Brunetti Briefs: Section 2(a) Bar on Immoral or Scandalous Marks Fails Constitutional Test

“INTA believes the government is right about the choice of standard (intermediate scrutiny), while Brunetti and the Federal Circuit are right about the result (the demise on First Amendment grounds of the “immoral” or “scandalous” provision of Section 2(a)).”

On April 15, the Supreme Court will hear oral argument in Iancu v. Brunetti, a case the International Trademark Association (INTA) has remarked raises a critical issue for all trademark owners—namely, which trademarks reliably can be expected to obtain registration under the Lanham Act. At the heart of the case, and of the amicus brief we helped file for INTA this week, is whether free speech concerns should trump the statutory bar on registration of “immoral” or “scandalous” marks. INTA says the First Amendment should win out, and the statutory bar should fall.

Scandal Versus Free Speech

The category of marks at issue is exemplified by the FUCT apparel mark, owned by Erik Brunetti, to which the U.S. Patent and Trademark Office (USPTO) denied federal registration. After the Federal Circuit reversed, holding that Section 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech, the U.S. government sought the Supreme Court’s review, and the Court granted certiorari. It must now decide whether the prohibition in Section 2(a) of the Lanham Act on the federal registration of “immoral . . . or scandalous” marks like FUCT is invalid under the Free Speech Clause of the First Amendment.

As noted in a previous IPWatchdog post, many IP practitioners were surprised that the Court agreed to hear Brunetti. The Supreme Court just recently struck down part of the same statute in Matal v. Tam. In that June 2017 decision, the Court deployed the First Amendment to invalidate the companion prohibition in Section 2(a) on registration of marks that “may disparage.” The disparaging mark in that case was SLANTS, which an Asian American rock band used in an effort to reclaim and repurpose a traditional ethnic slur. The Court held the “may disparage” restriction unconstitutional because it discriminated against certain marks based on their viewpoints and denied such marks the benefit of registration. There was thus little surprise when, in Brunetti, the Court of Appeals for the Federal Circuit cited Tam in invalidating the “immoral . . . or scandalous” provision of Section 2(a).

Time will tell why cert was granted:  Perhaps the justices are human and can’t resist fun facts; perhaps some justices believe scandalous marks are viewpoint neutral and thus should be analyzed differently from disparaging marks; perhaps the Court is looking for a relatively easy case for one of its new justices to author. Another option is that some justices may have seen a substantive need to provide greater clarity, and an opportunity to do so given the change in the composition of the Court (Justices Gorsuch and Kavanaugh did not participate in Tam). Among other things, the Court in Tam did not resolve which level of scrutiny applies to regulations on trademarks—strict scrutiny (the highest level, a/k/a strict in name and fatal in fact), or the intermediate scrutiny test mandated by the Court’s decision in Central Hudson.

On that point, the parties take different positions. The government argues for intermediate scrutiny and the survival of the statute on that approach; Brunetti argues for strict scrutiny and affirmance of the statute’s demise.

The government contends that, unlike in Tam, where the disparagement provision was viewpoint-discriminatory, the “immoral . . . or scandalous” provision is viewpoint-neutral:  The refusal to register FUCT does not favor one view or another, but rather is designed to avoid vulgarity in the nation’s commerce. On this theory the USPTO’s refusal to register is based not on the views expressed in a mark, but instead on the mark’s offensive mode of expression. The government analogizes this approach to restrictions the Court has allowed in obscenity cases. The government further argues that strict scrutiny is unwarranted because Section 2(a) does not restrict speech, but simply imposes a condition on the availability of a government benefit, namely federal registration, which confers additional trademark protections.

Brunetti, on the other hand, contends that the government is wrong to assume that profanity does not express a viewpoint because, at the very least, profanity expresses “non-compliance with societal mores.”  In Tam, Justice Kennedy made a similar point in his concurring opinion, concluding that the First Amendment protects against laws that “mandat[e] positivity.”  Arguably, as Justice Kennedy said in Tam, “the law here might silence dissent and distort the marketplace of ideas.”

INTA and Other Amici Offer a Third View

INTA seeks to square the circle differently than either party. Our amicus brief for INTA argues that intermediate scrutiny should apply, and the statute still should fail. It’s a two-step argument:

First, as INTA argues, trademarks, including offensive ones, are commercial speech because “their entire purpose is to propose commercial transactions,” and trademark law protects only the commercial aspects of trademarks. Moreover, strict scrutiny is unnecessary in this context because the government’s refusal to register a trademark does not constitute a full restriction on speech. If federal registration is denied, trademarks still can be used in the market and protected under common law. All this points to intermediate scrutiny, and a trip down the analytic path marked out by Central Hudson.

Second, under Central Hudson, the “immoral . . . or scandalous” marks provision does not pass constitutional muster and should be invalidated. The provision fails three of the four Central Hudson factors: The government has no “substantial interest” here, only an apparent desire to enforce archaic notions of morality and public order. As INTA explains:

“The Victorian era ended long ago. Yet the government’s brief seems to imagine a world in which decorous matrons are bringing commerce to a halt by collapsing in store aisles at the sight of a provocative brand name. That is simply not the world where trademark owners and their customers actually live.”

