Viewpoint or Vulgarity?: The Supreme Court is Asked to Distinguish Disparaging and Scandalous Marks - Fordham Intellectual Property, Media & Entertainment Law Journal
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Viewpoint or Vulgarity?: The Supreme Court is Asked to Distinguish Disparaging and Scandalous Marks

Viewpoint or Vulgarity?: The Supreme Court is Asked to Distinguish Disparaging and Scandalous Marks

“[O]ne man’s vulgarity is another’s lyric”1

Nearly 50 years have passed since Justice Harlan made this observation, yet the tension between the government’s desire to censor vulgarities and its Constitutional obligation to protect the freedom of expression remains ever present.   The United States Patent and Trademark Office (“USPTO”) recently filed a petition for a writ of certiorari, requesting the Supreme Court to review a lower court’s decision that in exercising its authority under the Lanham Act, the USPTO violated the First Amendment of the Constitution.2

Section 1052(a) of the Lanham Act directs the USPTO to refuse trademark registration for scandalous and immoral marks.3  A designer, Erik Brunetti, discovered this provision when he attempted to register a trademark in connection with his clothing line, “FUCT,” in 2011.4  When the USPTO refused registration of his mark on the grounds that it was scandalous and immoral, Brunetti sought review by the Trademark Trial and Appeal Board (“TTAB”).5  After an unsuccessful appeal with the TTAB, he appealed a second time to the Federal Circuit, arguing that the scandalous marks provision constituted a violation of the Free Speech Clause of the First Amendment.6

It seemed likely that the Federal Circuit would follow the Supreme Court’s reasoning and strike down the scandalous marks provision after Matal v. Tam, a 2017 Supreme Court decision deeming the Lanham Act’s prohibition of the registration of “disparaging” marks an infringement of the First Amendment7,.  And it ultimately did.8  The Federal Circuit ruled that although evidence proved “FUCT” was sufficiently vulgar to constitute a scandalous mark, Brunetti should be able to register his brand name as a federal trademark.9  The court held that barring immoral or scandalous marks violates the First Amendment because it impermissibly discriminates based on content.10.

In response to the unfavorable decision at the Federal Circuit, the USPTO is now asking the Supreme Court to consider “whether Section 1052(a)’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the Free Speech Clause of the First Amendment.”11

While the Tam decision might suggest that other content-based restrictions in the Lanham Act violate the First Amendment, the USPTO’s petition provides strong arguments as to why the scandalous marks provision deserves different treatment. Notably, the petition emphasizes two significant reasons why Tam is not binding to the matter at hand.12  First, Alito’s opinion did not garner the required majority for it to be considered precedent.13 Second, even if it had obtained precedential status, the opinion should not affect the outcome of the current issue because the provisions are highly distinguishable.14  The restriction on scandalous marks does not raise the same concern of Tam because scandalous marks do not have the ability to communicate messages, ideas, or opinions to society in the same way that disparaging marks do.15  Whereas most of the Tam opinion emphasized the viewpoint-nature of the discrimination against disparaging marks, a large body of precedent has deemed restrictions of profanity and sexual images (i.e. the content that the scandalous marks provision intends to exclude) viewpoint-neutral.16  Thus, the scandalous marks restriction does not raise the same constitutional concerns as the disparaging marks provision.  Legal scholars have supported this distinction stating, “[c]ontent that is sexually explicitly or vulgar does not communicate an opposable view: sexually-explicit content exists to stimulate a sexual response; vulgar content exists to evoke emotive force.”17  Furthermore, because neither of the lead opinions in Tam concluded that viewpoint-neutral restrictions are subject to the strict scrutiny, the Circuit Court impermissibly applied the strict scrutiny standard of review without proper consideration of the nature of the restriction in question.18

Another noteworthy argument by the government is that Federal Circuit erred in concluding that by denying benefits to Brunetti’s mark, the USPTO infringed Brunetti’s freedom of speech.19  The First Amendment poses a duty to refrain from affirmatively restricting speech, however, the government is under no obligation to affirmatively promote profane marks that it does not wish to associate with.20  It is important to note the limited-public-forum doctrine, which allows reasonable limitations of speech in forums that are not fully public.21  The government has legitimate authority to set eligibility criteria to exclude inappropriate content or activities in certain settings in which it provides benefits.22  For example, a city government may prevent sexually graphic advertisements from being posted on city buses in the best interest of the public.23  Similarly, the scandalous marks provision is a reasonable way of protecting the psychological well-being of children and promoting efficiency in the marketplace,24 and it is valid because it only limits speech within the registered trademark forum.  The restriction does not prevent individuals from using their preferred marks to promote goods and services in the public sphere, nor does it go as far to deprive individuals of all trademark protection.25  Even unregistered marks are given protection when they are taken advantage of in the marketplace.26 The denial of trademark registration does not constitute an affirmative restriction on speech. It merely sets criteria for eligibility within the context of federally registered trademarks.

