Fed Circuit Watch: Lanham Act Section 2(a) Scandalousness Clause Deemed Unconstitutional

On December 15, 2017, the United States Court of Appeals for the Federal Circuit handed down its decision in In re Brunetti.[1]  In Brunetti, the Federal Circuit panel, consisting of Judges Moore, Stoll, and Dyk, held that although the FUCT trademark contained immoral or scandalous matter, it remained federally registrable as a trademark because of the Lanham Act’s Section 2(a)’s bar on such immoral and scandalous marks[2] was an impermissible restriction on the constitutional free speech rights under the First Amendment.  This decision was unsurprising given the recent Matal v. Tam[3] decision recently decided by the U.S. Supreme Court which struck down the disparagement clause[4] of the same Section 2(a).

The facts of the case are as follows.  Erik Brunetti has owned and operated a clothing brand called “Fuct” since 1990.  The word “fuct” is a colloquial, past-tense version of of the vulgar word “fuck.”  Brunetti filed a trademark application for FUCT, but the Examining Attorney refused registration under 2(a), and upon appeal, the Trademark Trial and Appeal Board affirmed the refusal.  Brunetti then appealed to the Federal Circuit.

In the majority opinion by Judge Moore, the Federal Circuit, indeed, found that “fuct” was a vulgar word.  In fact the opinion spends a fair amount of time discussing the phonetics of “fuct” and analyzing the vulgarity of the FUCT mark with its associated goods.  Here, the Fuct shirts were sold with various “negative sexual connotations,”[5] including a T-shirt depicting a group sex scene with the caption “Fuct Orgy,” or another with FUCT above the slogan “1970 smokin dope & fucking in the streets.”[6]

Notwithstanding, while FUCT remains a vulgar term, barring its registration would be a constitutional restraint on content-based speech in violation of the First Amendment.[7]  The Federal Circuit determined that Section 2(a)’s scandalousness clause “target[ed] a mark’s expressive message, which is separate and distinct from the commercial purpose of a mark as a source identifier.[8]  This would be different with other clauses, like Section 2(e) which bars merely descriptive[9] or geographically descriptive[10] marks, that target the commercial aspects of the mark itself, and not its messaging.

Judge Dyk concurred in the overall decision, but made an interesting observation that obscenity is an exception to the First Amendment protection.[11]  Dyk suggested limiting the scandalousness clause’s scope to obscene matter which would presumably allow refusal of the FUCT mark.  However, Judge Moore responded that only Congress could rewrite the Lanham Act to make such a limitation to Section 2(a).[12]

The decision appears to be in line with what the USPTO had been expecting, given its concession in its brief leading up to the Federal Circuit’s decision, that the “breadth of the [Supreme] Court’s Tam decision and in view of the totality of the Court’s reasoning, there was no reasonable basis for treating immoral or scandalous marks differently than disparaging marks.”[13]  As a matter of fact, the USPTO, which had held all pending trademark applications with disparaging and scandalous marks in suspension until the Tam and Brunetti cases were decided, will probably lift the suspension that begin continuing examinations of these applications, with many being registered onto the Principal Register.

[1] ___F. 3d___ (Fed. Cir. 2017) (Dec. 15, 2017) (No. 2015-1109), rev’d, 2014 WL 3976439 (TTAB Aug. 1, 2014) (non-precedential opinion).

[2] TMEP §1203.01.

[3] 137 S. Ct. 1744 (2017).

[4] See TMEP §1203.03(b).

[5] Brunetti, supra (slip op. at 6-7).

[6] Id. (slip op. at 7).

[7] Id. (slip op. at 13).

[8] Id. (slip op. at 27).

[9] See TMEP 1209.01(b).

[10] See TMEP 1210.01.

[11] Brunetti, supra (slip op. (Dyk, J., concur) at 2).

[12] Id. (slip op. at 41).

[13] Id. (slip op. at 11).

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The Slants’ Saga Ends: USPTO Registers Service Mark

On November 14, 2017, six years to the day after the application was first filed with the USPTO which precipitated the landmark U.S. Supreme Court ruling in Matal v. Tam[1] striking down the disparagement clause of Section 2(a) of the Lanham Act, the USPTO has registered THE SLANTS service mark in International Class 41 for entertainment services.  So ends the tale of one Asian-American band trying to register a federally-protected mark for its band’s work, and the dismantling of one of the more controversial provisions of the Lanham Act when it was first enacted in 1946.  Our previous blog post discussed the Tam ruling.

