Imagine That IP Law Blog

Many consumers and companies are familiar in some form or another, but until a recent Federal Circuit ruling, companies and individuals looking to pursue tongue-in-cheek or risqué marks faced an uphill battle in obtaining federal trademark registrations. On December 15, 2017, the Federal Circuit ruled in In re Brunetti¹ that the bar on registering immoral or scandalous trademarks under the Lanham Trademark Act, Section 2(a), 15 U.S.C. § 1052(a), “is an unconstitutional restriction of free speech.”

Appellant, Erik Brunetti, founded the clothing brand “fuct” in 1990, featuring graphic design-heavy shirts emblazoned with “mature content.” In 2011, Brunetti attempted to register the mark “FUCT” at the United States Patent and Trademark Office (“USPTO”). The USPTO examiner and Trademark Trial and Appeal Board (TTAB) denied Brunetti registration, declaring his mark to be vulgar and therefore in violation of 15 U.S.C. § 1052(a) (“2(a)”). Under Section 2(a), trademarks may be refused registration because the mark “consists of or comprises immoral, deceptive, or scandalous matter.”² Subsequently, Brunetti appealed to the Federal Circuit arguing the Board erred by finding the mark vulgar and unregisterable under 2(a), and alternatively, 2(a) unconstitutionally limited free speech.

Is “FUCT” a “scandalous” mark?

The USPTO determines a mark is “immoral” or “scandalous” under 2(a) if a “substantial composite of the general public” would find the mark “shocking to the sense of truth, decency, or propriety trademarks” Additionally, vulgar marks—namely marks “lacking in taste, indelicate, and morally crude”—qualify as scandalous. Over the years, the USPTO has liberally rejected various marks as immoral or scandalous. However, until Brunetti, no party had successfully challenged such a finding on appeal.

To determine whether Brunetti’s mark “FUCT” was scandalous, the Federal Circuit referenced dictionary terms and the use of the mark in the marketplace. The mark’s phonetic pronunciation, Urban Dictionary’s definition of the mark, and “sexual imagery” used on “fuct” brand t-shirts made it glaringly obvious to the court, and most likely any potential consumer, that the mark had a vulgar connotation.

Is the immoral and scandalous provision of Section 2(a) unconstitutional?

In the June 19, 2017, Matal v. Tam³ decision, the Supreme Court affirmed the Federal Circuit’s determination that the disparagement provision of 2(a), which prohibited the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead,”⁴ was unconstitutional. Finding the disparagement provision unconstitutional, the Supreme Court concluded that the clause “discriminated based on viewpoint” and “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expressed ideas that offend.”

Unlike in the Tam case, which found the disparaging provision to impermissibly discriminate based on viewpoint, the Federal Circuit in Brunetti found the immoral and scandalous provision to impermissibly discriminate based on content. A content-based statute—which is presumptively invalid—arises when the law restricts particular speech “because of the topic discussed or the idea or message expressed.” These types of statutes are only permissible when the government proves the restriction “furthers a compelling interest and is narrowly tailored to achieve that interest.”

The USPTO presented an extensive variety of government interests in an attempt to justify the immoral and scandalous prohibition— arguing at one point “its interest is to shield its examiners from immoral or scandalous marks” and from being “forced to decide whether one drawing of genitalia is confusingly similar to another drawing of genitalia.” However, the court found the government not only failed to ascertain an interest requiring an expressive restriction, but also failed to prove that the regulation advanced those interests.

Additionally, the Federal Circuit found that the USPTO’s inconsistent application of the immoral or scandalous provision provided insurmountable evidence that the regulation is more extensive than necessary to serve the asserted interests. Identical or nearly identical marks were both accepted and rejected by different examiners. For instance, the court referenced forty marks containing the same acronym, where twenty of the applications received an office action refusing registration based on Section 2(a), while the other twenty did not. These discrepancies and inaccuracies highlighted the provision’s vagueness and subjective nature.

Although the court noted it is “not eager to see a proliferation of [scandalous] marks in the marketplace,” the government failed to offer any substantial interests justifying a restriction on expressive content. Therefore, the Federal Circuit found the “immoral or scandalous” provision was an unconstitutional restriction on coveted free speech protected by the First Amendment. With this decision, the United States Trademark Office will have to consider a variety of potential marks that would previously have been statutorily barred.

[1] In re Brunetti, No. 2015-1109, 2017 U.S. App. Lexis 25336 (Fed. Cir. Dec. 15, 2017).

[2] 15 U.S.C. § 1052(a) (2012).

[3] Matal v. Tam, 137 S. Ct. 1744 (2017).

[4] § 1052(a).