Ninth Circuit Report

• Jurisdiction: United States,Federal
• Author: Anne-Marie Dao
• Publication year: 2019
• Citation: Vol. 44 No. 3

Ninth Circuit Report

Anne-Marie Dao

Mintz Levin

Hello Ninth Circuit readers! This fall's update is about trademarks. The scandalous kind, the kind that get the Supreme Court's attention.

The supreme court addresses scandalous trademarks

You may be aware that, until recently, Section 2(a) of the Lanham Act instructed the Patent and Trademark Office ("PTO") to refuse to register a trademark that "'[c]onsists 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...'" 15 U.S.C. § 1052(a)."¹ In Matel v. Tam,² the Supreme Court struck down the "disparaging" portion of this statute as an unconstitutional abridgement of free speech under the First Amendment. The Supreme Court has now also addressed the prohibition on the registration of "scandalous" marks and that section of the statute has fallen as well.

In Iancu v. Brunetti,³ The Court was asked to decide "whether a mark should be disqualified under § 2(a)" if a 'substantial composite of the general public' would find the mark scandalous, defined as 'shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable;.. .giving offense to the conscience or moral feelings;.or calling out for condemnation.'"⁴ One challenge in deciding what is "scandalous" is that this question is arguably a moving target, as "the concept of what is actually immoral or scandalous changes over time."⁵

In this case, Mr. Brunetti founded a clothing brand, "fuct," in 1990.⁶ When an intent-to-use application for the mark FUCT was filed, the examining attorney refused registration because the mark was found to be comprised of "immoral or scandalous matter" as "FUCT is the past tense of the verb 'fuck,' a vulgar word, and is therefore scandalous."⁷ Mr. Brunetti challenged this refusal, arguing that Section 2(a) does not expressly prohibit the registration of vulgar marks, and alternatively challenges the constitutionality of Section 2(a)'s bar on immoral or scandalous marks.⁸

The district court, and later the Court of Appeals for the Federal Circuit disagreed with Mr. Brunetti regarding the vulgar nature of the word "fuct."⁹ The Court of Appeals specifically disagreed with Mr. Brunetti's argument regarding proving what is "scandalous" by establishing a mark's vulgarity, stating that their previous ruling (In re Fox, 702 F.3d 633 (Fed. Cir...