Supreme Court Holds Bar Against Registration of Immoral or Scandalous Marks Violates the First Amendment

Uncomfortable with the implications of the holding — including the possible rush to register the most offensive and disturbing epithet in America — Chief Justice John Roberts and Justices Stephen Breyer and Sonia Sotomayor would have upheld the restriction against registration of "scandalous" marks, although they agreed the term "immoral" screamed viewpoint discrimination and could not be saved. Only Justice Breyer questioned whether the federal trademark registration system involved a different kind of interplay between speech and government authority not adaptable to "rigid First Amendment categories."

Because of Brunetti, it is difficult to imagine any permissible restrictions on registrations of the meanest and grossest words — as even traditionally excludable lewd or profane content, depends ultimately upon a viewpoint that such content offends society's "sense of rectitude and morality."

Brunetti's Application to Register FUCT and Its Path to the Supreme Court

Erik Brunetti, a Los Angeles-based artist and entrepreneur, applied to register FUCT in connection with various clothing items in Class 25, on May 3, 2011, claiming use in commerce since Dec. 31, 1991.

The Examiner eventually issued an office action contending the mark was "obviously unregistrable" on the basis that it "consists of or includes immoral or scandalous matter." The Examiner explained:

The words "immoral" and "scandalous" may have somewhat different connotations; however, immoral matter has been included in the same category as scandalous matter.

To be considered "scandalous," the evidence must show that a mark would be considered shocking to the sense of decency or propriety, giving offense to the conscience or moral feelings, or calling out for condemnation ….

A mark is immoral or scandalous when the evidence shows that a substantial composite of the general public (although not necessarily a majority) would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. ….

In this case, applicant seeks registration of FUCT for "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments." The attached evidence from Urban Dictionary shows this wording is the "past tense of the verb fuck. Also used to express a general state of incapability." Therefore, the word FUCT is scandalous because it is disparaging and a total vulgar. It is unregistrable. (citations omitted).

Perhaps sensing the battle ahead, Brunetti retained attorney John Sommers, who would eventually argue on Brunetti's behalf before the Court. Incidentally, Sommers was, and still is, in-house counsel for Stüssy, an edgy streetwear brand like Fuct but with a scandal-free name.

As would Justice Kagan in her decision, Sommers had some fun in responding to the office action:

The FUCT mark is an arbitrary, made-up mark. But even if FUCT is considered equivalent to "fucked," it is not vulgar. "Fucked means the same as "screwed," and as the Office's own records show, the latter is not vulgar, so the former is not either. …

In this case, the Office cites [Urbandictionary.com] that has seven definitions [for "fuct"]. Only one definition is vulgar; the other six are not. So the Office has not met its burden of proof. It is clear that if there are both scandalous and non-scandalous meanings, the mark should be approved. (citation omitted)

Sommers also noted that the FUCT clothing brand had only received a single complaint for being vulgar, and that one 20 years earlier, despite being seen nationwide in stores such as Urban Outfitters.

The Examiner would not be swayed. Nor would the Trademark Trial and Appeal Board, which affirmed the refusal with the caveat: "It is abundantly clear that the Trademark Trial and Appeal Board is not the appropriate forum for re-evaluating the impacts of any evolving First Amendment jurisprudence within Article III courts upon determinations under Section 2(a) of the Lanham Act, or for answering the Constitutional arguments of legal commentators or blog critics."

Brunetti appealed, and the Federal Circuit Court of Appeals sustained the Board's finding of scandalousness. Nevertheless, the appellate court ultimately reversed the refusal to register on the ground that the refusal to register the mark on that basis violated the First Amendment. The USPTO petitioned the Supreme Court for a Writ of Certiorari.

The petition tried to square the immoral and scandalous provision with the Supreme Court's 2017 decision in Tam, arguing the provision against immoral/scandalous marks was different than the one against potentially disparaging ones, "simply reflect[ing] Congress's judgment that the federal government should not affirmatively promote the use of graphic sexual images and vulgar terms by granting them the benefits of registration."

The Court granted certiorari, etc., and somewhat anticlimactically extended Tam and invalidated the provision as viewpoint discrimination.

The Concurring and Dissenting Viewpoints

The most interesting thing about the decision is not the holding itself, but how the Court got there, and how the concurring and dissenting justices would have decided the case. There was no dispute that denying registration of a mark based on the views expressed thereby was unconstitutional – even the USPTO agreed. All agreed that the term "immoral" is inherently viewpoint-based, being altogether too churchy.