[1] 582 U.S.___ (2017).

USPTO Issues Exam Guidelines Consistent with Tam Decision

On June 26, 2017, the United States Patent and Trademark Office issued an updated Examination Guideline 01-17, consistent with the recent Matal v. Tam, 582 U.S.___ (2017), ruling by the United States Supreme Court, and for which our analysis was the subject of a previous post.  In that decision, the Supreme Court held that the disparagement clause of §2(a) of the Lanham Act violates the First Amendment of the U.S. Constitution by prohibiting registration of trademarks that may disparage persons, institutions, beliefs, or national symbols.

Going forward, the Trademark Examiners will not refuse trademark registration based on this provision of §2(a).  Any currently suspended application will proceed to examination under other aspects of the TMEP.  An application which was abandoned due to a §2(a) refusal, but is within the timeframe for filing a petition to revive, may be revived through such mechanism.  See TMEP 1714.01.  However, the subject matter of an abandoned application with is beyond the timeframe for filing a petition to revive can only be re-examined through the filing of a new application.

A caveat to the Guideline is that constitutionality of the companion clause to disparagement, the scandalousness clause, is still awaiting decision before the Court of Appeals for the Federal Circuit with the In re Brunetti case.  Any suspended application will remain suspended until Brunetti is decided.  It is expected that the scandalousness clause, like the disparagement clause, will be struck down.

SCOTUS Watch: Lanham Act’s §2(a) Disparagement Clause Struck Down

By Brent T. Yonehara

On June 19, 2017, the U.S. Supreme Court finally, and somewhat as expected, handed down its ruling in Matal v. Tam (formerly Lee v. Tam).[1]  By a unanimous vote, the Supreme Court struck down the Lanham Act’s §2(a) prohibition on registration of disparaging trademarks as a violation of the First Amendment’s Free Speech Clause.

The Lanham Act’s §2(a) reads, in full:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it –

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.[2]

(emphasis added.)

The purpose of the disparagement clause of §2(a) is to bar registration, on either the Principal or Supplemental Register, of a mark that may show a particular person, institution, belief, or national symbol to disparagement, false connection, contempt, or disrepute.[3]

In writing for the Court, Justice Samuel Alito began the opinion by stating that [§2(a)] “offends a bedrock First Amendment principle: [s]peech may not be banned on the ground that it expresses ideas that offend.”[4]  He noted that in rejecting Tam’s trademark application for THE SLANTS, the Examining Attorney specifically cited dictionary definitions of “slant” and “slant eyes” as a derogatory or offensive term against Asian-Americans.[5]  However, the mark was not being used as a statement against Asian-Americans.  Rather, when the band, The Slants, filed its trademark application for THE SLANTS, the band’s lead singer (and plaintiff in the original action), Simon Tam, sought to “reclaim” its derogatory nature and use the term as a source of empowerment for Asian-Americans.  Indeed, several of the band’s songs sought to address the offensive slurs and statement made against Asian-Americans.[6]

Justice Alito swept away the USPTO’s arguments that trademarks were not subject to First Amendment protection or subject to rational basis review.  Specifically, the USPTO raised the arguments that trademarks are government speech and not private speech, that trademarks are a form of government subsidy, and that trademarks were a government program.

First, Alito disputed the contention that trademarks are government speech because an Examining Atttorney does not have latitude to reject a trademark application merely based on the viewpoint expressed by the trademark.  Further, the Examining Attorney does not inquire in any office action about conformity to Government policy or another registered mark’s viewpoint.  And, finally, the USPTO cannot merely remove a registered mark from the Principal Register, unless through another’s petition for cancellation, expiration of the mark (i.e., for failure to renew or file the appropriate post-registration documents), or through FTC proceedings.[7]  Alito concluded forcefully that “trademarks are private, not government, speech.”[8]

Second, Alito rejected the notion that trademarks are a government subsidy.  Citing a litany of cases where the government paid a cash grant or subsidy to private citizens, Alito noted that the USPTO does not pay private parties to register a trademark.  Rather, it is the exact opposite.[9]

