Examining the Impact of In re Brunetti on s. 2(a) of the Lanham Act.

Author:Weidner, Alex

    For [section] 2(a) of the Lanham Act, (1) 2017 proved to be a devastating year. Not only did the Matal v. Tam decision strike down the disparagement provision, (2) it served as a springboard for In re Brunetti to invalidate the bar against immoral and scandalous marks later that year. (3) This Note examines whether the majority correctly invalidated the immoral-scandalous provision, argues that it did not, and analyzes the likelihood the remaining two provisions in the Lanham Act will be struck down by another First Amendment challenge.

    Part II summarizes the facts and holding of In re Brunetti. Part III provides an overview of trademarks and examines the intersection of free speech with trademark law. Part IV analyzes the reasoning behind the Court's holding. Part V argues the majority was hasty in invalidating the immoral-scandalous bar completely and the concurring opinion was correct in suggesting a narrow construction of the statute that bars only the registration of obscene marks. It also examines what remains of [section] 2(a) and argues the remainder of the statute is safe from First Amendment challenge.


    Erik Brunetti ("Brunetti"), an artist and entrepreneur responsible for "popularizing 'streetwear' having revolutionary themes, proudly subversive graphics[,] and in-your-face imagery," filed an application at the United States Patent and Trademark Office ("USPTO") seeking protection for the mark FUCT (4) to use as the brand name for a line of clothing. (5) The Trademark Examining Attorney ("Examiner") issued an office action rejecting the application on the grounds that the application contained immoral or scandalous matter, which was prohibited by [section] 2(a) of the Lanham Act. (6)

    The Examiner argued FUCT was the "phonetic equivalent" of "fucked," which was vulgar and therefore immoral or scandalous. (7) In his reply to the office action, Brunetti provided evidence demonstrating that FUCT referenced a clothing brand and that "the public [did] not perceive [FUCT] as vulgar." (8) Despite this evidence, a final refusal was issued by the Examiner. (9) Brunetti sought reconsideration of the matter, but it was similarly denied. (10) Brunetti appealed the decision to the Trademark Trials and Appeals Board ("TTAB"). (11)

    The TTAB affirmed the Examiner's rejection, (12) concluding FUCT was chosen by Brunetti because it provided plausible deniability about whether it was "merely another way to say 'fucked'" while not fooling its target audience. (13) The TTAB found FUCT was the functional equivalent of "fucked," and the sole question it addressed was whether "fucked" was a scandalous term. (14) In making the determination, the TTAB examined both the traditional dictionary definition of "fucked" (15) and the Urban Dictionary definition of FUCT. (16) Because "fucked" was associated with "decidedly-negative sexual connotations,. .. extreme misogyny, depravity, violence, intolerance, anger, and imagery of being 'doomed' or a 'loser,'" the TTAB deemed both FUCT and "fucked" to be scandalous terms barred from registration by [section] 2(a) of the Lanham Act. (17) It affirmed the Examiner's refusal to register the mark. (18)

    Brunetti appealed to the U.S. Court of Appeals for the Federal Circuit, which reversed the TTAB and held "the bar in [section] 2(a) against immoral or scandalous marks [was] unconstitutional because it violat[ed] the [F]irst [A]mendment." (19)


    In re Brunetti deals extensively with both trademark law and First Amendment jurisprudence. To gain a better understanding of the legal background of the court's decision, Section A of this Part provides an overview of First Amendment law, focusing on the types of scrutiny associated with certain forms of speech. Section B then explores the interaction of First Amendment and trademark law.

