Life after Tam: the impact on dilution

In Matal v Tam in June 2017, the US Supreme Court famously found unconstitutional on First Amendment grounds the prohibition against registration of trademarks deemed to be disparaging under section 2(a) of the Lanham Act.

The decision did not expressly address the portion of section 2(a) precluding registration of marks deemed scandalous or immoral, which the US Court of Appeals for the Federal Circuit had interpreted to be a prohibition on registration of marks identified in a dictionary as “vulgar”, whether or not any substantial group of people would consider the term “scandalous”.

The logic of the decision of the court, the finding that “viewpoint discrimination” is not allowed, coupled with Justice Alito’s statement that the disparagement clause was a “happy-talk” clause rather than an anti-discrimination clause, has led many observers to conclude that the prohibition on scandalous and immoral marks will fall next. Marks that are disparaging could be deemed immoral or scandalous. “Immoral” and “scandalous” are terms that depend on viewpoint, as well as context.

The matter has been teed up in the Brunetti case, pending before the Federal Circuit. The question is whether Brunetti can secure registrations for ‘Fuct’ for wearing apparel. The mark has been in use, and use is claimed since 1991. The mark stands for Friends U Can’t Trust. Note that there are already registrations for ‘Fcuk’, dating from 2005 (French Connection UK), for a range of wearing apparel and related goods.

Jon Moskin of Foley & Lardner has been quoted as viewing Tam in the context of the broader cultural wars, noting the coarsening of political speech. This coarsening of political speech has a corollary in commercial speech and in day-to-day discourse. Cole Porter recognised this trend in 1934: “Good authors too who once knew better words, now only use four-letter words writing prose. Anything goes.”

Whether and to what extent the ability to secure federal registration of ‘Fuct’ (and numerous variations such as ‘Fauq-yeah!’ serial no. 87/338,269; ‘Fuket we’ll do it live’ serial no. 87/474,441; and ‘Unfukyourself’ serial no. 87/243,617) changes anything that happens in the marketplace, there can be no doubt that the availability of registration is a boon to the proprietors of this and like trademarks, providing the benefits of federal registration including the evidentiary presumptions, availability of recordation with customs, constructive notice, and the remedies against use of counterfeit marks on the goods identified in the certificate of registration.

Since Tam, the number of applications for registration that include the word “Fuck” and variations of it have multiplied. The USPTO issued a new examination guide (No. 1-17) on June 26, 2017, to address these filings and filings for marks that contain or comprise other terms previously deemed not registrable. Pursuant to the guide, applications subject to a scandalous/immoral rejection will be suspended pending the disposition of Brunetti.

The more interesting question, and one that may have greater effect, is the impact of Tam on sections of the Lanham Act other than 2(a)—specifically, 43(c), which makes actionable dilution by tarnishment. Tarnishment is arguably another term for disparagement, and may readily be applied to marks that are deemed or capable of being deemed vulgar. See, e.g., Acushnet Company v I Made Bogey, brought to enjoin use of “Titties” on caps and other apparel in a script that mimics Acushnet’s allegedly famous Titleist script mark for golf gear and related apparel.

Dilution as a doctrine encompasses use of marks that “dilute” the distinctiveness of a “famous” mark by blurring or tarnishment. The offence occurs in the absence of competition or likelihood of confusion. In matters such as the Acushnet suit, the expected defence is parody, on First Amendment grounds, since the absence of likelihood of confusion is not a defence in a dilution case.

Just a joke

The language of section 43(c) excludes from liability parody uses and other forms of criticism. Precedent before the USPTO denies the applicability of parody and other forms of fair use as a defence in USPTO proceedings on the grounds that a party claiming parody or the benefit of fair use is acknowledging that its use is not trademark use, but rather is in the nature of a humorous or informational use of a term, and such use that is humorous or informational does not function as a trademark.

Is there any reason that ‘Chewy Vuitton’ cannot function as a mark for dog toys, as long as there is no reasonable likelihood (probability) of confusion? Is there any reason why “Titties” written in the “Titleist” signature script or otherwise cannot function as a mark for caps and T-shirts, if used as a mark, and recognised as a mark, as long as there is no likelihood of confusion? Whether there is a market for products so marked is a separate matter each company may determine or the market will determine. The lifecycle for joke products tends to be very short. It may be that the wiser course for a brand owner is to wait for the 15 minutes of attack on the senior mark to elapse.

Along with tarnishment, dilution has a second focus: “blurring.” The question comes up in the context of considering the viability of the dilution statute after Tam. The notions behind blurring and tarnishment are very different, however. Tarnishment imparts a value determination.

In contrast, blurring as a concept is essentially value-neutral. A term that might be found to cause dilution by blurring is simply one that is too similar to a famous mark, one with household name recognition on a nationwide basis, and that is used on goods unrelated to those of the rights holder (e.g., Pepsi house plants or Exxon sailboats).

In such instances, the reasoning behind Tam is not applicable. There is no consideration of whether the message conveyed is positive or negative, so that element of the statutory provision is likely to survive any challenge on First Amendment grounds. Dilution by blurring then should remain a claim that may be made under federal law by owners of truly famous marks, a category that encompasses a very small number of marks. In these circumstances, it may be interesting to see whether there is a revival of interest in state dilution provisions, which generally track the federal law without requiring nationwide fame and without precluding reliance on niche fame.

Roberta Jacobs-Meadway is a member at Eckert Seamans Cherin & Mellott. She can be contacted at: rjacobsmeadway@eckertseamans.com