United States: Federal Circuit Bleeps Lanham Act Ban On Immoral Or Scandalous Marks

Following the Supreme Court of the United States' 2017 decision in Matal v. Tam (i.e., the Slants case) finding the proscription on the registration of disparaging trademarks under § 2(a) of the Lanham Act to be an unconstitutional restriction on free speech ( IP Update, Vol. 20, No. 6), the US Court of Appeals for the Federal Circuit took up a similar constitutionality question with respect to the bar on registration of trademarks comprised of immoral or scandalous matter under § 2(a). The Federal Circuit differed somewhat from the Supreme Court's underlying rationale in the Slants case and concluded that the Lanham Act's bar on registering immoral or scandalous marks is an unconstitutional restriction on free speech. The Federal Circuit therefore reversed the Trademark Trial and Appeal Board's (TTAB's) holding that the appellant's application for the mark FUCT as used in connection with various apparel items was unregistrable. In re: Erik Brunetti, Case No. 15-1109 (Fed. Cir., Dec. 15, 2017) (Moore, J) (Dyk, J, concurring).

Section 2(a) of the Lanham Act provides that the US Patent and Trademark Office (PTO) may refuse to register a trademark that "[c]onsists or comprises immoral, deceptive or scandalous matter." To issue a refusal of a trademark application under this provision of the Trademark Act, the PTO looks to whether a "substantial composite of the general public" would find the mark scandalous in the context of contemporary attitudes and in the context of the marketplace as applied to the goods or services listed in the trademark application. The PTO and subsequently the TTAB refused registration of Erik Brunetti's trademark application for the mark FUCT, under reasoning that the general public would find the mark to be phonetically identical to the past tense of the verb "fuck," and thus vulgar and scandalous. Brunetti appealed.

Brunetti's arguments to the Federal Circuit were multi-pronged. He argued that substantial evidence does not support the TTAB's finding that the FUCT mark is vulgar. Brunetti also argued that even if the mark was vulgar, § 2(a) makes no express prohibition on the registration of vulgar marks. In the alternative, Brunetti also challenged the constitutionality of § 2(a)'s bar on immoral or scandalous marks.

The Court quickly did away with Brunetti's first set of claims, finding that substantial evidence relating to the FUCT mark, including dictionary definitions and evidence of sexual and misogynistic imagery associated with the mark and the FUCT goods, supported the TTAB's finding that the mark was vulgar. In addition, the Federal Circuit cited prior case law holding that the PTO may prove scandalousness of a mark by establishing that the mark is vulgar. 

Turning to the constitutionality question, the court distinguished its holding from the Slants case, where the Supreme Court found the § 2(a) disparagement ban to qualify as an unconstitutional viewpoint restriction. Here, the Federal Circuit concluded that the ban on immoral or scandalous trademarks impermissibly discriminates based on content in violation of the First Amendment, and does not survive strict or intermediate scrutiny.   

The PTO conceded that § 2(a)'s ban on registering immoral or scandalous marks is a content-based restriction. It argued, however, that the ban survives strict scrutiny review because trademark registrations qualify as either a government subsidy program or a limited public forum, and thus do not implicate the First Amendment. In the alternative, the PTO argued that trademarks are commercial speech implicating only an intermediate level of scrutiny under Central Hudson. The Federal Circuit rejected each of these arguments.

On the issue of trademarks as government subsidies, the Court swiftly pointed out that its own en banc decision in the Slants case ( IP Update, Vol. 19, No. 1) rejected that argument, and held that the government's involvement in processing and issuing trademarks does not transform the registration scheme into a government subsidy or equivalent thereof—noting that the valuable benefits of a trademark registration are not analogous to Congress' grant of federal funds. The Court also rejected the PTO's claim that trademark registrations constitute a limited public forum, such that the government may restrict speech consistent with the limited purpose for which the public forum has been opened. In essence, the Court found that the PTO failed to articulate a reason why a database of registered trademarks creates a limited public forum, and warned against the dangers of implicating other databases, including DMV or marriage records, as limited public forums allowing for government speech restrictions.

Thus, the Federal Circuit determined that the PTO's rejection of trademarks under § 2(a)'s bar on immoral or scandalous marks targets expressive messages and is therefore subject to strict scrutiny, which it cannot survive. For good measure, the Court also explained that the immoral or scandalous bar is unconstitutional even if treated as regulation of commercial speech to be reviewed under the intermediate scrutiny framework of Central Hudson. After applying the four-part test applicable to commercial speech, the Court determined that all of the government's proffered interests in regulating speech via trademarks point to permitting burdens on speech that the government finds to be offensive. As such, the Court determined that the bar on immoral or scandalous marks under § 2(a) does not advance the government's asserted interests in a narrowly tailored manner.

Finally, addressing the concurrence written by Judge Dyk, which advocated for a narrow interpretation of § 2(a) as banning obscene speech, which would preserve the constitutionality of the statute, the majority of the Court noted that it cannot "stand in the shoes of the legislature and rewrite the statute," such that the words "immoral" and "scandalous" cannot be read to be limited only to trademarks of a sexual nature. Thus, while the Court lamented the potential proliferation of offensive trademarks in the marketplace, it held that the bar in § 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment, and reversed the TTAB's ruling that Brunetti's mark is unregistrable under § 2(a).  

Federal Circuit Bleeps Lanham Act Ban On Immoral Or Scandalous Marks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions