In June 2017, the U.S. Supreme Court in Matal v. Tam struck down as unconstitutional a provision of section 2(a) of the Lanham Act,[1] which had permitted the U.S. Patent and Trademark Office (USPTO) to refuse to register “disparag[ing]” trademarks.[2] Though the U.S. Supreme Court unanimously held that this provision violated the First Amendment’s Free Speech Clause, the justices split on their reasoning and did not rule on the constitutionality of other provisions of the Lanham Act.[3] Among these other provisions was a part of section 2(a) permitting the USPTO to refuse to register “immoral . . . or scandalous matter” as trademarks.[4]
Last month, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit held in In re Brunetti that the “immoral” or “scandalous” marks provision also is facially invalid under the First Amendment.[5] Here’s what you need to know about this important decision.
Background of This Case
Erik Brunetti is the founder and owner of the clothing brand “FUCT.” In 2011, Brunetti applied to register “FUCT,” alleging use for various items of apparel. The USPTO examiner, however, refused to register the mark, citing the “immoral” or “scandalous” provision of section 2(a).[6]
On appeal, the Trademark Trial and Appeal Board (TTAB) affirmed the examiner’s decision, citing both the Urban Dictionary’s definition of “FUCT” and Google Images searches showing that Brunetti used the mark in the context of “strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny . . . .”[7] The TTAB concluded that the mark is vulgar and therefore unregistrable under section 2(a).
Brunetti then appealed the TTAB decision to the Federal Circuit, arguing both that the name, in context, was not scandalous, and that section 2(a) was unconstitutional.
The Federal Circuit’s Decision
On review, the Federal Circuit panel concluded that “substantial evidence” supported the TTAB’s finding that “FUCT” is the “phonetic twin” of an “undisputed[ly] . . . vulgar” word and that “a ‘substantial composite’ of the American public would find the mark vulgar.”[8] Under binding Federal Circuit precedent, a showing of vulgarity is sufficient to establish that a mark is “immoral” or “scandalous” within the meaning of section 2(a).[9] Even without this precedent, the panel concluded that the “FUCT” mark, in light of the USPTO’s fact findings, constitutes scandalous matter.[10]
With respect to the constitutional question, the government conceded that the “immoral” or “scandalous” marks provision is a content-based restriction on speech. Such restrictions are ordinarily subject to the high standard of strict-scrutiny review, which the government conceded that the provision could not survive.[11] Nonetheless, the government argued that the provision “does not implicate the First Amendment because trademark registration is either a government subsidy program or limited public forum.”[12] In the alternative, the government argued that trademarks are commercial speech, which is subject to an intermediate level of scrutiny under Central Hudson Gas & Electric Corp. v. Public Service Commission of New York.[13]
The Federal Circuit panel rejected each of the government’s...
