It's Scandalous! - Limiting Profane Trademark Registrations After "tam" and "brunetti"

• Jurisdiction: United States,Federal
• Citation: Vol. 27 No. 1
• Publication year: 2020

It's Scandalous! - Limiting Profane Trademark Registrations after "Tam" and "Brunetti"

Gary Myers
University of Missouri School of Law

It's Scandalous! -- Limiting Profane Trademark Registrations after "Tam" and "Brunetti"

Cover Page Footnote

Earl F. Nelson Professor of Law, University of Missouri School of Law. I wish to thank my colleague Ilhyung Lee for thoughtful conversations regarding the issues relevant to this article and for his own contributions to the dialogue. I also thank Bridget Myers for her comments on a draft of this article. Any remaining errors are mine alone.

IT'S SCANDALOUS! - LIMITING PROFANE TRADEMARK REGISTRATIONS AFTER TAM AND BRUNETTI

By Gary Myers¹

"Scandal is gossip made tedious by morality."
— Oscar Wilde, Lady Windermere's Fan

I. Introduction.................................................................................................2

II. The Lanham Act Prohibitions and the Game-Changing Ruling in Tam.................................................................................................2

III. The Brunetti Decision...............................................................................4

IV. Fashioning a Constitutionally Permissible Statute...............10

V. Conclusion..................................................................................................19

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I. Introduction

Over the course of the last two years, the Supreme Court has engaged in a long-overdue assessment of the constitutionality of federal trademark law prohibitions on the registration of offensive marks. In its unanimous 2017 decision in Matal v. Tam,² the Court held that the disparagement clause is a content-based provision that violates the First Amendment. In 2019, the Court in Iancu v. Brunetti³ held that the refusal to register the mark "FUCT" on grounds that it was immoral or scandalous would also violate the First Amendment.⁴ These cases offered an opportunity for the Court to clarify the proper role of free speech analysis in the context of the federal trademark registration system. The central holding of both cases is that content-based prohibitions related to the viewpoint or message conveyed by a trademark cannot be precluded from registration.⁵

In light of Tam and Brunetti, the Lanham Act's provision precluding registration of any disparaging, scandalous, or immoral mark is invalid and unenforceable. This leaves the government with no statutory basis for refusing to register marks containing vulgar, profane, or obscene words and images. The question going forward, however, is whether these landmark cases would nevertheless leave open an opportunity for Congress to draft a new, more narrowly tailored prohibition on marks that would not present the same breadth of First Amendment concerns. Thus, this article explores whether a statute (along with implementing regulations) precluding the registration of vulgar, profane, and obscene marks might be drafted such that it constitutes a reasonable, viewpoint-neutral restriction on speech.

II. The lanham Act Prohibitions and the Game-Changing Ruling in Tam

The Lanham Act, which governs federal protection for trademarks, was passed to protect the purchasing public by providing accurate information about the source of goods and services,⁶ protect trademark owners who make

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investments in the goodwill of their brands,⁷ and establish a nationwide system for the registration and protection of marks.

Section 2 of the Lanham Act identifies which trademarks can be registered on the principal register and which were intended to be barred from federal registration. It states:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the united States.⁸

For many years, trademark owners and practitioners endured the inconsistent and often arbitrary enforcement of these prohibitions, which were finally challenged by Simon Tam and his Asian—American dance-rock band in the now-famous case of Matal v. Tam.⁹ The group decided to name themselves, and adopt as a brand, "The Slants."¹⁰ Their express purpose was to "reclaim" and "take ownership" of Asian stereotypes and childhood slurs by making use of this term in a positive, affirmative way.¹¹ When the group sought federal registration for

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this mark, the trademark examiner refused to register it, deeming it disparaging to persons of Asian descent.¹²

