First Amendment Prevails as Final Portion of Trademark Act’s Censorship Regime Falls
by Marc J. Randazza
The U.S. Court of Appeals for the Federal Circuit just struck down the final pillar in the U.S. Trademark Act’s censorship regime.
15 U.S.C. § 1052(a) (known best as “Section 2(a)”) is a portion of the Lanham Act, the federal trademark statute, that prevents registration of certain kinds of marks. It used to bar registration of marks that “may disparage,” as well as marks that were “immoral or scandalous.” Earlier this year, the Supreme Court in Matal v. Tam, 137 S. Ct. 1744 (2017) found that the bar on registration of marks that “may disparage” violated the First Amendment. This decision got a lot of attention and caused much speculation as to whether the “immoral or scandalous” language of Section 2(a) would survive, since the two had so much in common.
In fact, the author of this Article did an in depth study of the issue in Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights. See also The USPTO Would Prefer Not to Follow the First Amendment, What’s got “The Slants” case, CUMFIESTA, Fuckingmachines, Nutsacks, and Japanese porn?, and Decision on Asian American Band’s Name is Wrong.
We no longer have to speculate as to how the courts might fuck this up — they didn’t. Section 2(a)’s unconstitutional provisions have finally fallen, absent an appeal. And, the final one fell on largely the same arguments I raised in 2006 in “The Fuck Brief.” Unfortunately, my client in that case elected to forego an appeal. However, most of the arguments made it into the Amicus Brief filed by the First Amendment Lawyers’ Association in the In Re Tam case.
Today, the Federal Circuit in In re: Brunetti, Case No. 2015-1109 (Fed. Cir. Dec. 15, 2017) found that the “immoral or scandalous” restriction on registration is unconstitutional for largely the same reasons the “may disparage” restriction was. The case started with the applicant, Brunetti, attempting to register the mark FUCT. The USPTO found this mark to be synonymous with “fuck,” making it vulgar, and thus running afoul of Section 2(a). The Federal Circuit affirmed that FUCT was immoral or scandalous, but then found that this portion of Section 2(a) was unconstitutional and thus could not prevent registration of the mark.
The Brunetti Decision
Background and Legal Issues
The Brunetti decision is heavily influenced by the Supreme Court’s Tam decision. As in Tam, there was a question as to whether the “immoral or scandalous” restriction was viewpoint-based. Such restrictions are almost always unconstitutional. The Brunetti court found that the “immoral or scandalous” restriction was likely viewpoint-based and failed to pass constitutional muster (Decision at 13.)
The Tam decision already effectively dispensed of some of the government’s potential arguments.[1] The two arguments that the Brunetti court primarily considered not at issue in Tam were (1) the federal trademark registration scheme (specifically the principal register) is a limited public forum allowing for content-based restrictions on speech, and (2) the “immoral or scandalous” portion of Section 2(a) survived the lesser level of scrutiny for restrictions on commercial speech.[2]
The Federal Register Not Found to be a Limited Public Forum
Depending on the type of public forum, the government may restrict speech on the basis of content. Traditional public forums, such as public sidewalks or parks, give the government the least leeway in restricting speech, while limited public forums, where the government only opens property for narrow uses by the public, allow for content-based restrictions.
The government argued that the principal register was similar to “metaphysical” limited public forums that courts have recognized in other cases, such as a university’s student fund or a workplace charity drive. The Brunetti court found that these forums were connected to specific government property, and thus had no relation to the principal register or the federal trademark scheme; after all, a mark by definition is used in commerce and cannot be tied to specific government property. (Decision at 24.) The principal register is merely a government database, and accepting the government’s argument on this point would mean turning every government registration program, such as copyrights and marriage licenses, into limited public forums and allowing wide-ranging content-based discrimination by the government. (Decision at 25.)
“Immoral or Scandalous” Bar Not Aimed at Commercial Aspect of Trademarks
The Brunetti court went on to reject the government’s argument that the “immoral or scandalous” prohibition of Section 2(a) was aimed at commercial speech. The primary test for determining whether a mark is “immoral or scandalous” is if the general public would find the mark “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation.” In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012). The court noted that this restriction is aimed solely at the expressive content of trademarks, rather than their commercial source-identifying function, and necessarily involves moral value judgments. (Decision at 27.) The court could have stopped after this determination, since the government agreed that the “immoral or scandalous” portion of Section 2(a) could not survive strict scrutiny, but it went on to find that the restriction could not survive even intermediate scrutiny.
The “Immoral or Scandalous” Bar Fails Even Intermediate Scrutiny
Intermediate scrutiny allows content-based restrictions on commercial speech if (1) the speech concerns lawful activity and is not misleading; (2) the asserted government interest is substantial; (3) the regulation directly advances that government interest; and (4) the restriction is not more extensive than necessary to serve that interest. See Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n, 447 U.S. 557, 566 (1980).
