The USPTO cannot refuse registration of immoral or scandalous marks

Kumiko Ide | January 31, 2018

In re Erik Brunetti

December 15, 2017

Before: Dyk, Moore, Stoll.  Opinion by Moore; Concurring opinion by Dyk

Summary: 

The §2(a) bar on registration of immoral or scandalous marks violates First Amendment.  While the CAFC opinion finds the use of immoral or scandalous marks in commerce to be discomforting, the First Amendment protects private expressions, including those that may be offensive.  In this instance, the government does not have substantial interest that would justify its suppression of immoral or scandalous trademarks.

Matal v. Tam, 137 S. Ct. 1744 (2017)において、ランハム法第2(a)条に基づき、最高裁が誹謗的(disparagement)な商標を拒絶することは憲法違反であると判断したのと同様に、米国特許商標庁が、ランハム法第2(a)条に基づき、不道徳的又は中傷的(immoral or scandalous)な商標を拒絶することは、憲法修正第1条違反であるとCAFCは判決を下した。

Details:

An examiner refused to register the mark FUCT based on §2(a) of the Lanham Act, finding the mark to comprise of immoral or scandalous matter.  The examining attorney reasoned that the mark is the past tense of a vulgar word, and therefore, scandalous.

The applicant requested for reconsideration, and then appealed to the Board.  The Board affirmed the examining attorney’s decision to refuse registration of the mark, noting that the word “fuct” is defined by Urban Dictionary, and that the targeted market will perceive the mark as the phonetic equivalent of the past tense of a vulgar word.

The applicant appealed, arguing that substantial evidence does not support the Board’s finding that the mark FUCT is vulgar under §2(a).  He also argued that even if the mark is vulgar, §2(a) of the Lanham Act does not expressly prohibit the registration of such word, and the mark should be approved for registration when there is doubt as to its meaning, as in the present case.  In the alternative, the applicant challenged the constitutionality of §2(a)’s bar on immoral or scandalous marks.

The CAFC found that substantial evidence supports the Board’s finding that the word is a “phonetic twin” of the past tense of a vulgar word.  While the applicant challenged the Board’s reliance on the definition found in an online Urban Dictionary, the CAFC stated that while the author of a definition may affect the weight that evidence is given, that still would not make the definition irrelevant.

The applicant also argued that even if the mark is vulgar, §2(a) does not prohibit the registration of vulgar marks; to be considered immoral or scandalous, a mark must be more than merely vulgar.  The CAFC did not agree, as the CAFC has previously held “the PTO may prove scandalousness by establishing that a mark is ‘vulgar.’” In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012).  As such, the CAFC found substantial evidence supported the Board’s finding that the mark FUCT is vulgar and therefore, the Board did not error in concluding the mark as unregistrable under §2(a).

The CAFC then turned to the question of whether §2(a)’s bar on immoral or scandalous marks is unconstitutional under the First Amendment.  On June 19, 2017, the Supreme Court unanimously affirmed the CAFC’s en banc decision in In re Tam, holding that trademarks the trademarks are private, not government speech, and finding the disparagement provision of §2(a) unconstitutional under the First Amendment.  Matal v. Tam, 137 S. Ct. 1744 (2017).

Following the issuance in Tam, the government still contended Tam does not resolve the constitutionality of §2(a) bar on registering immoral or scandalous marks because while the disparagement provision implicates viewpoint discrimination, the immoral or scandalous provision is viewpoint neutral.  The CAFC stated in its opinion that independent of whether the immoral or scandalous provision is viewpoint discriminatory, the provision discriminates based on content in violation of the First Amendment.  In reaching this conclusion, the CAFC rejected the government’s argument that the government subsidy framework applies to trademark registration, and the bar on registration is a constitutional condition defining the limits of trademark registration.  The CAFC also rejected the government’s argument that the federal trademark registration program is a limited public forum, where content-based restrictions on speech are subject to a lesser degree of scrutiny.  The CAFC determined that because §2(a)’s bar on immoral or scandalous matter regulates the expressive components of speech, it should be subject to strict scrutiny.  The CAFC went on to state that even reviewed under the intermediate scrutiny framework, the §2(a)’s bar on immoral or scandalous matter is unconstitutional, because the government does not have substantial interest that would justify its suppression of immoral or scandalous trademarks, the regulation does not advance the government’s asserted interest (applicants are not prevented from using the trademark refused under §2(a)), and the provision is not carefully tailored to serve the government interest, as evidenced by the inconsistency of allowed and rejected applications.  The CAFC also held that there is no reasonable definition to the statutory terms “scandalous” and “immoral”, which would preserve their constitutionality.

In the conclusion of the opinion, the CAFC stated that the trademark is vulgar, but the §2(a) bar against immoral or scandalous marks is unconstitutional, as it violates the First Amendment.  Thus, the CAFC reversed the Board’s decision which found the applicant’s mark unregistrable under §2(a).

Concurring Opinion:

The concurring opinion suggests narrowing the scope of the §2(a) bar against immoral or scandalous marks to obscene marks to preserve its constitutionality.  However, because in this instance, the mark is not obscene, the concurring opinion agreed with the judgment of the majority.

Takeaway:

  • In addition to the 2(a)’s bar against registration of disparaging trademarks, §2(a) bar against immoral or scandalous trademarks has been found unconstitutional.

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