Brunetti, Tam, and Next Steps for TM Registration Limits

by Dennis Crouch

The US Gov’t petition for en banc reheraing in the Brunetti (FUCT) scandalous mark case has been denied without opinion.

Section 2(a) of the Lanham Act (codified at 15 U.S. Code § 1052) authorizes the PTO to refuse registration of marks that are:

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… [or certain geographic indicators for wine/spirits]

In Tam, the Supreme Court held that the prohibition on registering marks that disparage persons was a free speech violation.  In that case, Simon Tam had attempted to register the mark SLANTS in reference to the East Asian heritage of his band.

Similarly, Erik Brunetti, is attempting to register the mark FUCT — which is a homonym of a well known profane word. The TTAB refused to register the mark — finding it scandalous.  It is an easy case under old Federal Circuit precedent that ‘vulgar’ marks are scandalous. On appeal, however, the Federal Circuit held that the analysis from Tam applies to scandalous marks as well; and that there is no genuine legal distinction between scandalous and immoral marks.  Thus, the prohibition on registering marks that are scandalous or immoral is also a free speech violation.

One question (of several) is what remains enforceable from the Section 2(a) prohibition? I argue that the remaining three are all still enforceable – and can justify prohibition:  Deceptive Marks; Marks that Falsely Suggest a Connection; and the Limitation on Geographic Indicators.  Although dicta, both the Supreme Court and the Federal Circuit appear to support ongoing refusal to register deceptive marks — noting that Section 2(e) also prohibits registering marks that are “deceptively misdescriptive.”  Similarly, the notion of falsely suggesting a connection seems to me to also be a form of deception.  This all makes sense as a primary purpose of our trademark laws is consumer protection against deception.

In his 1993 article, Branding Attorney Stephen Baird made this same distinction — arguing that prohibitions on Immoral, Disparaging, and Scandalous marks “do not further the stated goals of the Trademark Act.”  However, “registration prohibitions
concerning deceptive and false connection trademarks appear to facilitate the goal of
preventing confusion and deception in the market place. Stephen R. Baird, Moral Intervention in the Trademark Arena: Banning the Registration of Scandalous and Immoral Trademarks, 83 TRADEMARK REP. 661, 788 (1993). See also Friedman v. Rogers, 440 U.S. 1 (1979) (First Amendment permits barring of potentially deceptive marks.) [Note – Baird blogs at duetsblog.com]

In the Brunetti case, the U.S. Gov’t. has one last shot in the court proceedings — petition to the US Supreme Court.  In addition, Congress could move to more narrowly tailor the law to make it constitutionally permissible — for instance by only barring registration of “obscene” marks.

9 thoughts on “Brunetti, Tam, and Next Steps for TM Registration Limits

  1. 5

    “On appeal, however, the Federal Circuit held that the analysis from Tam applies to scandalous marks as well; and that there is no genuine legal distinction between scandalous and immoral marks. ”

    Hi Dennis, it must be Nitpicker’s Day.

    In the above-quoted part, did you mean to say that the CAFC held there was no legal distinction between (one hand) scandalous/immoral marks and (other hand) the purported disparaging mark at issue in Tam?

  2. 4

    Stephen Baird… argu[es] that prohibitions on Immoral, Disparaging, and Scandalous marks “do not further the stated goals of the Trademark Act.”

    I expect that this is true as far as it goes, but I wonder if this is not a case of over-thinking it. I gather that the intuition here is that restrictions that do further the stated goals of the Trademark Act can conceivably survive strict scrutiny—because they further a legitimate government interest—while those that do not further the stated goals of the Lanham Act will ipso facto fail strict scrutiny.

    Strict scrutiny, however, only comes into it if there is a First Amendment violation in the first place. There is no First Amendment protection for falsehood, fraud, and deception, so the prohibitions on misdescription really do not need to pass strict scrutiny in the first place. Come to that, however, there is no First Amendment protection for obscenity. If Congress were to replace the current prohibition against “scandalous & immoral” with a prohibition against “obscene” marks, such a prohibition would not really “further the stated goals of the Trademark Act.” Neither, however, would it have to survive strict scrutiny, because the First Amendment challenge would never get off the ground.

    1. 4.1

      Greg,

      Are you yourself applying a little overthinking here?

      To wit: the court cases have provided that the prohibitions would have also failed intermediate scrutiny – thus aiming for a “strict scrutiny” filter is not required.

  3. 3

    1993 article….

    In all the discussions on Tam, I had missed that.

    Nice find.

  4. 2

    As a TRADE mark… I personally find

    “Apple”

    as such, to be grossly deceptively misdescriptive, particularly when I want to eat one.

    1. 2.1

      Haha, I was very happy when “ALLJUICE” was finally rejected and went abandoned.

      I had accidentally bought some of the stuff without reading the ingredients – only after getting hit home did I note it was less than 5% actual juice.

      Alljuice, indeed. All corn syrup.

      Strangely enough the rejections were based on “merely descriptive” where I’d have gone for the deceptively misdescriptive argument myself (if I ever wore a TM examining attorney hat).

      1. 2.1.1

        All corn syrup.

        aka concentrated corn juice.

        1. 2.1.1.1

          Yeah. My new favorite ingredient name to poke fun at is “Evaporated Organic Cane Juice”, aka sugar.

          Not sure how new that appellation/marketing gimmick actually is, but I only took note of it about a year ago.

  5. 1

    Dennis:

    I think there is a typo in this :

    “One question (of several) is remains enforceable from the Section 2(a) prohibition?”

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