Immoral and Scandalous Trademarks, Oh My!
The Federal Circuit has struck down as unconstitutional the Trademark Act’s ban on registration of “immoral” or “scandalous” trademarks. See In re Brunetti, No. 15-1109. Earlier this year, the Supreme Court struck down the Act’s similar ban on registering “disparaging” trademarks. Each court held that the respective provisions at issue violated the right to free speech under the First Amendment.
In Brunetti, Appellant sought to register “FUCT” as a trademark for apparel. The USPTO refused registration under Section 2(a) of the Trademark Act, which bars registration of a trademark that “[c]onsists of or comprises immoral . . . or scandalous matter.” 15 U.S.C. § 1052(a). “Immoral” or “scandalous” trademarks are defined as “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . calling out for condemnation[; or] vulgar.” The USPTO reasoned that “fuct” is the phonetic equivalent of “fucked,” a word that even modern society deems vulgar.
As we wrote this past June, in Matal v. Tam, No. 15-1293, the Supreme Court struck down the Trademark Act’s similar bar against the registration of “disparaging” trademarks. In Tam, the USPTO refused to register the trademark ‘THE SLANTS’ as the name of an Asian-American dance-rock band on the grounds that the mark was disparaging to Asian-Americans. The Supreme Court ultimately reversed the USPTO’s determination, holding that the Trademark Act’s prohibition on disparaging trademarks “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”
Six months later, the court in Brunetti found that Section 2(a)’s ban on immoral and scandalous marks was a content-based restriction on free speech that, under the strict scrutiny standard, was not narrowly tailored to a compelling government interest. The court further held that Section 2(a) would not survive even under the more permissive intermediate scrutiny standard for commercial speech. The court also rejected the proposition that Section 2(a) did not implicate free speech concerns because, as argued by the government, trademark registrations are a government subsidy and trademark registrations are a limited public forum.
Although the court in Brunetti found that the “trademark at issue [‘FUCT’] is vulgar,” the court nonetheless recognized that the First Amendment protects “even private expression which is offensive to a substantial composite of the general public.”
While the court noted that it was not eager to see a proliferation of immoral or scandalous trademark registrations, a brief search of the USPTO’s records reveals numerous pending “scandalous or immoral” trademark applications that now may be cleared for publication, including FUCK ME (jeans), AMERICAN AS FUCK (hats), FUCK REALITY (jewelry), SHIT HAPPENS (card games) and DICKWEED (footwear).
The USPTO has not yet announced whether it will seek review of the Federal Circuit’s decision by the Supreme Court.
The court’s full opinion can be found here.