by Dennis Crouch
Morality judgments have been a core governmental activity for millennia. However, when it comes to limiting speech – morality is unlikely to be a sufficient justification to overcome today’s expansive Free Speech principles.
The Lanham Act requires the USPTO to bar registration for marks that are either “immoral” or “scandalous.” 15 U.S.C. 1052(a). A separate portion of the provision prohibits registration of marks that “may disparage . . . persons” — but the Supreme Court found that portion uncontitutional in Matal v. Tam, 582 U.S. ___ (2017). In Brunetti, the Federal Circuit expanded Tam by holding that the prohibition on registering “immoral” or “scandalous” marks is also an unconstitutional. The court suggested that the government could draw some lines – such as barring obscene marks — but those dilenations are the province of Congress.
In Brunetti’s particular case, his admittedly vulgar mark FUCT was originally refused registration on scandalous grounds. On appeal, however, the Federal Circuit reversed.
Now, the US Government has petitioned the Supreme Court for Writ of Certiorari — arguing that:
Under the proper analysis, the First Amendment does not prohibit Congress from making vulgar terms and graphic sexual images ineligible for federal trademark registration.
[Read the petition: Brunetti (Pet)]. The petition asks one straightforward question:
Whether Section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.
In some ways, the case here looks to be open-and-shut — since the Supreme Court just held in 2017 that disparaging limit is unconstitutional. However, a disparaging mark is – by definition – directed toward a particular viewpoint and therefore more suspect than a mark that is simply vulgar. In addition, one problem with Tam is that there was no majority opinion explaining the court’s reasoning. On this second point, the petition explains:
Although this court recently concluded in Matal v. Tam, 137 S.Ct. 1744 (2017), that a different provision of Section 1052(a) was facially unconstitutional, no rationale garnered the assent of a majority of the Court, and neither the of the lead opinions in Tam endorsed the approach that the court of appeals adopted here.
The petition here was a joint submission by the US Solicitor General and the USPTO, including acting solicitor Joseph Matal who was acting director at the time of the Tam decision.
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Notes: Prior to Brunetti, courts have largely enforced the “immoral” and “scandalous” limitations — treating the two as a single category of prohibition. My favorite case is In re Fox, 702 F.3d 633 (Fed. Cir. 2012) (finding the mark for a rooster-shaped lollipop scandalous since it was intended to refer to a “cock sucker”). Scandalous marks, include those “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” McGinley.