Petitioner Brunetti, as owner of an apparel trademark bearing visual and phonetic similarity to a common expression for sexual activity, asserted on appeal that the United States Patent and Trademark Office’s determination that the mark could not be registered was in error. Refusing registration is wrong, Brunetti argued, because the mark is not vulgar; because vulgarity is not among the Lanham Act Section 2’s exclusions from registration; and because the statutory “scandalous and immoral” classifications of excludable marks violate the First Amendment of the United States Constitution.

The Federal Circuit Court of Appeals affirmed the Trademark Trial and Appeal Board’s determination of vulgarity, finding ample evidence supported that conclusion. However, notwithstanding its support for this factual determination, the three judge panel of the Federal Circuit moved beyond the unconstitutional viewpoint based discrimination found concerning “disparaging” marks in the United States Supreme Court’s affirmance of the Federal Circuit’s views in Matel v. Tam, 582 U.S. ________ , (2017), and concluded that the Lanham Act’s provisions concerning “scandalous” or “immoral” marks are unconstitutional content based speech restrictions.

Exclusions from Registration. The Lanham Act, 15 U.S.C. Section 1502 (Section 2), excludes from registration a variety of trademarks, including deceptive, disparaging, or false marks, as well as the “scandalous” or “immoral” marks in issue in Brunetti’s case. Ordinarily, the “scandalous or Immoral” criteria are reviewed together to consider whether the general public would find the proposed mark offensive. History discloses that notions of general offensiveness shift over time, with the earliest cases construing “scandalous” or “immoral” marks focusing on sacrilegious marks.

At one time case law viewed the federal trademark process to exist at a remove from First Amendment concerns. It was thought that no burden on First Amendment rights existed because trademarks could be used with or without registration. More recently, however, denial of registration has been seen as having a chilling effect on speech, making First Amendment trademark registrations justiciable.

With the door opened to First Amendment review, the Supreme Court has concluded that the “disparagement” prohibitions of Section 2 could not survive even the most lenient scrutiny attaching to commercial speech. The Supreme Court affirmed the Federal Circuit’s conclusion that the federal government has no substantial interest in regulating “disparaging remarks.” Regulation of speech based on a perception that it is disparaging contravenes the fundamental idea that speech may not be banned because it may give offense. Matel v. Tam, supra.

In its Matel v. Tam opinion, the Court failed to come to accord concerning the sort of scrutiny that trademark registration requires. In Brunetti, the Federal Circuit did not return to the viewpoint analysis of Matel v. Tam, but concluded that the “immoral or scandalous” limitations on trademark registration were impermissible content based speech restrictions.

Content-based restrictions — regulating topics or ideas or messages — require strict scrutiny review, which is fatal to speech regulation, whether ban or burden, unless the regulation can be shown to be narrowly tailored to serve a compelling government interest.

The Federal Circuit rejected the government’s arguments that the trademark registration process was a valid exercise of spending powers or that it provided a federal subsidy, or that the presence of marks in a federal registration database created a limited public forum. These expansive views of registration would confer upon the government an almost unlimited capacity for regulation of any federal program, and in particular of any federal compilation of information, a notion antithetical to the core concerns embodied in the First Amendment.

The Federal Circuit explored the ‘limited public forum’ concept asserted to be represented by the trademark registration database. If there were a limited public forum found there, content based restrictions would be permissible provided they were reasonable and not related to official disagreement with any speaker’s views. Yet no such analysis could be had in the absence of some relationship to government property, which cannot be said of the government’s database of registered marks. The marks are property used in commerce for identification and are unrelated to any governmental property interest.

Not only does the regulation not survive review as an intangible limited public forum, but the regulation of “scandalous” or “immoral” trademarks targets expression, subjecting the regulation to strict scrutiny analysis. The promotion of source identification has no relationship to whether “scandalous” or “immoral” qualities are involved. The government could not identify any governmental interest other than a general promotion of good order. While this might be the result of regulation, societal order cannot serve double duty, being both the effect of regulation and the premise for its implementation.

Neither could a generalized desire to avoid offense to the general public support speech restrictions, as fear of government suppression of unpalatable material is the very reason that the First Amendment exists. Regulation of expressive speech has no relationship to the source identification that is the purpose of the federal trademark registration scheme. Even if a supportable substantial government interest could be located, the Lanham Act’s Section 2 provisions concerning “scandalous” or “immoral” marks could not be effective. Trademark registration is not required nor is registration consistent when the “scandalous” or “immoral” terms are applied, resulting in similar marks being registered and others denied. This non-uniform but sweeping constellation indicates an insufficiently narrowly tailored regulation

Finally, the Federal Circuit declined to engraft an ‘obscenity’ limitation on Section 2, which would permit denial of registration of some trademarks because obscene materials are beyond the protections of the First Amendment. One concurring justice opined that the preferable course would have been to preserve the statute by adopting that limiting construction.

The In re Brunetti opinion may be found here:

15-1109.Opinion.12-13-2017.1