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Federal Circuit Allows Registration of Immoral and Scandalous Trademarks

NSFW Disclaimer: This post contains strong language that may not be suitable for work.

The Law
Up until a few weeks ago, the law was that you could not register a trademark with the Patent and Trademark Office that included immoral or scandalous material. For years, 15 U.S. Code § 1052(a) (otherwise known as §2(a) of the Latham Act) prevented registration of trademarks such as BUBBY TRAP for bras, 1-800-JACK-OFF for a phone sex operation, PUSSY for non-alcoholic beverages, and COCK SUCKER for rooster-shaped chocolate lollipops. That all changed on December 15, 2017.

The Case
On December 15, 2017, the United States Court of Appeals for the Federal Circuit ruled that the portion of §2(a) of the Latham Act forbidding the registration of trademarks containing immoral or scandalous material was unconstitutional. The case arose when Erik Brunetti tried to register his clothing trademark “FUCT” with the United States Patent and Trademark Office. The examining attorney refused the registration, arguing that “FUCT” was the past tense of the verb “fuck,” and therefore was scandalous and unregistrable under §2(a) of the Latham Act.

The Trademark Trial and Appeal Board Finds the Trademark Scandalous
Mr. Brunetti appealed the refusal of the examining attorney to the Trademark Trial and Appeal Board. In rejecting Mr. Brunetti’s appeal, the Board relied on a definition posted on Urban Dictionary by a Mr. Charlie White. As Urban Dictionary aficionados will recognize, Mr. White is also the author of such urbane definitions as “Knob Goblins” and the indispensable phallic metric “The Whole Ten Yards.”

Relying on Mr. White’s nonpareil practical lexicography skills, the Board held that FUCT was recognized as a slang and literal equivalent of the word “fucked,” with the same vulgar meaning. The Board also relied on the examining attorney’s Google Image search results, which the examining attorney stated showed Mr. Brunetti used the FUCT trademark in the context of “strong and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny.” The Board refused to believe Mr. Brunetti’s explanation that he chose the term FUCT as an invented or coined word and ruled that Mr. Brunetti’s targeted market segment would perceive the trademark as the phonetic equivalent of the word “fucked.” The Board found the mark to be vulgar and, accordingly, upheld the examining attorney’s refusal to register the trademark under §2(a) of the Latham Act.

The Federal Circuit Also Finds the Trademark Scandalous
On appeal to the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”), Mr. Brunetti again argued that the word FUCT was not scandalous. The Federal Circuit rejected Mr. Brunetti’s argument, also relying on the Urban Dictionary definition to uphold the Board’s decision that FUCT was the phoenetic twin of “fucked,” and therefore vulgar, scandalous and unregistrable under §2(a) of the Latham Act. Although Mr. Brunetti took specific issue with Mr. White’s lack of “lexicographic expertise,” the Federal Circuit noted “[t]he pedigree of the author of a definition may affect the weight that evidence is given, but does not render the definition irrelevant.” In response to Mr. Brunetti’s objection that the Board failed to take into account the other, non-offensive Urban Dictionary definitions of FUCT (such as Failed Under Continuous Testing), the Federal Circuit held the Board reasonably focused on the highest rated definition. (It should be noted that as of this writing, the difference between the highest rated definition, which is offensive, and the second highest rated definition, which is not offensive, is only 26 online votes).

The Constitutional Issue
In addition to his failed argument that the FUCT trademark was not scandalous, Mr. Brunetti also made the argument to the Federal Circuit that §2(a) of the Latham Act was unconstitutional as it applied to speech protected under the First Amendment. Mr. Brunetti brought this argument, despite such a constitutional argument being specifically foreclosed by binding court precedent. In overruling this binding precedent, the Federal Circuit relied on the June 19, 2017 decision in Matal v. Tam, in which the United States Supreme Court upheld the Federal Circuit’s determination that the “disparagement clause” of §2(a) of the Latham Act was unconstitutional. In Tam, the Supreme Court held that trademarks are private, not government, speech. The Supreme Court explained the disparagement clause of §2(a) “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The Ruling
The Federal Circuit examined the government’s position in support of the immoral and scandalous provisions of §2(a) of the Latham Act, but determined the government had not presented the court with a substantial government interest justifying the § 2(a) bar on immoral or scandalous marks. As in the earlier Tam case, “All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive.” which is not enough to survive the requisite intermediate constitutional scrutiny. The Federal Circuit attempted to “blue pencil” the immoral and scandalous provisions of §2(a) of the Latham Act into a construction that would allow the language to pass constitutional muster. However, the court ultimately determined immoral and scandalous could not reasonably be read to be limited to material of a sexual nature, and that the Federal Circuit could not stand in the shoes of the legislature and rewrite a statute. In finding in favor of Mr. Brunetti, and reversing the decision of the Board, the Federal Circuit held that the bar in §2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.

The Federal Circuit’s holding in In re Brunetti is interesting for several reasons. First, the ruling is an indication that courts are recognizing that while society has a right to be offended, it has no right to not be offended. We can expect this trend to continue, with subjective determinations of morality being increasingly excised from our laws. Second, the ruling is an indication that courts are more and more willing to accept as evidence, sources such as Urban Dictionary and Google images, that only two decades ago would never have passed evidentiary muster. Finally, the ruling is a notice to all trademark applicants that a thorough review of all online resources is in order prior to filing and appeal of an examining attorney’s refusal to register.

Brett Trout

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