The disagreement came as to the term "scandalous" and whether a limiting construction could save the beleaguered statute. Justice Sotomayor read the word as ambiguous and capable of being interpreted as referring to a particular mode of expression, apart from a message or idea. Chief Justice Roberts agreed that "[scandalous] can be read more narrowly to bar only marks that offend because of their mode of expression — marks that are obscene, vulgar, or profane."

The Court dismissed this as "statutory surgery." Yet, the actual statute nowhere uses the phrases "immoral or scandalous." Rather, it provides no trademark shall be refused registration on account of its nature unless it "[c]onsists of or comprises immoral, deceptive, or scandalous matter." Notably, smack in between immoral and scandalous is "deceptive," a viewpoint-neutral, constitutionally permissible term. No surgery is necessary to interpret scandalous apart from immoral — and really, it was the Court that committed surgery — by cutting out "deceptive." Urging interpretation of the statute as a whole where "no clause, sentence, or word [is] superfluous, void, or insignificant," Justice Sotomayor explained:

Congress used not only the word "scandalous," but also the words "immoral" and "disparage," in the same block of statutory text — each as a separate feature that could render a mark unregistrable. Tam already decided that "disparage" served to prohibit marks that were offensive because they derided a particular person or group. That defines one of the three words. Meanwhile, as the majority explains, the word "immoral" prohibits marks that are offensive because they transgress widely held moral beliefs. That defines a second of the three words. With marks that are offensive because they are disparaging and marks that are offensive because they are immoral already covered, what work did Congress intend for "scandalous" to do? A logical answer is that Congress meant for "scandalous" to target a third and distinct type of offensiveness: offensiveness in the mode of communication rather than the idea. The other two words cover marks that are offensive because of the ideas they express; the "scandalous" clause covers marks that are offensive because of the mode of expression, apart from any particular message or idea. (citations omitted).

Indeed the Court seems to treat "immoral or scandalous" as unitary, which is how the USPTO traditionally applied the statute. But where the USPTO purported to limit application of the unitary provision to marks that were lewd, sexually explicit, or profane, the Court refused to find that limitation in the text:

This Court, of course, may interpret "ambiguous statutory language" to "avoid serious constitutional doubts." But that canon of construction applies only when ambiguity exists. "We will not rewrite a law to conform it to constitutional requirements." So even assuming the Government's reading would eliminate First Amendment problems, we may adopt it only if we can see it in the statutory language. And we cannot. The "immoral or scandalous" bar stretches far beyond the Government's proposed construction. The statute as written does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose "mode of expression," independent of viewpoint, is particularly offensive. It covers the universe of immoral or scandalous — or (to use some PTO synonyms) offensive or disreputable — material. Whether or not lewd or profane. Whether the scandal and immorality comes from mode or instead from viewpoint. To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one.

But the Court did fashion a new one, in some sense as it elected to analyze a facial attack on the Constitutionality of a statute, using the USPTO's "as applied" merger of two disjointed words rather than the words Congress wrote. One could argue the Court rewrote the statute to find it unconstitutional, instead of the other way around. The Court addresses this concern in a footnote, by holding scandalousness an inherently viewpoint-based standard, even on its own. Essentially, the Court declined to treat the word "scandalous" as ambiguous, as Justice Sotomayor did, which would be a basis to read the word more narrowly. Instead the Court considered "scandalous" as merely overbroad, encompassing both marks that offend by the ideas they convey and marks that offend by their mode of expression. Whether "scandalous" is ambiguous or merely overbroad seems like a thin basis for judicial restraint here, where the overbreadth of "scandalous" resulted in textual ambiguity (as Justice Sotomayor explained).

Justice Breyer's opinion argues for a more nuanced approach, and is worth a read. He found Justice Sotomayor's interpretation of the statute as reasonable based on a "proportionality analysis" that asks whether the regulation at issue works disproportionate harm to First Amendment interests in light of the relevant regulatory objectives. Justice Breyer considered the trademark registry as a sort of limited public forum or government subsidy of private speech, and noted the government interest in not promoting vulgar or obscene speech. He posited, "How much harm to First Amendment interests does a bar on registering highly vulgar or obscene trademarks work? Not much."

Analysis

Ultimately, Justice Breyer's approach seems the only one that could paint the Court out of the corner of its holding, which, though appealing in its consistency and simplicity, nonetheless leaves little hope for keeping the federal register "clean." Congress will surely try to fashion a provision that passes constitutional muster, perhaps barring registration of racial epithets, vulgarities, and profanities. But because the applications of such restrictions will still be based on the public's reaction to them, they may not stand for long.

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Peter Kidd is an Associate in the trademark practice group at Kilpatrick Townsend & Stockton LLP. He works primarily on trademark prosecution and online enforcement matters for technology, social media, and entertainment companies. He may be reached at [email protected].