18 December 2017Trademarks

Ban on ‘scandalous’ trademarks is unconstitutional, says Fed Circuit

The US Court of Appeals for the Federal Circuit ruled that the Lanham Act’s ban on “scandalous and immoral” trademarks is unconstitutional, in a decision handed down late last week.

On Friday, December 15, the Federal Circuit overturned a decision by the Trademark Trial and Appeal Board (TTAB) which refused a trademark registration for the mark ‘Fuct’.

According to the Federal Circuit, while the TTAB didn’t err in concluding that the mark comprises immoral or scandalous matter, the bar on registering such marks is an “unconstitutional restriction of free speech”.

Under section 2(a) of the Lanham Act, trademarks that consist of immoral or scandalous matter may be refused registration.

Erik Brunetti had appealed to the Federal Circuit after the TTAB affirmed a rejection by an examining attorney citing the section.

Brunetti owns the clothing brand “fuct”, which he founded in 1990.

“The examining attorney reasoned that ‘fuct’ is the past tense of the verb ‘fuck’, a vulgar word, and is therefore scandalous,” said Circuit Judge Kimberly Moore, on behalf of the court.

Brunetti then appealed to the board, but the TTAB refused registration.

“The board noted that the word ‘fuct’ is defined by Urban Dictionary as the past tense of the verb ‘fuck’ and pronounced the same as the word ‘fucked’, and therefore found it is ‘recognised as a slang and literal equivalent of the word ‘fucked’’, with ‘the same vulgar meaning’,” explained the Federal Circuit.

The Federal Circuit had requested the parties file briefs on the impact of the US Supreme Court’s ruling in Matal v Tam. In June, the court deemed the government’s ban on disparaging trademarks unconstitutional, handing a win to rock band The Slants and overturning more than 70 years of legal practice.

According to the government, Tam didn’t resolve the constitutionality of section 2(a)’s bar on registering immoral or scandalous marks because the “disparagement provision implicates viewpoint discrimination, whereas the immoral or scandalous provision is viewpoint neutral”.

The Federal Circuit said it had questioned the viewpoint neutrality of the immoral/scandalous provision, but that it did not need to resolve the issue.

“Independent of whether the immoral or scandalous provision is viewpoint discriminatory, we conclude the provision impermissibly discriminates based on content in violation of the First Amendment,” concluded Moore.

Moore added that many of the marks rejected under the ban are “lewd, crass, or even disturbing”.

She added that the court finds the use of these marks in commerce discomforting and it is not eager to see a “proliferation” of such registrations in the marketplace.

However, there are number of similarly offensive images and words that have secured copyright registration, the Federal Circuit said.

“There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law,” noted Moore.

In conclusion, Moore said: “The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”

John Sommer, representative of Brunetti and general counsel at clothing company Stussy, said he was pleased with the outcome of the case.

On the wider impact, Sommer predicted that the pornographic industry is going to be able to get a number of trademarks registered that it hasn’t been able to in the past.

Douglas Sharrott, partner at Fitzpatrick, Cella, Harper & Scinto, said: “Within only a few months, the scandalous, immoral and disparaging mark bars have been chipped out of section 2(a) of the Lanham Act.”

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