On December 15, 2017, the Court of Appeals for the Federal Circuit struck down as unconstitutional the clause within 15 U.S.C. § 1052(a) (“Section 2(a)”) banning registration of a trademark that “[c]onsists of or comprises immoral…or scandalous matter.”

The In re Brunetti decision came in the wake of Matal v. Tam, a recent Supreme Court case holding that Section 2(a)’s ban on registering “disparaging” trademarks amounts to unconstitutional viewpoint discrimination.

Federal Circuit Judges Dyk, Moore and Stoll concluded that the refusal to register trademarks consisting of immoral or scandalous matter necessarily bans speech based on content, in violation of the First Amendment. Such content-based restrictions are subject to strict scrutiny review, which requires the government to prove that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest.

The court first affirmed the Trademark Trial and Appeal Board’s (“TTAB”) finding, though, that trademark applicant Erik Brunetti’s mark, FUCT, used in connection with a clothing brand, is vulgar and therefore scandalous. TTAB evidence had included online search engine results, dictionary definitions and use of Mr. Brunetti’s mark in the marketplace on products containing sexual imagery. The court rejected Mr. Brunetti’s contention that his mark is not vulgar, but rather is a coined abbreviation for “Friends yoU Can’t Trust,” and noted the United States Patent and Trademark Office’s (“USPTO”) history of equating “scandalous” and “vulgar” marks.

Turning to the constitutional issues in the case, the court rejected the government’s argument that Section 2(a) does not implicate the First Amendment because trademark registration is a government subsidy program or a limited public forum. As the Supreme Court noted in Tam, the government subsidy framework does not apply to trademarks, where applicants for registration pay fees to the USPTO rather than receiving any funds. Furthermore, trademarks function as commercial source indicators, and the fact that they exist on the Principal Register does not transform them into a limited public forum. The court characterized the Principal Register as a database, analogizing government ownership of private land merely because such land is maintained on a government list.

As it had in In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), the court expressed concern over potential content-based censorship of trademarks and other speech the government registers, such as copyrighted works. The test for whether a trademark is barred by Section 2(a) asks whether a substantial composite of the public would find the mark “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation.” This test necessarily targets expressive speech, and indeed, the court determined this test’s results change as frequently as do the general population’s moral and ethical viewpoints over time.

The court held Section 2(a) unconstitutional after strict scrutiny review, holding that this provision targets the expressive aspects of speech – rather than its commercial function as a source indicator – and undoubtedly restricts speech based on content. Nor can Section 2(a) survive under intermediate scrutiny analysis, as the government does not have a substantial interest in promoting certain marks over others and cannot possibly apply the test consistently, as the test hinges on popular opinion of what is “scandalous.” Even if the government did have a substantial interest in protecting the public from certain marks – which the court held it does not – Section 2(a) would not directly advance this interest because marks that fail to register can still be used in commerce.

The court’s Brunetti decision does not come as a surprise following the Supreme Court’s striking down of the Section 2(a) ban on “disparaging” trademarks. While the Brunetti court lamented commercial use of vulgar marks, consistency dictates that these offensive words and images may join the likes of similarly vulgar copyrighted works registered by the government. The government has yet to articulate a substantial interest in restricting this speech, and until it does, marks formerly deemed too “vulgar” for registration might now have a better chance to move forward.