Freedom of expression transcends morality in US trademark registration

As the Court of Justice of the European Union is currently considering the role of freedom of expression in trademark law, the Supreme Court of the United States has made a sharp determination on the matter in Iancu v. Brunetti. This follows the Matal v. Tam decision in which the Court held that “the disparagement clause” of the Lanham Act violated the Free Speech Clause of the First Amendment as unconstitutional “viewpoint discrimination”; readers will recall that the Tam case concerned an Asian-American band attempting to register the derogatory term, “THE SLANTS” which they had used as their band name in an effort to reclaim the term. Here, the Court considered the prohibition on viewpoint discrimination with regards to the scandalous and immoral criterion of the Lanham Act, as the mark applied for in this case is FUCT; the Court agreed with the Federal Circuit Court of Appeals in this case, affirming that refusing registration as an immoral or scandalous mark would amount to unconstitutional viewpoint discrimination. 

Background 

Erik Brunetti started the clothing brand fuct with his partner Natas Kaupas in 1990; eventually, the name also became an acronym for FRIENDS U CAN’T TRUST. Brunetti contends in his declaration that the USPTO miscomprehends his brand’s message, “[t]he FUCT brand does make comments about current political and societal issues, sometimes obvious, and sometimes subtly. But those comments are not scandalous, immoral or vulgar.” 

In 2011, Brunetti applied to register FUCT as a class 25 trademark for athletic apparel; he also identified children’s and infant’s apparel in the application. The USPTO refused registration, finding that the mark comprised immoral or scandalous matter despite Brunetti’s arguments to the contrary. The USPTO cited Urban Dictionary to determine that “fuct” represents the past-tense form and “phonetic equivalent” of “fuck” and, thus, is offensive. Following the USPTO’s refusal to reconsider, Brunetti appealed the matter to the US Federal Circuit Court of Appeals. 

After Brunetti filed his appeal to the Federal Circuit but before oral arguments were heard, the Supreme Court ruled in the Matal v. Tam case regarding the disparagement clause. The Court in Tam held that “[g]iving offense is a viewpoint,” and that the government’s refusal to register a mark because it is offensive violates the “bedrock First Amendment principle that the government cannot discriminate against” offensive ideas. The Court in Brunetti described this earlier conclusion in Tam as, “Viewpoint discrimination doomed the disparagement bar.” 

Further, Justice Kennedy noted in his concurrence in Tam that “[t]he central purpose of trademark registration is to facilitate source identification… Whether a mark is disparaging bears no plausible relation to that goal.” The majority in In re Brunetti found that “the same logic applies to the immoral or scandalous prohibition” of the Lanham Act with regards to expressive speech in trademarks. Thus the “bar on the registration of immoral or scandalous marks” is similarly unconstitutional under the strict scrutiny applied to regulations of the expressive content of the trademark. Even if trademark registration is a matter of purely commercial speech, the Federal Circuit held that a bar on immoral and scandalous marks fails the respective intermediate scrutiny framework established in Central Hudson. 

Recognizing that the government “offered no substantial government interest for policing offensive speech in the context of a [trademark] registration program,” the Federal Circuit held that the “immoral or scandalous clause” is an unconstitutional violation of the First Amendment. Following this ruling, the PTO petitioned the matter to the Supreme Court; the Court heard oral arguments in April 2019. 

Justice Kagan noted, writing for the majority, that the First Amendment prohibition on “viewpoint discrimination” collided with the prohibition on disparagement in Tam and thus the prohibition was unconstitutional; the government conceded in Brunetti that the same would apply if the court held the prohibition on immoral and scandalous marks to be viewpoint discrimination. Justice Kagan described the ultimate question as a simple binary: “Is the “immoral” or “scandalous” criterion in the Lanham Act viewpoint-neutral or viewpoint-based?” She answered equally simply, “It is viewpoint-based.” 

Justice Kagan supports this notion with the subjectivity implied by the dictionary definitions of immoral and scandalous. Similarly, the PTO defined the terms as “shocking to the sense of truth, decency, or propriety”; “calling out for condemnation”; “offensive”; and “disreputable” in their brief in this case, confirming that the PTO discriminates among potential marks based upon the viewpoint of the government. Justice Kagan illustrates this point by contrasting permissible reference to drug use (YOU CAN’T SPELL HEALTHCARE WITHOUT THC for pain-relief medication) with permissible reference to drug use (D.A.R.E. TO RESIST DRUGS AND VIOLENCE for 12 international classes), as determined by PTO registration. Professors Barton Beebe and Jeanne Fromer explored the arbitrary application of §2(a) of the Lanham Act in both an Amicus brief and subsequent law review article; identifying inconsistent application even with regards to marks resembling “FUCT,” they showed that the PTO discriminates based on the viewpoints it endorses through registration. 

The Government argued that the provision may be maintained if interpreted narrowly, referring only to marks that are offensive or “shocking to a substantial segment of the public because of their mode of expression, independent” of any views expressed. The Supreme Court only interprets statutes narrowly, however, to avoid constitutional questions when the statute is ambiguous; the Court “will not rewrite a law to conform it to constitutional requirements.” The Supreme Court affirmed the ruling of the Federal Circuit 6-3, invalidating yet another provision of §2(a) of the Lanham Act. 

Implications 

Although the immoral or scandalous criterion were found to be unconstitutional on First Amendment grounds, Brunetti maintained that the mark was not scandalous nor immoral throughout the appeals process. The only definition of the word “fuct” (as opposed to “fuck”) provided by the PTO in rejecting the word as a mark comes from a user submission to Urban Dictionary that received 73 upvotes and 36 downvotes; two of the next three highest voted submissions actually refer to Brunetti’s brand. Neither the Federal Circuit nor the Supreme Court criticized the use of this user-generated, unprotected forum as evidence, accepting the notion that FUCT was immoral and scandalous without protest. If not for the invalidation of the immoral or scandalous criterion, this would present companies with perverse incentives to, for example, submit scandalous or immoral definitions of their competitors’ trademarks in an effort to cancel their registrations. 

Justice Sotomayor describes the majority’s holding in harrowing terms, “the Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.” John R. Sommer, attorney for Brunetti noted in our phone conversation on July 12 that while his client may now have a registered trademark for his products, “you won’t find them in Target or Walmart.” Rather, the likely effect of this ruling is the facilitation of source identification in the channels of trade where such marks exist without registrations, not the proliferation of “vulgar, profane, or obscene” marks in family-friendly businesses.