Federal Circuit Summaries

Before Dyk, Moore, and Stoll. Appeal from the Trademark Trial and Appeal Board.

Summary: The bar in § 2(a) of the Lanham Act against registering immoral or scandalous trademarks is an unconstitutional restriction of free speech under the First Amendment. This follows six months after the Supreme Court held in Matal v. Tam, 137 S. Ct. 1744 (2017), that the bar against registering disparaging trademarks also violates the First Amendment.

Brunetti sought to register the mark “FUCT.” The examiner refused the mark, finding it comprises immoral or scandalous matter under § 2(a) of the Lanham Act as the phonetic equivalent of “fucked.” The Board affirmed. Brunetti appealed to the Federal Circuit.

The Federal Circuit held that § 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional content-based restriction of free speech. The court rejected the government’s argument that § 2(a) is a reasonable exercise of government spending power as a government subsidy program. Trademark registration does not implicate Congress’ power to spend funds because trademark registration fees are paid by trademark applicants (not taxpayers). The court also rejected the government’s argument that trademark registration is a limited public forum. The government did not articulate why listing registered marks in a database creates a limited public forum. If it did, then every government registration program (such as titles to land and registration of cars) could similarly implicate a limited public forum.

The government also argued that trademarks are commercial speech subject to an intermediate level of scrutiny. The court determined that the immoral or scandalous provision of § 2(a) regulates a mark’s expressive message, which is distinct from the commercial purpose of a mark as a source identifier, and is subject to strict scrutiny. The government did not assert that the immoral or scandalous provision survives strict scrutiny. In any event, the court held that the immoral or scandalous provision would not survive the intermediate scrutiny applied to commercial speech.

In a separate opinion, Judge Dyk argued that § 2(a) could be construed to prohibit the registration only of obscene marks. Because obscene material is not entitled to First Amendment protection, § 2(a), if narrowly construed in this manner, would survive First Amendment scrutiny.

This case is: IN RE: ERIK BRUNETTI