The Court of Appeals for the Federal Circuit recently extended First Amendment protections for trademark applications in In re Brunetti, No. 15-1109 (Fed. Cir. December 15, 2017), ruling that Section 2(a) of the Lanham Act’s prohibition against registration of “immoral and scandalous” matter violated free speech protections. This ruling comes as no surprise, in light of the rulings in Matal v. Tam, 582 U.S. ___ (2017) (blogged here) and In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (blogged here).

The Background Facts

Erik Brunetti owned two applications, filed in 2011, for the trademark FUCT for athletic apparel. The United States Patent and Trademark Office, Trademark Examining Attorney refused to register the mark under § 2(a) of the Lanham Act, finding it comprised immoral or scandalous matter. The Examining Attorney reasoned that FUCT is the phonetic past tense of a vulgar word, and is therefore scandalous. Brunetti appealed to the Trademark Trial and Appeal Board, which affirmed the findings of the Examining Attorney.

Brunetti appealed to the Federal Circuit on the heels of the closely watched Tam case. Brunetti’s case was eventually reviewed by a panel comprised of Judges Kimberly Moore, Kara Stoll, and Timothy Dyk. Judge Moore was the author of the Federal Circuit’s Tam opinion.

The Federal Circuit’s Reasoning in Brunetti

Lanham Act Section 2(a) provides, in pertinent part that a mark may be refused if it “consists or comprises immoral … or scandalous matter.” Brunetti argued that the Board found that the mark FUCT was vulgar, but that “vulgar” is not the same as “immoral” or “scandalous,” and that therefore, denial of registration was error. The Federal Circuit was not persuaded and concluded that substantial evidence supported the Board’s finding that FUCT was vulgar and therefore scandalous.

However, returning to the constitutional argument, the Federal Circuit had no trouble finding that the “immoral and scandalous” provision of Section 2(a) – like the “disparaging” provision in the Tam case – unlawfully restricted speech.

The Court reasoned that the government restricts speech based on content when “a law applies to particular speech because of the topic discussed or the idea or message expressed.” To survive, such statutes must withstand strict scrutiny review, which requires the government to “prove that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest.”

The USPTO presented the same arguments in Brunetti as it did in Tam. First, it argued that trademark registration is either a government subsidy or a limited public forum. Later, it argued that trademark registration is “commercial speech,” which is afforded less constitutional protection than non-commercial speech. Predictably, the Court was no more persuaded by these arguments the second time around, especially in light of the Supreme Court’s decision in Tam.

Thus, the Court explained that the Supreme Court held that the disparagement provision of Section 2(a) was facially unconstitutional because it violates the free speech clause of the First Amendment. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The USPTO argued that Tam did not resolve the constitutionality issue in Brunetti because the disparagement provision implicated viewpoint discrimination, whereas the immoral and scandalous provision is viewpoint neutral. The Court rejected that distinction, focusing instead on the fact that the immoral and scandalous provision “impermissibly discriminates based on content in violation of the First Amendment.” The government does not have a substantial interest in protecting the public from profane and scandalous marks. Further, the inconsistent application of the provision demonstrated that it was not carefully tailored to serve the government’s stated interests.

Concurring, Judge Dyk noted the Court’s obligation to construe statutes narrowly to preserve their constitutionality, when possible. He therefore proposed a saving construction to narrow the scope of the provision to prevent the registration of “obscene” marks to preserve the provision’s constitutionality. The First Amendment does not protect obscene speech.

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The outcome of this case was expected. What remains to be seen is whether there will be an explosion of scandalous new trademark applications at the USPTO.