    1. The First Amendment

      The First Amendment states, "Congress shall make no law. .. abridging the freedom of speech. .. ." (20) At first blush, the First Amendment appears to be a sweeping prohibition, but it is not given its literal meaning. (21) The free speech clause offers varying levels of protection for different types of private speech (22) and does not regulate government speech at all. (23) A substantial body of First Amendment jurisprudence has developed over the last century, and three strands of jurisprudence are relevant here. First, differing levels of scrutiny are applied to restrictions on private speech based on whether the speech is expressive, (24) commercial, (25) or obscene. (26) Second, when the government creates a forum for speech, restrictions on speech depend upon the nature of the forum created. (27) Third, although Congress holds the power of the purse, (28) it may not fund private programs or activities in a way that unconstitutionally burdens one's rights. (29)

      1. Categories of Private Speech

        Generally, private speech is speech that is associated with a private individual or entity rather than a government. (30) There are many forms of private speech, with different rules governing each type. (31) Government restrictions on expressive speech are presumptively invalid and subject to strict scrutiny if they are content-based. (32) Such restrictions will be upheld only if the government can show "that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest." (33)

        Commercial speech is "solely related to the economic interests of the speaker and its audience." (34) The First Amendment "protects commercial speech from unwarranted governmental regulation," (35) but the United States Supreme Court has recognized a "'commonsense distinction'" between commercial and other varieties of speech. (36) Restrictions on commercial speech may be subject to intermediate scrutiny, (37) which means that the restrictions are constitutional "'so long as the distinctions drawn are reasonable in light of the[ir] purpose. .. .'" (38) Thus, "The protection available for particular commercial expression turn on the nature both of the expression and of the governmental interests served by its regulation." (39)

        Finally, the Court has recognized that "the unconditional phrasing of the First Amendment was not intended to protect every utterance," and there are forms of private speech that are not protected by the First Amendment. (40) Obscenity and fighting words are two common examples of speech that are not entitled to First Amendment protection. (41)

      2. Forum Analysis

        When restrictions are placed on individuals speaking on government property, the Court's method of "forum analysis" is applied, which "determine[s] when a governmental entity, in regulating property in its charge, may place limitations on speech." (42) The most common locations where forums exist are "venues that are owned and controlled by government entities." (43) Some cases, however, have found forums to exist "more in a metaphysical than in a spatial or geographic sense" so long as the forum is still connected to government property. (44) In each of these forums, viewpoint-based discrimination is presumed to be unconstitutional. (45) The forums differ, however, as to the level of scrutiny applied to content-based restrictions. (46)

        The Court has stated there are three types of forums. (47) Traditional public forums, "such as streets and parks," are places that exist to be used by the public for communication and discussion between citizens. (48) Similarly, designated public forums are places that are traditionally not used as a public forum but have been opened up for that purpose. (49) Strict scrutiny applies to government-imposed, content-based speech restrictions in both of these forums. (50) Limited public forums "are places the government has 'limited to use by certain groups or dedicated solely to the discussion of certain subjects.'" (51) In a limited public forum, content-based restrictions are subjected to intermediate scrutiny as opposed to strict scrutiny. (52)

      3. Funding Restrictions

        Within the context of Congress' spending power, (53) the unconstitutional conditions doctrine has been developed to address how the spending power and First Amendment interact. (54) The Constitution grants Congress the power to fund state or private activities and attach requirements to that funding. (55) If an organization disagrees with the conditions Congress has attached to the funding, the typical remedy is to not accept the funding. (56) The United States Supreme Court has found, however, that the unconstitutional conditions doctrine applies if funding conditions create an "unconstitutional burden" on an individual's rights. (57) The Court has stated there is a constitutional line between apparent restrictions on speech that merely define the boundaries of a government program and those that seek to regulate speech. (58)

        Several cases have examined where exactly the constitutional line lies. In Rust v. Sullivan, (59) the Court upheld a Title X restriction preventing federal funding from being used in programs where abortion was a method of family planning because the restriction only affected Title X programs and did not prevent other, separate programs from providing abortions so long as federal funds were not used. (60) Because the requirement merely operated within the scope of Title X's program and did not affect the activities of private individuals, it was constitutionally permissible. (61) In Agency for International Development v. Alliance for Open Society International, Inc., (62) however, the Court struck down a funding condition of the United States Leadership Against HIV/AIDS, Tuberculosis, and Malaria Act ("Leadership Act") that provided federal funding for organizations combatting HIV/AIDS, tuberculosis, and malaria because the condition required the organizations to oppose prostitution, which the Court determined reached outside the scope of the Leadership Act. (63) In essence, a...

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