IP Law Daily High Court weighs constitutionality of ban on federal registration of immoral and scandalous trademarks
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Monday, April 15, 2019

High Court weighs constitutionality of ban on federal registration of immoral and scandalous trademarks

By Cheryl Beise, J.D.

In oral arguments, Justices seek to distinguish registration ban on immoral and scandalous marks from the viewpoint discriminatory ban on racial slurs struck down in 2017 by the Court in Matal v. Tam.

The U.S. Supreme Court today heard oral arguments in Iancu v. Brunetti, a case involving the constitutionality of Lanham Act Section 2(a)’s prohibition against federal registration of trademarks that contain "scandalous" or "immoral" subject matter. Malcom L. Stewart, Deputy Solicitor General, U.S. Department of Justice, appeared on behalf of the USPTO; John R. Sommer argued on behalf of the respondent, trademark applicant Erik Brunetti. By their questions, several Justices appeared to be considering the government’s suggestion of narrowly construing the ban to apply to a limited class of marks that contain only profane or obscene matter.

At issue is a decision by the U.S. Court of Appeals for the Federal Circuit, holding that the immoral/scandalous prohibition of Section 2(a) was facially invalid as an unconstitutional abridgement of free expression, and reversing the USPTO’s refusal to register the mark "FUCT" for street clothing. The Trademark Trial and Appeal Board had affirmed a trademark examining attorney’s rejection of Brunetti’s application to register the mark FUCT under Section 2(a) on the ground that the mark was the phonetic equivalent of the vulgar term "fucked" and therefore ran afoul of Section 2(a). Section 2(a) states, in relevant part, that a trademark shall be refused registration if it "[c]onsists of or comprises immoral ... or scandalous matter." The question presented by the USPTO’s petition is "Whether Section 1052(a)’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the Free Speech Clause of the First Amendment."

In June 2017, the Supreme Court unanimously struck down Section 2(a)’s proscription on registering "disparaging" marks, in the case of Matal v. Tam, 137 S. Ct. 1744. In Tam, the High Court unanimously held that Section 2(a)’s prohibition against registering marks that "may disparage" persons, institutions, beliefs, or national symbols facially violated the First Amendment’s Free Speech Clause because it amounted to viewpoint-based discrimination. The Court also held that trademarks are private, not government, speech and that the federal trademark registration regime was neither government-subsidized speech, nor subject to regulation under the "government-program" doctrine. The Court expressly limited its holding in Tam to the provision banning registration of disparaging marks, leaving open the question of whether the ban on immoral or scandalous matter is constitutional.

Government’s argument. Malcom Stewart opened by arguing that the provision banning the registration of scandalous trademarks was not a restriction on speech but a valid condition on participation in a federal program. Justice Sotomayor interrupted to ask how the government defines the term "scandalous mark." Stewart referred to synonyms sometimes used by the USPTO, such as "shocking," "disgraceful," "offensive," and "disreputable." "Well, if you use all those adjectives, you run head-on to Tam," Justice Sotomayor said. Stewart replied that in response to Tam—and to avoid viewpoint discrimination—the agency is focusing more on matter that is "offensive" and "shocking," based on the mode of expression, rather than on the idea behind the expression.

Justice Ginsburg asked how the judgment of "a substantial composition of the general public" is determined. One way or another, the judgment is always subjective, she noted. Justice Kagan observed that the statutory words are very broad and that Congress could use terms that are narrower, focusing on vulgarity or profanity. Stewart urged the Court to adopt a narrow construction that would render the provision constitutional.

Chief Justice Roberts turned to the facial nature of the challenge. "So if this is—the entire provision is struck down, the government would not be able to restrict trademarks that are obscene?" he asked. Stewart conceded the point. In response to prodding by Justice Kagan, Stewart said he was asking the Court to narrow the application of the statutory prohibition to "marks that are offensive, shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express."

