IP Law Daily USPTO asks High Court to uphold ‘viewpoint neutral’ ban on scandalous mark registration in ‘FUCT’ case
Tuesday, September 11, 2018

USPTO asks High Court to uphold ‘viewpoint neutral’ ban on scandalous mark registration in ‘FUCT’ case

By Cheryl Beise, J.D.

The USPTO has filed a petition for certiorari asking the U.S. Supreme Court to uphold the Lanham Act’s ban on federal registration of trademarks that contain "scandalous" or "immoral" matter. The government contends that the U.S. Court of Appeals for the Federal Circuit erred in facially invalidating the immoral/scandalous prohibition contained in Section 2(a) of the Lanham Act as an unconstitutional abridgement of free expression. Unlike Section 2(a)’s proscription on registering "disparaging" marks—which was struck down in 2017 by the High Court in Matal v. Tam —the immoral/scandalous ban is viewpoint neutral, the government argues.

At issue is the Federal Circuit’s December 2017 decision in In re Brunetti, which reversed the USPTO’s refusal to register the mark ‘FUCT’ for street clothing. The Trademark Trial and Appeal Board affirmed a trademark examining attorney’s rejection of Erik Brunetti’s application to register FUCT under Section 2(a) on the ground that the mark was the phonetic equivalent of the vulgar term "fucked." Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides that a trademark shall be refused registration if it "[c]onsists of or comprises immoral ... or scandalous matter." Under Federal Circuit precedent, evidence showing that a term is vulgar "in the context of contemporary attitudes" is sufficient to establish that a mark consists of or comprises "immoral . . . or scandalous matter" under Section 2(a).

Supreme Court’s Tam decision. In Matal v. Tam, the Supreme Court unanimously held that the Lanham Act’s prohibition on registering trademarks that "may disparage" persons, institutions, beliefs, or national symbols facially violates the First Amendment’s Free Speech Clause because it amounts to viewpoint-based discrimination. The Court also held that trademarks are private, not government, speech and that the federal trademark registration regime is neither government-subsidized speech, nor subject to regulation under the "government-program" doctrine. The Court chose not to resolve whether trademarks constitute commercial speech, expressive speech, or a combination of both, because the disparagement clause in any case was not sufficiently "narrowly drawn" to survive even the relaxed scrutiny the Court in the past has applied to commercial speech. The Supreme Court expressly limited its Tam decision to Section 2(a)’s prohibition on registering disparaging marks, leaving open whether other portions of Section 2(a) may be also be unconstitutional.

Federal Circuit’s Brunetti decision. Before the Federal Circuit, the government argued that the Supreme Court’s Tam decision did not resolve the constitutionality of Section 2(a)’s bar on registering immoral or scandalous marks because, unlike the disparagement prohibition, the immoral or scandalous provision was viewpoint neutral. The Federal Circuit, however, did not reach the government’s viewpoint argument. Instead, the court struck down Section 2(a)’s immoral or scandalous clause as an unconstitutional content-based restriction on speech in violation of the First Amendment. The Federal Circuit rejected the government’s argument that the immoral or scandalous provision was an appropriate content-based restriction on commercial speech that was sufficiently tailored to serve substantial government interests. Citing a portion of Justice Kennedy’s concurring opinion in Tam, the Federal Circuit noted that the "central purpose" of trademark registration was the facilitation of source identification and the issue of whether a mark is immoral or scandalous bears "no plausible relation to that goal." The Federal Circuit also rejected the government’s arguments that the federal trademark registration regime is a "limited public forum" that subjected content-based restrictions to a lesser degree of scrutiny and that the ban on registering immoral or scandalous marks constitutes a reasonable exercise of the federal government’s spending power.

Brunetti petition. In its present petition, the USPTO argues that Tam is not controlling because the disparagement prohibition turned on viewpoint discrimination rather than legitimate content-based restriction. The government maintains that the bar on registering immoral or scandalous marks does not restrict speech because trademark rights are created not by federal law but by use in commerce. Brunetti has used his FUCT mark since 1990 and may continue to do so without the added benefits conferred by federal registration, such as the presumption of validity and the ability to recover certain statutory damages against potential infringers. The government also resurrects its government-subsidy argument and its argument that trademarks are a form of commercial speech that may be regulated in furtherance of a substantial government interest, such as denying the benefits of registration to sexually explicit content. The USPTO in this case found that Brunetti used his FUCT mark in the context of "strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny."

The question posed 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."

Interim examination guidance. On May 24, 2018, the USPTO issued interim guidance on the examination of immoral or scandalous matter pending possible Supreme Court review if Brunetti. Under Examination Guide 2-18 (available here), when examining new applications, examining attorneys have been instructed to issue an advisory refusal on the ground that a mark consists of or comprises scandalous or immoral matter under Section 2(a), in addition to any other examination issues raised in the application, and to suspend action on the application. Any current or future suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until (1) the Supreme Court denies the government’s petition for certiorari or (2) the termination of U.S. Supreme Court proceedings in the case. The USPTO will then determine whether additional guidance is needed.

The case is No. 18-302.

Attorneys: Noel J. Francisco, 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 USPTO

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