board (“TTAB”), which affirmed the refusal. Brunetti, in turn, continued his appeal to the U.S. Court of Appeals for the Federal Circuit.

The majority of the Federal Circuit panel agreed with the TTAB that the mark FUCT was vulgar, scandalous under Section 2(a), and thus not registrable pursuant to the prohibitions of that statute. In re Brunetti, ___ F.3d ___, slip op. at pp. 6-9. However, the panel majority also determined that the Section 2(a)’s bar on registering immoral or scandalous marks was an unconstitutional impingement on free speech under the First Amendment of the Constitution. Id., ___ F.3d ___, slip op. at p. 13.

Content Discrimination vs. Viewpoint Discrimination

Before turning to the immoral/scandalous restriction on registration of Section 2(a), the In re Brunetti majority first reviewed its Court’s en banc decision in In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) as well as the Supreme Court’s affirmance in Matal v. Tam. While the Federal Circuit, in In re Tam, found the disparagement restriction on registration of Section 2(a) to be content and viewpoint discriminatory, the two opinions authored by Justices Alito and Kennedy in Matal v. Tam found the disparagement restriction to be viewpoint discriminatory. In re Brunetti, ___ F.3d ___, slip op. at pp. 10-12.

On the other hand, said the Brunetti majority, the immoral/scandalous restriction on registration of Section 2(a), independent of whether it is viewpoint discriminatory, impermissibly discriminates based on content in violation of the First Amendment. In re Brunetti, ___ F.3d ___, slip op. at pp. 13-14. The Federal Circuit then continues its opinion by holding that the immoral/scandalous clause of Section 2(a), as part of the overall registration scheme, is not a government subsidy program exempt from First Amendment scrutiny, Id., ___ F.3d ___, slip op. at pp. 14-20, nor is it a government program providing a limited forum for private speech permitting some limitations on the speaker, Id., ___ F.3d ___, slip op. at pp. 20-26.

Rather, said the majority, Section 2(a)’s immoral/scandalous restriction targets the expressive content (versus the source-identifying commercial message) of speech, thus subjecting this restriction to strict scrutiny. Id., ___ F.3d ___, slip op. at pp. 26-28. Further, the immoral/scandalous restriction cannot survive strict scrutiny review, because the restriction is not narrowly tailored to promote a compelling governmental interest. Id., ___ F.3d ___, slip op. at pp. 13-14. Moreover, the restriction cannot survive even an intermediate scrutiny review, because it does not directly advance a substantial governmental interest nor was it drawn to achieve that interest. Id., ___ F.3d ___, slip op. at pp. 28-38. Finally, according to the majority, there is no reasonable definition of the terms scandalous or immoral that would preserve their constitutionality under the First Amendment. Id., ___ F.3d ___, slip op. at pp. 38-41.

Federal Circuit Judge Dyk, concurring in the Court’s judgment, would save Section 2(a)’s immoral/scandalous restriction from Constitutional infirmity by limiting its reach to preclude registration only of marks that are thought of as obscene. Id., ___ F.3d ___, concurring op. at pp. 2-6. The majority opinion answers Judge Dyk’s suggestion by noting that to do so would be a rewriting of the statute, which only Congress can do. Id., ___ F.3d ___, slip op. at p. 39.

What is the Future of Potentially Offending Marks?

If the Government decides to request rehearing en banc or appeal to the Supreme Court, the story of Section 2(a)’s immoral/scandalous restriction on registration may not yet be fully written. For the moment, Congress’ efforts to curb the registration of marks that could be considered offensive (disparaging, immoral, scandalous or any synonym(s) of the foregoing) are constitutionally impermissible. Does this mean that the U.S. trademark register eventually will become littered with offensive speech? Maybe, or maybe not. Trademark applicants must spend filing fees (and in most cases attorney fees) to register, maintain and renew trademark registrations. In the end, a marketplace that rejects the use of offensive language to identify a merchant’s products or services will make the maintenance of offending marks not worth the cost.

Jonathan Hudis is a partner in the Intellectual Property Practice Group of Quarles & Brady LLP, in its Washington, D.C. office. For questions, please contact him at [email protected] / (202) 372-9528.