On April 15, 2019, the Supreme Court will hear arguments on whether dirty words and vulgar terms may be registrable as trademarks – and if so, what is the test? Section 2(a) of the Trademark Act currently provides that the Trademark Office may refuse registration of a mark that “[c]onsists of or comprises immoral… or scandalous matter.” Erik Brunetti, the owner of the FUCT brand of clothing, filed applications to register his mark. He almost got one registered – it was approved, but the approval by the Trademark Office was withdrawn after the Matal v. Tam decision. The issues now before the Court are whether (1) the statutory prohibition against registration of a “immoral” or “scandalous” marks is facially invalid; and (2) the statute as applied to the registration of “immoral” or “scandalous” marks is constitutionally vague under the First and Fifth Amendments.
The Supreme Court, in Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017), held that the particular language in Section 2(a) refusing registration of a trademark on grounds that the mark may “disparage or … bring them into contempt or disrepute” was facially invalid under the First Amendment as viewpoint discrimination. Tam was a plurality opinion, which is subject to the narrowest of interpretations. Marks v. United States, 430 U.S. 188 (1977). While all members of the Court held the disparagement clause of Section 2(a) to be facially invalid, the Court was divided over the level of scrutiny generally to be applied to free speech challenges to the Trademark Act. As Justice Kennedy stated in Tam, “We leave open the question whether this is the appropriate framework for analyzing free speech challenges to provisions of the Lanham Act.” 137 S. Ct. at 1768 (Kennedy, J.). No one addressed “immoral” or “scandalous” terms.
The Federal Circuit, in its decision reversing the Trademark Trial and Appeal Board, which had upheld rejection of the FUCT application, held that FUCT — unquestionably a vulgar term – was entitled to registration. A refusal to register represented content discrimination of an expressive work. In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017).
In its petition for certiorari, the government maintains its unconvincing argument that the Trademark Office is exempted from stringent First Amendment protections as a government player, that the registration scheme is akin to a government subsidy or the Trademark Office should be viewed as a limited public forum, and that the government may decline to promote bad language. These arguments, although seemingly suspect in Tam, were not addressed by a majority.
Not so fast, Mr. Brunetti argues. Separate from the Federal Circuit’s characterization of FUCT as vulgar but expressive free speech, the statutory restriction regarding a scandalous mark is not limited to profanity or marks of a scatological, obscene or sexual nature, but viewpoint, not merely content. One person’s sex terminology is another person’s political call to action, as it were.
A practical matter, of course, is what is actually scandalous? A quick review of the Trademark Register shows many “HELL” marks, the mark FCUK, as well as many other marks that at some point were considered prohibited language. We all swear like sailors. At this point, a Trademark Office rejection of a trademark on grounds that it is “scandalous” seems based more on what that particular Trademark Examining Attorney considers acceptable dinner table talk rather than any concrete standard.
- Should a party be allowed to put an ® symbol on just anything? What about a pending application for CAN U NOT TEXT? What about a swastika? Or the “N” word? Does it matter if the applicant, like the one in Tam, considers itself a social justice warrior? Should the trademark applicant prove it has used the mark in commerce and can provide context?
- If the mark is simply chosen for shock value, is it really a source designator?
- Are trademarks expressive speech – or commercial speech? The Lanham Act arises from the Commerce Clause. However, the Federal Circuit in Brunetti held that trademarks are expressive speech, requiring a stricter level of scrutiny than the Central Hudson test used for advertising and strictly commercial speech. 447 U.S. 557 (1980).
On the most practical level, the Court’s decision should provide a framework for Trademark Examining Attorneys as the preliminary gatekeepers of the Trademark Register, when reviewing potentially offensive terms as marks. We shall wait and see.