Third, Alito rejected the USPTO’s contention that §2(a)’s disparagement clause was a protected doctrine for government programs.  In what seemed a far-fetched argument by the USPTO, Alito pointedly noted that trademark registration has nothing to do with these line of government program-type of cases, which focused on the Government conferring some benefit to a private party to further some activity the Government was promoting.  These cases, Alito demurred, had no relevance to the current case of trademarks.[10]

All of this amounts in the Court’s opinion to viewpoint discrimination on the part of the Government against a private citizen related to freedom of speech when it comes to registering a trademark.[11]  “Giving offense is a viewpoint,” noted Alito.[12]  §2(a)’s disparagement clause discriminates against speech on the basis of a viewpoint.  Although even-handed in its viewpoint discrimination, the disparagement clause prohibits “public expression of ideas . . . merely because the ideas themselves [are] offensive to some of the hearers.”[13]

The Court further noted the vagueness of determining disparagement while undergoing prosecution before the USPTO, and that there currently exists an unequal level of enforcement of the statute against allegedly disparaging marks, citing the high number of registered marks on the Principal Register that §2(a)’s disparagement clause would likely disparage a racial or ethnic group.[14]  Alito further asserted that §2(a)’s disparagement clause was too broadly drafted and not narrowly tailored to serve the interest of preventing trademarks that supported invidious discrimination against one particular person, ethnicity or racial group.[15]

The case is far-reaching, and perhaps the most immediate beneficiary of the Tam case is the Washington Redskins, who were embroiled in their own trademark cancellation proceeding before the USPTO when a group of Native Americans challenged six trademark registrations for WASHINGTON REDSKINS under §2(a)’s disparagement clause, and which the Federal appellate action is stayed pending the outcome of the Tam case.[16]  (We discussed this case in an earlier post on this blog, here).  Other parts of §2(a), including the prohibition on registration of immoral or scandalous marks, could be ripe for judicial review, and could be struck down in similar fashion as the disparagement clause.  Indeed, in a letter from the USPTO to the Court of Appeals for the Federal Circuit, the Director requested that the In re Brunetti case be remanded back to the USPTO because, in light of the Tam decision before the Federal Circuit in 2015, the USPTO did not believe that “Section 2(a)’s prohibition on registration of scandalous and immoral marks can withstand challenge under the current law.”[17]

It will be a while until the USPTO revises the TMEP and releases an Examination Guideline consistent with the Tam ruling.  It is curious that §2(a) was drafted with the Lanham Act’s enactment in 1947,[18] and it took seventy years for one of its provisions to be struck down as unconstitutional.  Notwithstanding, without a doubt, more trademark applications will be filed containing objectionable or arguably offensive material.

[1] 582 U.S.___ (2017).

[2] 15 U.S.C. 1052(a).

[3] See TMEP 1203.03, Matter That May Disparage, Falsely Suggest a Connection, or Bring Contempt or Disrepute (Apr. 2017).

[4] 582 U.S. at ___, supra (slip op. at 1-2).

[5] Id. (slip op. at 7).

[6] Id.

[7] Id. (slip op. at 14).

[8] Id. (slip op. at 18).

[9] Id. (slip op. at 18-19).

[10] Id. (slip op. at 21-22).

[11] Id. (slip op. at 7).

[12] Id. (slip op. at 22).

[13] Id. (slip op. at 23) (citing Texas v. Johnson, 491 U.S. 397, 414 (1989); Hustler Magazine Inc. v. Falwell, 485 U.S. 46, 55-56 (1988); Tinker v. Des Moines Independent Community School Dist., 393 U.S. 503, 509-514 (1969)).

[14] Id. (slip op. at 11-12).  Although, it is interesting Justice Alito does not produce a single registered trademark or service mark that he would consider to be a disparaging mark; he does, however, cite the Washington Redskin’s parent company’s amicus curiae brief as authority for this statement.  See id. (slip op. at 12, fn. 6).

[15] Id. (slip op. at 25).

[16] See Pro-Football, Inc. v. Blackhorse, 112 F.Supp.3d 439 (E.D.Va. 2015).

[17] See Letter of January 21, 2016, to Clerk of Federal Circuit Court of Appeals, from Director, USPTO.

[18] See, e.g., Theodore H. Davis, Jr., Registration of Scandalous, Immoral, and Disparaging Matter Under Section 2(a) of the Lanham Act: Can One Man’s Vulgarity Be Another’s Registered Trademark?, 54 Ohio State L.J. 331-401 (1993).