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.