Not So Shockingly, Trademark Immoral and Scandalous Clause Struck Down

The court in a recent case, In Re: Erik Brunetti, put another nail in the coffin of the Lanham Act's Section 2(a), finding that the "immoral" and "scandalous" clause of the statute is unconstitutional under the First Amendment. Earlier this year in another case interpreting a clause in the same statute, the Supreme Court in Matal v. Tam affirmed the Federal Circuit's reasoning that struck down Section 2(a)'s "disparagement" clause because it represented an unconstitutional chill on free speech by discriminating on the basis of a trademark applicant's message. That case dealt with an Asian-American rock group's registration of its moniker, the Slants.

The FUCT Brand and Trademark Registration Refusal

Erik Brunetti, a Los Angeles artist and designer of clothing marketed under the brand FUCT, which has been described as having a "West Coast meets skate style aesthetic." Brunetti's trademark registration application for the brand name was refused by the USPTO based on Section 2(a) of the Lanham Act, which allows examiners to refuse registration of a trademark if it "consists of or comprises immoral, deceptive, or scandalous matter...". The Trademark Trial and Appeal Board ("TTAB") affirmed the refusal, thus setting up an appeal to the Federal Circuit.

Brunetti's Argument, and What Makes a Mark "Scandalous"

Brunetti argued that his mark was neither immoral nor scandalous, and that even if it was, the Section 2(a) clause is unconstitutional under the First Amendment. However, the Federal Circuit did not agree entirely with this argument. The three-judge panel held that substantial evidence supported the TTAB's conclusion that the mark comprises immoral or scandalous matter. The court first determined that “the PTO may prove scandalousness by establishing that a mark is ‘vulgar,'” and that vulgar marks are “lacking in taste, indelicate, [and] morally crude . . . .” A scandalousness determination is made “in the context of contemporary attitudes” and “in the context of the marketplace as applied to only the goods described in the application.”

The court agreed with the TTAB's conclusion that the word “fuck,” and by extension its derivative "fuct," are indisputably vulgar, based on the fact that "dictionaries in the record characterize the word "fuck" as “taboo,” “one of the most offensive” English words, “almost universally considered vulgar,” and an “extremely offensive expression.” The court also agreed with the TTAB's finding that the term “fuct” was used by the applicant "on products containing sexual imagery and that consumers perceive the mark as having “an unmistakable aura of negative sexual connotations.”"

Unconstitutionality of the "Immoral" and "Scandalous" Clause

The Brunetti court asked the parties for additional briefing on the constitutionality of § 2(a)’s bar on registering immoral or scandalous marks in light of the Supreme Court's Tam ruling on the constitutionality of the "disparagement" clause.  In that briefing, the government contended that Tam did not resolve the constitutionality of the immoral or scandalous bar because the disparagement provision implicates viewpoint discrimination, in contrast to the immoral or scandalous provision, which it argued is viewpoint neutral.

The court declined to address the distinction, and concluded that the provision "impermissibly discriminates based on content in violation of the First Amendment," and thus was an unconstitutional restriction of free speech. The court found that Brunetti’s mark was registrable despite its conclusion that it was immoral and scandalous.

Implications of the Holding

Trademark registration applicants who use controversial, edgy, or provocative marks will now have less hurdles to vault because examiners cannot use the immoral and scandalous or disparagement clauses as bases for refusal.

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