Don’t say that!

Another one bites the dust!

In December, the Court of Appeals for the Federal Circuit (CAFC) struct down another clause from section 2(a) of the Lanham Act.

You may recall (hopefully if you’re reading this you do) that the Supreme Court, unanimously, found the disparagement clause of Section 2(a) unconstitutional back in June, upholding the CAFC’s holding below (though for slightly different reasons, and without a majority opinion). The Court found that the disparagement clause of the Lanham Act was view-point based discrimination, in violation of the First Amendment.

That was the Slants case. It got a lot of press.

Well, now, as decided by the CAFC, the immoral and scandalous clause of Section 2(a) has also been found unconstitutional for violating the First Amendment. The ground of unconstitutionality are not identical to those found by SCOTUS in the Slants case, but is First Amendment based, and similar nonetheless. (If you’re not going to read the case, at least follow the link, skim through it, and read some of the examples marks. They’re…interesting.)

A little bit about the case. Because, ya know, the facts matter. The case is In re Brunetti, which was an appeal from the denial to register the petitioner’s mark, FUCT. (Yes, the mark is FUCT, as in…you know.) The mark is used with apparel. In short, the examining attorney for the FUCT application refused registration under the contention that the word, which looks almost identical to FUCK and sounds like its past tense version, is vulgar and thus cannot be registered in light of Section 2(a). (To keep from getting too much in the weeds, courts have held that vulgar is synonymous, or interchangeable, with immoral/scandalous.) Registration was denied, the TTAB upheld the refusal, and an appeal was filed.

From there, essentially, the CAFC found that, determining what is and what is not immoral/scandalous is not the job of the Government, and thus not the job of the USPTO. Doing so is a restriction on the owner’s right to free expression. (Further complicating the issue, a lot of vulgar trademarks have been registered, and, other, very similar trademarks have been denied registration. So the CAFC had an issue not only with the clause facially, but also noted that its application is shockingly inconsistent.)

What is the immoral and scandalous clause? Essentially it states, marks that are immoral or scandalous (I know pretty subjective standard, with an always moving target) must be refused registration because, well….

The odd thing is, just as with the disparagement clause and as the CAFC discussed, the the owner could still use the mark (and has here with FUCT, since 1991), regardless of registration. So, one might think, if the owner is using the mark as a trademark, and it’s recognized as a trademark, why can’t it be registered? What place does the Government have in determining what is right and what is wrong regarding public expression? Well, the court agreed.

(Aside: a lot of scholars and bright lawyers argue that the clause is not a speech restriction per se, for the very same reasons as noted above: the owner can still use the mark and, possibly, enforce rights in the mark. But, as others argue, allowing registration to some marks and not to others based on the content or viewpoint clearly demonstrates a preference in certain types of speech, which affects behaviors in that speech, an area in which the Government should not be.)

There’s more to dive into with this case and the specifics of the CAFC’s reasoning, some of which may be important to future challenges to other clauses of Section 2, but for now this will suffice. So, open the flood gates. You are now free to offend! (Or at least register your offensive usage.)