Just over a year ago, the U.S. Court of Appeals for the Federal Circuit held that a century-old ban prohibiting the United States Patent and Trademark Office (PTO) from registering “scandalous” and “immoral” trademarks violates the First Amendment.
Last week, the Supreme Court granted certiorari to determine whether they agree that the so-called “Scandalous Clause” is unconstitutional on its face.
The dispute began when the PTO denied trademark registration to Appellant Erik Brunetti’s clothing line – “FUCT.” Citing Section 2(a) of the Lanham Act, the PTO argued that it was well within its rights to refuse to register a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter…”
Brunetti argued, in the first place, that his proposed trademark was not scandalous in the context of contemporary attitudes. Further, and more notably, he argued that the Scandalous Clause constitutes a content based restriction on his speech in violation of the First Amendment.
A restriction on speech is considered “content based” when it “applies to particular speech because of the topic discussed or the idea or message expressed.” Content-based statutes are presumptively invalid. To survive, such statutes must withstand “strict scrutiny” review, which requires the government to prove that the restriction (1) furthers a compelling interest and (2) is narrowly tailored to achieve that interest.
Before the Federal Circuit, the government conceded that the Lanham Act’s “Scandalous Clause” is a content-based restriction, and did not contend that it survives strict scrutiny. Rather, the government argued that the provision doesn’t really restrict speech at all: “Trademark rights are created not by federal law, but by use of a mark to identify goods and services in commerce,” wrote government lawyers in their petition for certiorari. “Even without federal registration, respondent may use vulgar terms or symbols to identify his goods in commerce, and he may enforce his chosen mark in both state and federal courts against others whom he believes have misused it or have misappropriated any goodwill associated with it.”
Thus, the government explained, trademark registration should be viewed as a government subsidy for marks it wishes to promote rather than a restriction on marks that are excluded. In that case, the bar on registering immoral or scandalous marks is simply a “reasonable exercise of the government’s spending power.”
This argument, however, may be a more difficult one to make in light of another recent Supreme Court decision on an analogous provision of the Lanham Act.
In 2017, the Supreme Court unanimously held that a provision of the Lanham Act which prohibited the government from registering trademarks that “disparage” others violated the First Amendment. That case, Matal v. Tam, involved the members of an Asian American rock group (called The Slants) who were turned down by the trademark office when they tried to register their band’s name. We blogged about that case here. In Tam, the PTO refused to register “The Slants” as a trademark because they said the name was likely to denigrate a significant number of Asian Americans. A unanimous Court found the “Disparagement Clause” to be facially invalid, underscoring that prohibiting the expression of an idea simply because “society finds the idea itself offensive or disagreeable” is antithetical to the bedrock principle underlying the First Amendment.
Further, the Court recognized that federal trademark registration confers significant benefits, and that refusal to register marks due to the Disparagement Clause was unconstitutional despite the fact that such marks could still be used. A plurality of justices (and all four who reached the issue) rejected the government’s argument that trademark registration should be viewed as a government subsidy.
Now, Brunetti argues that the “Scandalous Clause” should be similarly dispensed with.
In particular, he challenges the PTO’s history of apparently arbitrary decision-making when it comes to approving trademarks, arguing that this belies their claim that the Scandalous Clause is a content-neutral restriction.
For instance, he points out the office has registered trademarks for “FCUK,” “FWORD,” and “WTF IS UP WITH MY LOVE LIFE?!”
If there is one thing both sides can agree on, it’s that this issue is ripe for review. Though, in Tam, the Disparagement Clause was held facially invalid by a unanimous Court, several key issues, including the level of scrutiny that should be applied to similar provisions, were not agreed upon by a majority of the justices.
The Supreme Court will hear Iancu v. Brunetti this Spring.
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