The court found that there was not a substantial government interest served by the “immoral or scandalous” restriction. The only interests the government articulated was “protecting public order and morality,” and shielding trademark examiners from drawings of genitalia. (Decision at 29-30.) The court pointed out that Supreme Court precedent, including Tam, establishes that the government does not have a substantial interest in protecting the sensibilities of the public or preserving people’s feelings.[3]
Even if this were a substantial interest, the prohibition on registration of “immoral or scandalous” marks failed to advance it. The court observed that the restriction does not prevent anyone from using such marks in commerce, and that “[i]n this electronic/Internet age, to the extent that the government seeks to protect the general population from scandalous material, with all due respect, it has completely failed.” (Decision at 35.)
Finally, assuming that the other elements of the Central Hudson test were met, the court found that the “immoral or scandalous” standard was so vague and open to interpretation that it was unnecessarily expansive. The court identified numerous marks that were registered in some cases and rejected in others with seemingly no consistent principles or standards. (Decision at 35-37.)
The “Immoral or Scandalous” Language Could Not Be Narrowed
After finding that the “immoral or scandalous” bar cannot survive as it currently exists, the court looked to whether a narrower interpretation of its language would make it constitutional. The concurring justices wanted narrowly to define “immoral or scandalous” as referring only to legally obscene content, but the court could not allow this because the restriction had a clear history of being applied to content that was not legally obscene or even sexual in nature, and no commonly used definition of “immoral or scandalous” is co-extensive with the legal definition of obscenity. (Decision at 39-40.)
What This Means for Trademark Owners
Finally, after years of unconstitutional action by the USPTO, there is no longer a bar on the registration of “immoral or scandalous” trademarks. Several applications for allegedly “immoral or scandalous” marks were suspended after the Federal Circuit’s decision in Tam, and the Brunetti decision should mean that these applications will now be able to proceed to registration. This does not necessarily mean they will, however. The USPTO may decide to appeal the Brunetti decision to the U.S. Supreme Court, and use that appeal as the basis for continuing to suspend these applications. It may also use such an appeal as the basis for suspending any new trademark application that an examiner determines to be “immoral or scandalous.” The government was the clear loser in the Brunetti decision, and I doubt it thinks it will fare any better on most issues with the Supreme Court. It may, however, attempt to push hard on obtaining a narrower definition of the bar on appeal that does not invalidate it outright, but instead restricts it only to legally obscene trademarks. This argument probably has the best chance of prevailing.
There is also the possibility that Congress, if it can be trusted to do anything in the current political climate, may introduce a new restriction to replace the “immoral or scandalous” bar. The Brunetti decision strongly indicates that a bar on registration of legally obscene marks would be constitutional, but Congress may attempt to impose a somewhat broader restriction. This is speculation for now, though, as there do not appear to be any rumblings from Washington about rewriting Section 2(a).
Brunetti does not necessarily create an automatic sea-change in the federal trademark registration regime. We will need to see what the USPTO does in the short term in response to the decision. If it allows previously “immoral or scandalous” marks to proceed to registration, then we should expect to see a flood of trademark applications for years’ worth of a backlog of improperly-denied registrations. If the USPTO keeps sitting on its hands, however, that rush will likely be delayed until the Supreme Court (if it takes the case) decides the issue. However, should the Supreme Court decide to take this case up, it would be hard pressed to overrule this decision and keep the very recent precedent of In Re Tam intact. I find it very unlikely that SCOTUS would be inclined to reverse precedent that it just recently established, unanimously at that.
[1] The government reiterated its argument that the federal trademark registration scheme is a government subsidy, meaning it can discriminate based on content. While only a plurality of the Tam actually reached this issue, the Brunetti court found there was no indication from the other justices that this was a close call or that the Federal Circuit’s Tam decision on these issues was in any way wrong. (Decision at 16.)
[2] The government conceded that the restriction could not survive “strict scrutiny,” the usual (and extremely difficult to satisfy) test for content-based restrictions on speech. (Decision at 14.)
[3] The government tried to analogize this case to FCC v. Pacifica Foundation, 438 U.S. 726 (1978), which found that the government could restrict an afternoon broadcast of George Carlin’s rapid-fire recitation of “shit, piss, cunt, fuck, cocksucker, motherfucker, tits” for the purpose of preserving the sensibilities of vulnerable children. The Brunetti court dispensed of this by noting that registering a trademark does not foist the mark upon the nation’s youth, or even make them any more accessible. (Decision at 34.)