Justice Alito asked Stewart to define Congress’s interests. Stewart emphasized the interest in protecting unwilling viewers from material that they find offensive, prompting Justice Sotomayor to ask, "Why are you resisting Justice Alito? Why can't the government's interest in not being associated with sexually explicit activity or words be enough?" Stewart appeared to stumble in distinguishing offensive trademarks (as universal source identifiers to the consuming public) from other types of offensive expression (subject to consumer selection). Justice Sotomayor pointed out that focusing on protecting the public falls prey to "moving with public morals," which can and do change, "rather than with freedom of speech."

Justice Kavanaugh pressed Stewart on the issue of how to deal with the problem of erratic or inconsistent enforcement, noting that the government has both allowed and disallowed marks with offensive or scandalous words that are very similar. He asked how the public is supposed to know the difference. Stewart responded that the USPTO looks to context and other factors, such as use in commerce.

Justice Sotomayor asked why the government doesn’t consider trademark registration as a type of limited public forum. Stewart said that the federal trademark register is to give notice to potential infringers, or business competitors, rather than members of the public.

Respondent’s argument. John Sommerbegan with two observations—first, the government does not defend the plain language of the statute and second, there is no consensus among a substantial number of Americans regarding what is immoral.

Sommer argued that Brunetti’s use of FUCT was viewpoint expression—namely, "I can be offensive, I don’t have to obey the authority." Some of the Justices did not seem persuaded. Justice Alito said that Tam involved viewpoint discrimination based on the idea conveyed, but suggested that Brunetti’s mark did not convey a particular message. "So why can't the government, just like with a patent, say, we will give you this benefit to these things but not to others?" Justice Sotomayor asked. "And we don't want profane words, no matter how you use them."

Sommer believes that a statute that prohibits obscenity would be constitutional. But if the government were to prohibit specific words, he believes it would be unconstitutional, including the actual vulgar term evoked by the FUCT mark. Justice Breyer, however, noted that there are a few words—perhaps six or seven, including the one implicated in this case—that have been scientifically proven to have a universal detrimental physiological effect on the brain. He indicated that an argument could be made for banning the registration of such words.

Justice Kavanaugh asked Sommer how he would define obscenity. Sommer in essence argued that the provision was vague and overbroad, leading to inconsistent application. Justice Kavanaugh also asked Sommer how he would distinguish this case from regulation of the content of a public bus ad. Sommer said the bus ad takes place in a public forum, whereas trademark registration is not a forum at all. Chief Justice Roberts pointed out that registration facilitates use of a mark in commerce, potentially increasing public exposure.

Justice Breyer asked Sommer to define the First Amendment interest, given that nothing prevents an unregistered mark from being used in commerce. Sommer responded that some marks, such as FUCT, express viewpoint and that the statute is an unconstitutional content regulation.

Government’s rebuttal argument. Stewart noted that in response to Tam, the USPTO is now allowing registrations for marks that contain racial slurs, except for marks that contain the "n" word, waiting for a ruling in this case regarding whether "scandalous" marks can be registered. Stewart distinguished a case relied on by the respondent, where the Court held that a jacket with the phrase "Fuck the Draft" on the back constituted protected speech. Cohen v. California, 403 U.S. 15 (1971). In Cohen, the law at issue was invalid because it prohibited use of a word in a public space, Stewart said. He also noted that content-based restrictions are ubiquitous in the trademark registration program, such as generic marks, merely descriptive marks, or confusingly similar marks. The government simply want the same ability to deny registration of profane marks, not because of the message, but because of the profanity. Congress has the right to "disincentivize the use of trademarks that substantial numbers of people would find offensive and to disassociate the government from those trademarks," Stewart said.

The case is Dkt. No. 18-302.

Attorneys: John R. Sommer, John R. Sommer, Attorney-at-Law, for Erik Brunetti. Malcom L. Stewart, Deputy Solicitor General, U.S. Department of Justice, for Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office.

MainStory: TopStory Trademark

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