In the FUCT case (In re Brunetti), the Federal Circuit mooted the Lanham Act’s prohibition against registering immoral or scandalous marks — holding the limitation to be an unconstitutional restriction of free speech and reversing the TTAB holding that Bruneti’s “FUCT” mark is unregistrable. The FUCT case follows the Supreme Court’s 2017 SLANTS decision (Matal v. Tam) which similarly voided the prohibition on registering disparaging marks. (Erik Brunetti is shown on the right.)
The US Government (USPTO/DOJ) has petitioned for en banc review of the decision – arguing that the immoral/scandalous prohibition should stand. Notably, the US argues that limiting registration of disparaging marks at issue in Tam was more suspect because it was directed toward a particular viewpoint (e.g., disparagement of people …). On the other hand, the parallel prohibition on registering scandalous marks is viewpoint neutral. Despite that difference, the Federal Circuit applied a strict scrutiny test. The US argues that strict scrutiny should not apply here but rather that the Federal Circuit should develop a separate and new test for “the constitutionality of viewpoint-neutral limitations on registrability.”
Brunetti has responded. The brief is certainly not the best ever filed, but it raises important points:
- Scandalous Marks: The Government incorrectly asserts that the Clause only prohibits registration of marks that contain “profanity, excretory or sexual” matter — despite the plain language of the text.
- Using “Dirty” Words as a Statement: “[T]he Government chooses to ignore the Supreme Court’s decision that profanity is viewpoint.” See Cohen v. California, 403 U.S. 15 (1971).
- As applied: “It is obvious that many marks refused as scandalous . . . are expressing viewpoint. Specifically in this case, the [TTAB] affirmed the refusal of Brunetti’s mark because of his viewpoint. The Board asserted that Brunetti “objectifies women and offers degrading examples of extreme misogyny,” “anti-social imagery,” is “lacking in taste,” and contains a theme “of extreme nihilism—displaying an unending succession of anti-social imagery of executions, despair, violent and bloody scenes including dismemberment, hellacious or apocalyptic events, and dozens of examples of other imagery lacking in taste.” While the Board incorrectly characterized Brunetti’s views, it is clear that his views were intertwined with the Board’ decision as to whether his mark is scandalous.
- Policy Parade: What if the Government Could Restrict Scandalous/Immoral Statements: “What is really frightening is what state and local governments could do if the Scandalous Clause were constitutional. For example, a city could deny a license if it did not like the name of the restaurant (Sambo’s Restaurants, Inc. v. City of Ann Arbor, 663 F. 2d 686 (6th Cir. 1981)), the name of the corporation (Kalman v. Cortes, 723 F.Supp.2d 766 (ED. Pa. 2010) (involving “I Choose Hell Productions LLC”), or a label (Bad Frog Brewery v. New York State Liquor Authority, 134 F.3d 87 (2d Cir. 1998)). . . . If the Scandalous Clause were constitutional then a city or state could effectively prevent disfavored organizations from doing business by denying business licenses, sales tax permits, etc., on the grounds that such organizations or their names are scandalous. Both the NRA and Planned Parenthood could be effectively prevented from operating in different parts of this country depending on the political views of the locality. . . .
Read the briefs: