Joshua Cohen, Wendel Rosen Black & Dean

Since 1946, the United States Patent and Trademark Office (USPTO) has relied on section 2(a) of the Lanham Act to refuse to register marks that consist of “immoral, deceptive, or scandalous matter; or matter which may disparage….”

But a dance-rock band from Oregon stripped the USPTO of its power to block disparaging marks, and a misogynist clothing line from Chatsworth, California (often described as the epicenter of the porn industry), stripped the USPTO of its power to block vulgar marks.

The Slants Strike Down §2(a)’s Disparagement Clause

For decades, the USPTO refused to register marks that it considered to be disparaging or scandalous. In 2011, Simon Shiao Tam, lead singer of an Oregon-based, Asian-American rock band, sought to register “The Slants” for the band. Tam argued his use of the term was ironic, not disparaging, in that he sought to disarm “the toxic language and symbols” associated with the term. Citing section 2(a), the USPTO refused to register The Slants, finding it disparaged people of Asian descent. Tam appealed to the Trademark Trial and Appeal Board (TTAB), which upheld the USPTO’s refusal to register THE SLANTS.

Tam appealed to the Federal Circuit, which initially affirmed the TTAB, but later, sua sponte,  ordered rehearing en banc, asking the parties to address: “Does the bar on registration of disparaging marks in 15 U.S.C. §1052(a) violate the First Amendment?” In December 2015, the Federal Circuit held that “the disparagement proscription of §2(a) is unconstitutional.” The USPTO still refused to register The Slants and issued Examination Guidance condemning trademark applications with section 2(a) issues to legal limbo pending resolution of the dispute. In September 2016, the Supreme Court granted certiorari and issued its decision in June 2017. The court rejected the government’s arguments that: “(1) trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the disparagement clause should be tested under a new ‘government-program’ doctrine.” The court affirmed the Federal Circuit, holding that “the disparagement clause violates the Free Speech Clause of the First Amendment.”

The Slants Save the Washington Redskins’ Trademarks

By striking down the disparagement clause, the Supreme Court effectively rescued the Washington Redskins’ trademarks. The TTAB had decided to cancel the team’s registered marks, finding the term “redskins” disparaging. The team appealed to U.S. District Court in Eastern Virginia, which had affirmed the TTAB. The team then appealed to the Fourth Circuit, and after the Supreme Court’s Tam decision, the Fourth Circuit reversed, effectively ordering that the team’s marks be reinstated.

FUCT Strikes Down §2(a)’s Prohibition of Immoral, Scandalous or Vulgar Trademarks

The Supreme Court’s Tam decision struck down the disparagement clause but did not address section 2(a)’s prohibition of “immoral … or scandalous” marks. The FUCT mark took care of that. In 2011, Erik Brunetti sought to register “FUCT” for his clothing line. The USPTO found the mark FUCT is the “past tense of the verb ‘fuck,’ a vulgar word, and is therefore scandalous.” Brunetti appealed and the TTAB affirmed, citing Urban Dictionary and Brunetti’s website, which included “strong, often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny.” Brunetti appealed to the Federal Circuit, which issued its opinion six months after the Supreme Court’s Tam opinion. In a section of the opinion that reads like a South Park script, the court dispensed with Brunetti’s argument that FUCT was not scandalous or vulgar. The court cited substantial precedent that “a showing that a mark is vulgar is sufficient to establish that it ‘consists of or comprises immoral … or scandalous matter.” The court noted that when Brunetti “filed his appeal, his constitutional argument was foreclosed by binding precedent.” But, in light of the Tam decision, the court requested additional briefing from the parties.

The government argued that: (1) “the disparagement provision implicates viewpoint discrimination, whereas the immoral or scandalous provision is viewpoint neutral”; (2) trademark registration is a government subsidy and therefore restrictions are “a reasonable exercise of its spending power”; and (3) that trademark registration is a limited public forum, allowing the government to “assert a right to ‘legally preserve the property under its control for the use to which it is dedicated.’” The court rejected these arguments, applied strict scrutiny, and held that “[t]here is no dispute that §2(a)’s bar on the registration of immoral or scandalous marks is unconstitutional if strict scrutiny applies.” The court went on to conclude that section 2(a)’s prohibition of vulgar marks would not even survive intermediate scrutiny applied to regulation of purely commercial speech.

The court recognized that its decision might open the floodgates to vulgar trademarks:

The trademark at issue is vulgar. And the government included an appendix in its briefing which contained numerous highly offensive, even shocking, images and words, for which individuals have sought trademark registration. Many of the marks rejected under §2(a)’s bar on immoral or scandalous marks, including the marks discussed in this opinion, are lewd, crass or even disturbing. We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. … There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public. * * * We hold that the bar in §2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.

Somewhere, George Carlin—famous for his comedy routine titled The Seven Dirty Words You Can’t Say on Television—is smiling.

 

Joshua D. Cohen is a partner with Wendel Rosen Black & Dean LLP and chairs the firm’s Intellectual Property Litigation Group. He can be reached at jcohen@wendel.com.