Despite the government’s arguments, the Brunetti case has created a sharp divide in the scholarly community.  Those in favor of Brunetti take issue with the vagueness of the scandalous marks provision and argue that it threatens abuse by both the USPTO in exercising its discretion,27 and by third parties, holding the power to contest trademarks.28  Today’s highly sensitive and easily offended society proves all the more reason why such a subjective provision could have a harmful chilling effect.29  These commentators also note that not only is it inappropriate for trademark law to regulate morality, given its purpose to promote competition and protect consumers from deceptive business practices,30  but it also is unnecessary, as the market is likely to drive holders of controversial trademarks out of business anyways.31  Meanwhile, those in favor of keeping the scandalous marks provision contend that the Federal Government is under no obligation nor should it waste resources providing benefits to marks of such vulgarity.32

One interesting solution to this conflict is reflected in Judge Dyk’s concurring opinion at the circuit level. If taken by the Supreme Court, the decision could turn largely on the Court’s statutory interpretation of the Lanham Act’s use of the word “scandalous,” and Judge Dyk suggests the provision should be construed to restrict obscene trademarks.33  This solution would uphold the provision’s constitutionality and also allow continuity among the exceptions to the Free Speech Clause.34 Judge Dyk’s concurrence seems to be a safe middle-ground approach for the Supreme Court to take, but only time will tell how this dispute will be resolved.

Since the founding of our democratic nation, freedom of speech has received abundant protection on the shared belief that in order for society to progress, individuals must have the right to share ideas and opinions that challenge the status quo, even if those opinions are uncomfortable or offensive.  While the free flow of ideas should no doubt receive the utmost protection, it is not entirely persuasive that vulgarities, such as Brunetti’s brand name, “FUCT,” hold any value as a viewpoint entitled to such heightened constitutional protection.  The Supreme Court has the opportunity to clear much of the lingering confusion left by the inconclusive Tam decision, and now the question is whether or not the Court will take it.

  1. Cohen v. California, 403 U.S. 15, 25 (1971).

  2. Bill Donahue, USPTO Heads to High Court Over ‘Scandalous’ Trademarks, Law360, (Sept. 7, 2018).

  3. 15 U.S.C. §1052(a).

  4. In re Brunetti, 877 F.3d 1330, 1337 (Fed. Cir. 2017).

  5. Id.

  6. Id.

  7. Matal v. Tam, 137 S. Ct. 1744 (2017).

  8. In re Brunetti, 877 F.3d at 1357 (Fed. Cir. 2017).

  9. Id.

  10. Id.

  11. Petition for Writ of Certiorari at I, In re Brunetti, 877 F.3d 1330 (2018) (No. 18-302).

  12. Id. at 14.

  13. Id.

  14. Id.

  15. Id.

  16. Id.

  17. Ned Snow, Denying Trademark for Scandalous Speech, 51 U.C. Davis L. Rev. 2331, 2331 (2018).

  18. Petition for Writ of Certiorari at 15, In re Brunetti, 877 F.3d.

  19. Id. at 18.

  20. Id.

  21. Snow, supra note 18, at 2341.

  22. Petition for Writ of Certiorari at 18, In re Brunetti, 877 F.3d.

  23. Id.

  24. Snow, supra note 18, at 2336.

  25. Petition for Writ of Certiorari at 19, In re Brunetti, 877 F.3d.

  26. Id. at 16.

  27. Tanya Behnam, Battle of the Band: Exploring the Unconstitutionality of Section 2(A) of the Lanham Act and the Fate of Disparaging, Scandalous, and Immoral Trademarks in a Consumer-Driven Market, 38 Loy. L.A. Ent. L. Rev. 1, 20 (2017/2018).

  28. Cathay Y.N. Smith, Squeeze Blood from Turnip(R): Abusing Trademark Law’s Morality Provision in the TTAB, 65 UCLA L. Rev. Disc. 88, 90 (2017).

  29. Behnam, supra note 27, at 2.

  30. Smith, supra note 28, at 99.

  31. Behnam, supra note 27, at 35..

  32. Megan M. Carpenter & Kathryn T. Murphy, Calling Bulls**t on the Lanham Act: The 2(a) Bar for Immoral, Scandalous, and Disparaging Marks, 49 Louisville L. Rev. 465, 467 (2011).

  33. In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017)(Dyke, J. concurring).

  34. Mark Conrad, Matal v. Tam – A Victory for the Slants, a Touchdown for the Redskins, but an Ambiguous Journey for the First Amendment and Trademark, 36 Cardozo Arts & Ent. L.J. 83, 130 (2018).

Nicole Firenze

Nicole Firenze is a second-year law student at Fordham University and staff member of Fordham’s Intellectual Property, Media and Entertainment Law Journal. Nicole holds a B.A. in Political Science from California Polytechnic State University.