INTA also argues that Section 2(a) is “more extensive than necessary” to serve the purported interest. Moreover, even if the government had a substantial interest, Section 2(a) does not “directly advance” the interest because the statute is so vague and so inconsistently applied:

“Countless words are innocuous in some contexts and provocative (sexually or otherwise) in other contexts. Ass, balls, beaver, boob, cock, dick, hump, or pussy are but a few examples. Yet the lines between an innocent usage, a permissible double entendre, and a usage so provocative as to be denied registration are so vague that they may as well be invisible. It is difficult to avoid the conclusion that examiners and their supervisors are simply left to make their own subjective determinations as to whether a mark is ‘immoral … or scandalous.’”

Add it all up, and INTA believes the government is right about the choice of standard (intermediate scrutiny), while Brunetti and the Federal Circuit are right about the result (the demise on First Amendment grounds of the “immoral” or “scandalous” provision of Section 2(a)).

INTA’s “void for vagueness” argument is powerfully supported by the fascinating amicus brief submitted by Professors Barton Beebe and Jeanne Fromer of NYU Law School. The professors undertook “a large-scale empirical study of trademark applications and registrations at the PTO to assess to what degree the PTO is arbitrary or inconsistent in its implementation of the [Section 2(a)] prohibition on the registration of immoral or scandalous marks,” studying 3.6 million trademark applications. They conclude that the USPTO routinely treats identical or highly similar marks differently and therefore cannot meet either intermediate or strict scrutiny. Interestingly, the professors note that “a good number of the mark applications in [their] study that received a § 1052(a) immoral-or-scandalous refusal contain political speech or speech concerning public affairs.” The case has generated a slew of other interesting amicus briefs, available here, including one in support of Brunetti by Simon Tam of Tam fame.

New Court, New Considerations

How the Supreme Court will sort all this out soon will be determined. One new variable is Justice Kavanaugh’s replacement of Justice Kennedy, who was long known as a particularly ardent protector of free speech. Some scholars say Justice Kavanaugh is unlikely to significantly depart from the First Amendment approach of his predecessor and mentor. Also new to this debate is Justice Gorsuch, who also is seen as a protector of the First Amendment. However the Court rules, this decision undoubtedly will have a significant impact on whether brand owners—especially the owners of marks created for “shock value”— reliably can expect to obtain registration for marks that might be seen as edgy or provocative.


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Join the Discussion

2 comments so far.

  • [Avatar for M Graham]
    M Graham
    March 28, 2019 12:30 pm

    There is something wrong with this picture. The “people,” via their elected representatives in Congress, such as it is, have resolutely spoken to this issue in the federal Trademark Act. They simply do not want to put the imprimatur of federal registration on “immoral” or “scandalous” marks.

    Have the courts failed to recognize the impact of Sections 1057, 1065, and 1115 on this matter? If a mark like “FUCT” can permissibly be federally registered, then the owner can use the registration, under Sections 1057, 1065, and 1115, as “prima facie” and then, ultimately, “conclusive” evidence of its right to exclusive use “FUCT” in commerce for the goods/services for which it is registered.

    And would a party charged with infringement of the incontestably registered mark “FUCT” be able to defend its use of the same mark for the same goods/services (and therefore clearly an infringement) on First Amendment grounds? If the registrant’s alleged First Amendment right of “free speech” demanded that its mark be registered in the first place, then why wouldn’t the First Amendment right of “free speech” of one who is using the same mark for the same goods/service also provide a complete defense to a claim that its use is an infringement of the registration? Aren’t both equally “free speech”?

    Or is it, instead, that the prize goes to the winner of the race to the toilet?

    Do we even want the purported owner of the mark such as “FUCT,” if registered, able to use its federal registration as a “sword” to try to exclude others from using “similar” terms in ways the owner alleges are “likely to cause confusion”? Imagine parents dealing with the media coverage of such cases in which parties are seeking to enforce all sorts of vulgar/immoral marks that were granted federal registration by our “government.” What a “filthy” mess!

    That we are even debating this nonsense at this level shows how far we have strayed from the moral foundations that have undergirded our nation for over 200 years. And, yes, by God, allowing this decision to stand does clearly portend a Pandora’s Box of untold and unforeseeable negative consequences on American society as a whole.

    I for one hope the Court will reverse and provide meaningful limitations on the reach of the First Amendment vis-à-vis federal registration that improve upon the current jurisprudence.

  • [Avatar for Anon]
    March 27, 2019 04:30 pm

    One caveat to clarify a point made in the article:

    Among other things, the Court in Tam did not resolve which level of scrutiny applies to regulations on trademarks—strict scrutiny (the highest level, a/k/a strict in name and fatal in fact), or the intermediate scrutiny test mandated by the Court’s decision in Central Hudson.

    The Court in Tam did not “resolve” the matter because the court below stated (and it was not contested) that under EITHER test, Tam would prevail.

    That puts a rather different and important “spin” on the matter in the present case, as Tam prevailing in either instance indicates a similar result here.