After unsuccessful appeals to the Trademark Trial & Appeal Board and the Federal Circuit, Tam prevailed at the Federal Circuit¹³ en banc and eventually reached the Supreme Court. Writing a unanimous opinion on this point, Justice Alito struck down the prohibition on disparaging marks: "We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."¹⁴ The Court rejected the argument that the restriction was government speech, finding that it denied the important benefits of federal registration based on the content and viewpoint expressed by the trademark owner.¹⁵ The justices were split on whether to address other issues in the case, but all agreed with this fundamental proposition.¹⁶ Justice Kennedy, writing for himself and three other justices, noted in his concurrence "that the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties."¹⁷

III. The Brunetti Decision

Unlike the unanimous ruling in Matal v. Tam, the Court in Brunetti was divided on one of the two key issues. Justice Kagan delivered the opinion of the Court, joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh. The opening paragraph summarizes the history and ruling succinctly:

Two Terms ago, in Matal v. Tam, this Court invalidated the Lanham Act's bar on the registration of "disparag[ing]" trademarks. Although split between two non-majority opinions, all Members of the Court agreed that the provision violated the First Amendment because it discriminated on the basis of viewpoint. Today we consider a First Amendment challenge to a neighboring provision of the Act, prohibiting the registration of "immoral[] or scandalous" trademarks. We hold that this

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provision infringes the First Amendment for the same reason: It too disfavors certain ideas.¹⁸

The facts of the case were simple — Erik Brunetti is an artist and entrepreneur who developed a clothing line under the brand name FUCT.¹⁹ According to Brunetti, the name is pronounced as four sepate letters: F-U-C-T.²⁰ However, as the Court noted: "But you might read it differently and, if so, you would hardly be alone. See Tr. of Oral Arg. 5 (describing the brand name as 'the equivalent of [the] past participle form of a well-known word of profanity')."²¹ Relying on the prohibitions on registration of immoral or scandalous marks, the U.S. Patent and Trademark Office (PTO) rejected Brunetti's application.²²

Section 1052(a) prohibits registration of a mark that "[c]onsists of or comprises immoral, deceptive, or scandalous matter."²³ The Court acknowledged that the PTo interprets this bar as a "unitary provision," rather than treating the two adjectives as separate prohibitions.²⁴ This point proves important given the justices' eventual split on a possible narrowing interpretation. Justice Kagan noted that the standard focuses on "whether a 'substantial composite of the general public' would find the mark 'shocking to the sense of truth, decency, or propriety'; 'giving offense to the conscience or moral feelings'; 'calling out for condemnation'; 'disgraceful'; 'offensive'; 'disreputable'; or 'vulgar.'"²⁵

The Brunetti application was reviewed and rejected by both the PTo examining attorney and the Trademark Trial and Appeal Board. The stated reasons for these decisions highlight the content discrimination problem with the bar — the examining attorney deemed "FUCT" to be "a total vulgar" mark and the Board observed that the mark was "highly offensive," "vulgar," with "decidedly negative sexual connotations."²⁶ Because it appeared in a context of "extreme nihilism," the Board believed it delivered a message of "misogyny, depravity, [and] violence."²⁷ on appeal, the Federal Circuit held the prohibition violated the First Amendment, and the Supreme Court then granted certiorari.²⁸

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Justice Kagan began her analysis by noting that the Court in Tam struck down the Lanham Act's ban on registering disparaging marks as a violation of the First Amendment.²⁹ As she pointed out, "all the Justices agreed on two propositions. First, if a trademark registration bar is viewpoint-based, it is unconstitutional. And second, the disparagement bar was viewpoint-based."³⁰ The Court "could not agree on the overall framework for deciding the case. (In particular, no majority emerged to resolve whether a Lanham Act bar is a condition on a government benefit or a simple restriction on speech.)."³¹

The heart of the matter, then, becomes whether "the 'immoral or scandalous' criterion in the Lanham Act [is] viewpoint-neutral or viewpoint-based. . . [i]t is viewpoint-based."³² Justice Kagan cited a long string of definitions and interpretations demonstrating that the bar was...